Weiler, In re

Decision Date08 May 1986
Docket NumberNo. 85-2085,85-2085
PartiesIn re Elmar W. WEILER and Richard L. Mansell. Appeal
CourtU.S. Court of Appeals — Federal Circuit

William D. Stokes, Alexandria, Va., argued for appellants.

Richard E. Schafer, Associate Sol., U.S. Patent and Trademark Office, Arlington, Va., argued for appellee. With him on brief were Joseph F. Nakamura, Sol., and Fred E. McKelvey, Deputy Sol.

Before MARKEY, Chief Judge, and DAVIS and BISSELL, Circuit Judges.

MARKEY, Chief Judge.

Weiler and Mansell (Weiler) appeal from a decision of the United States Patent and Trademark Office Board of Appeals (board), App. No. 600-54 (Dec. 31, 1984), affirming the examiner's rejection of claims 13 and 19 in a reissue application filed under 35 U.S.C. Sec. 251 (1982). We affirm.


Weiler filed an application on May 8, 1980, containing 11 claims. During prosecution, the examiner held that the application contained "three independent and distinct inventions" and required restriction between Claims 1-7 (assay method), Claims 8 and 11 (an "organic compound" in class 260/343.42), and Claims 9 and 10 (a "protein compound" in class 260/121). Weiler elected to prosecute Claims 1-7. Those claims were allowed without amendment, and the application issued on December 15, 1981 as U.S. Patent No. 4,305,923 ('923 patent) for a "Method for Quantitative Analysis for Limonin".

1. U.S. Patent No. 4,305,923

The seven claims of the patent are independent claim 1 and dependent claims 2-7. Claim 1 reads:

1. A method for quantitative analysis of limonin which comprises reacting a known amount of limonin-specific antibodies, with a mixture of a known volume of sample containing an unknown amount of limonin and a known amount of a limonin-derivative labeled with an enzyme or with a radioactive isotope, determining the amount of labeled limonin-derivative which has reacted with said antibodies and calculating therefrom the unknown amount of limonin in said sample.

2. The Reissue Application

Weiler did not contest the examiner's requirement for restriction and did not file a divisional application, to assert the non-elected claims or any other claims.

On August 18, 1982, Weiler filed application Serial No. 408,497 to reissue the '923 patent. In his Declaration, Weiler said the '923 patent was partly inoperative or invalid by reason of his having claimed less than he had a right to claim, and that that deficiency "exists because of errors which were made without deceptive intent on my part."

Weiler alleged "an extraordinary sequence of events which preceded and followed the inadvertent abandonment of original claims 8-11" which made him aware that the invention of the '923 patent was not adequately claimed. His Declaration set forth: (1) a June 23, 1981 letter from patent attorney Earl Tyner to Manzell (co-inventor of the '923 invention) confirming Manzell's authorization to file a divisional application on claims 8-11; (2) Tyner's July 2, 1981 letter to Bryan Burgess (Office of General Counsel, University of Florida), about filing a divisional application; and (3) a January 19, 1982 letter to Mansell from Arthur Yeager, a partner in Tyner's firm, stating that a divisional application had not been filed.

The Declaration further stated that "on being made aware of the failure to timely file the divisional application," Mansell consulted with patent attorney William D. Stokes (counsel of record here), who drafted a set of claims which, he said in the Declaration, "should have been made in the original application."

3. The Reissue Claims

The reissue application contained 20 claims. Claim 13 reads:

13. A method for developing citrus fruit strains low in limonin content, which method comprises identifying by the use of limonin-specific antibodies as a analytical reagent the limonin-low mutants in a breeding or cell culture program, and propagating said mutants.

Claim 19 reads:

19. A gamma gobulin fraction comprising antibodies reactive with limonin, said antibodies being formed consequent Claims 1-12 and 20 were allowed by the examiner. Claim 2 was cancelled by Weiler. Claims 13-19 were rejected, and that rejection was appealed to the board.

to injecting into an animal a limonin-protein conjugate.

4. The Board's Action

The board agreed with the examiner's view that "failure to timely file a divisional application including non-elected claims is a deliberate act and not error in the prosecution of the original patent" (citing In re Orita, 550 F.2d 1277, 193 USPQ 145 (CCPA 1977)). It sustained the rejection of claims 14-18 on that ground, i.e., because they are "directed to the same subject matter as the non-elected conjugate claims 9 and 10" of the original application. Claims 14-18 are not before us on appeal.

The board sustained the rejection of claims 13 and 19 on this specific ground:

Appeal claims 13 and 19 are directed to subject matter not claimed at all in the original application. As to them, the Examiner's reliance on the case of In re Rowand et al. is entirely correct and that decision is controlling. Here, as in that case, "there is nothing in the original patent evidencing that appellants intended to claim (this now claimed subject matter)" (526 F.2d 558, 560, 187 USPQ 487 at 489).


Whether the board erred in sustaining the rejection of claims 13 and 19.


The starting place is the statute itself, 35 U.S.C. Sec. 251:

Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Commissioner shall, on surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.

In enacting the statute, Congress provided a statutory basis for correction of "error". The statute is remedial in nature, based on fundamental principles of equity and fairness, and should be construed liberally. In re Bennett, 766 F.2d 524, 528, 226 USPQ 413, 416 (Fed.Cir.1985) (in banc); Ball Corp. v. United States, 729 F.2d 1429, 1439 n. 28, 221 USPQ 289, 296 n. 28 (Fed.Cir.1984); In re Hay, 534 F.2d 917, 919, 189 USPQ 790, 791 (CCPA 1976). Nonetheless, not every event or circumstance that might be labeled "error" is correctable by reissue.

A. The Parties' Contentions

Weiler says the subject matter of neither claim 13 nor claim 19 constitutes "an independent and distinct invention" from that secured by the original patent, because both subject matters constituted part of the invention which was intended or sought to be secured by the original patent.

Pointing to the letters about a divisional application, on other claims, Weiler says his failure to claim the subject matter of claims 13 and 19 was not deliberate or purposeful, but was caused by the prosecuting attorney's error. He says that "but for the inventors' ignorance of patent drafting technique, their lack of knowledge of claiming technique, and their attorney's obvious lack of understanding of the invention, the subject matter of the part of the invention covered by claims 13 and 19 would have been included in the original patent."

The Solicitor's brief concedes that some minimal support for claims 13 and 19 appears in the patent's specification, but argues that "mere disclosure of this subject matter does not demonstrate an intent to claim this subject matter." The Solicitor's brief also argues that "if a mistake was made [in not filing a divisional application], it is not the type of mistake which can be corrected by reissue," citing In re Orita, 550 F.2d 1277, 1281, 193 USPQ 145, 149 (CCPA 1977). 1

B. The Board's Opinion

In its opinion, the board said, as above indicated, that the subject matter of claims 13 and 19 "was not claimed at all in the original application" (emphasis added), and that nothing in the patent evidenced an "intent to claim" that subject matter, citing In re Rowand, 526 F.2d 558, 560, 187 USPQ 487, 489 (CCPA 1975), as controlling authority.

This court reviews decisions, not the mere language of an opinion. When that language indicates an erroneous basis for the decision, the decision will be reversed, but that is not the case here. The board's language, while infelicitous, simply meant that Weiler's failure to have ever claimed, broadly or narrowly or otherwise, the subject matter of claims 13 and 19, and his failure to show an "intent to claim" that subject matter, indicated absence of the statutorily required "error."

The board's language reflected its well founded recognition that Weiler was seeking to claim subject matter entirely distinct from anything anywhere earlier claimed or attempted or intended to be claimed, and was not seeking to obtain a broadened or narrowed claim to subject matter claimed in the patent proffered for surrender. In dealing with that more common circumstance, one of our predecessor courts said "the whole purpose of the [reissue] statute, so far as claims are concerned, is to permit limitations to be added to claims that are too broad or to be taken from claims that are too narrow." In re Handel, 312 F.2d 943, 948, 136 USPQ 460, 464 (CCPA 1963).

C. Disclosure

Weiler argues, on the basis of loose language which, taken out of context, would appear to say that one looks only to see whether the subject matter of a reissue claim appears in the disclosure, and, if it does, a reissue applicant must be granted allowance of that claim. See D. Chisum, Patents, Sec. 15.03 at 15-53 (1985); I. Kayton, Kayton on Patents, Sec. 22-64 (1985). But the question of support in the disclosure is a Sec. 112 inquiry. If there be no such support,...

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