Wilder, In re
| Decision Date | 20 June 1984 |
| Docket Number | No. 83-1360,83-1360 |
| Citation | 736 F.2d 1516,222 USPQ 369 |
| Parties | In re Leslie N. WILDER, James C. Whitney and Gary G. Matison, Appellants, and Lanier Business Products, Intervenor. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Gregor N. Neff, New York City, argued for appellants. With him on the brief were William S. Frommer, New York City, of counsel and Melvin J. Scolnick, Stamford, Conn., of counsel.
Thomas E. Lynch, Washington, D.C., argued for appellee, Patent Trademark Office. With him on the brief were Joseph F. Nakamura, Sol., and Jere W. Sears, Deputy Sol., Washington, D.C.
Eugene S. Zimmer, Atlanta, Ga., argued for intervenor Lanier.
Before BALDWIN, Circuit Judge, NICHOLS, Senior Circuit Judge, and KASHIWA, Circuit Judge.
This appeal is from a decision of the United States Patent and Trademark Office Board of Appeals (board) rejecting claims 1-16 of appellant's Reissue Application Serial No. 079,171. Claims 1-16 were rejected for appellants' failure to sufficiently allege error required by 35 U.S.C. Sec. 251 and for failure of appellants' oath to meet the requirements of 37 CFR 1.175(a)(5). Claims 14-16 were also rejected as being drawn to subject matter not disclosed in the original patent, U.S. Patent No. 4,051,540. We reverse the board's rejection of claims 1-16 for failure properly to allege error as required by the statute and regulation but affirm the board's rejection of claims 14-16 on the ground that the disclosure requirement has not been satisfied.
The invention claimed in U.S. Patent No. 4,051,540 (the original patent) is a mechanism for indicating the location of information recorded on a dictating machine. A person speaking into a dictating machine indicates the location of instructions on a recording medium, such as a magnetic tape, by recording control tones at the beginning or end of the instructions. A person transcribing dictated information rewinds the tape in a transcribing machine. During rewinding, the transcribing machine scans the tape and detects control tones. The locations of detected tones are stored in an electrical circuit and lights appear on a linear array that correlate with the locations of control tones on the tape. After rewinding, the transcriptionist locates specific information by advancing the tape until an indicator aligns with a light in the array.
Claim 1 of the original patent is reproduced below:
1. Apparatus for indicating the location of particular information on a previously recorded record medium, said particular information being represented by predetermined recorded signals, comprising:
scanning means for scanning said record medium;
an array of selectively actuable light emitting sources;
indexing means for scanning said array of light emitting sources in synchronism with the scanning of said record medium, said indexing means being in actuating relation sequentially with each of said light emitting sources;
detecting means for detecting the presence of said predetermined recorded signals during the scanning of said record medium to produce an actuating signal; and
temporary storage means for temporarily storing said actuating signal until said indexing means is in actuating relation with an unenergized light emitting source to energize said light emitting source. [Emphasis added.]
Claims 1-13 of the Reissue application are the same as claims 1-13 of the original patent. Unlike the original claims, reissue claims 14, 15, and 16 do not require that lights be scanned "in synchronism with the scanning of said record medium." Accordingly, the original claims are directed to a species while the reissue claims are directed to the genus of indicating mechanisms
that visually identify positions on a recording medium when the recording medium is scanned.
OPINIONThe first order of business for the board and for this court is to determine whether appellants have satisfied the requirements of 35 U.S.C. Sec. 251 and 37 CFR 1.175. In re Clark, 522 F.2d 623, 625, 187 USPQ 209, 211 (CCPA 1975); In re Rowand, 526 F.2d 558, 559, 187 USPQ 487, 488 (CCPA 1975).
The statute, 35 U.S.C. Sec. 251, provides, in pertinent part, that:
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 the 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.
There are two distinct statutory requirements that a reissue oath or declaration must satisfy. First, it must state that the patent is defective or partly inoperative or invalid because of defects in the specification or drawing, or because the patentee has claimed more or less than he is entitled to. Second, the applicant must allege that the defective, inoperative, or invalid patent arose through error without deceptive intent. The applicants satisfied the first requirement by alleging less was claimed in the original patent than the patentee was entitled to claim. The only issue is whether error correctable through reissue was properly alleged.
The error alleged in the first declaration filed by the inventors was that:
[t]he true scope of the invention disclosed in the patent was not fully appreciated by us or by our attorney * * * until the commercial success of the "Thought Master" record/playback device was found to be based, at least in part, on the linear array of fixed, selectively energizable light elements, each being selectively energized to provide a visual light mark in response to a detected predetermined signal, and each being associated with a respective length of record tape, which is provided in the electronic indicator incorporated in the said "Thought Master" record/playback device * * *.
The attorney who prosecuted the original patent stated in a declaration accompanying the reissue application:
3. That I did not fully appreciate the true nature and scope of the invention disclosed in the original application and thus did not prepare claims of broad enough scope to provide the patent protection to which the invention properly is entitled.
* * *
* * *
6. My failure to fully appreciate the true nature and scope of the invention disclosed in the original application was without fraudulent or deceptive intention, and arose from inadvertence, accident or mistake.
In a subsequent declaration, the attorney further elaborated on the cause of his error with the following explanations:
7. The invention disclosed in said original application was incorporated into a dictating machine sold by the assignee of said patent under the trademark "Thought Master". When said patent issued, sales of this device had only recently begun. Subsequently, in the latter half of 1978, said assignee began marketing a modified version of a dictating machine, identified as the "Thought Master II" machine. Differences between these versions of the Thought Master dictating machines are described below.
8. In the summer of 1979, I conferred with James C. Whitney, the only one of the inventors still employed by the assignee, regarding the question of the scope of protection secured by said patent. Particularly, Mr. Whitney requested that I investigate the scope of said patent to determine if it adequately covered both versions of the Thought Master machine, and also if said patent adequately protected the broad invention disclosed therein from what Mr. Whitney believed to be possible attempts by competitors of the assignee who, in the future, might try to exploit said invention.
9. In accordance with Mr. Whitney's request, I investigated the claims of said patent in light of the prior art of which I then was aware. From my investigation, I concluded that said patent could support broader claims whose scope, broadly, is the combination of a linear array of fixed, selectively energizable light elements, each being selectively energized from an inactive condition to an active condition to provide a visual light mark representing its active condition, a detector for detecting a predetermined signal as the record tape, upon which the predetermined signal is recorded, is being scanned to produce an actuating signal, a storage device for storing the actuating signal and an energizing circuit for energizing a respective light element, commensurate with the location of the record tape being scanned, with the stored actuating signal so as to provide, upon scanning the record tape, a display of the relative locations of the predetermined signals on the record tape. I further concluded that the limitations in the broadest claim of said patent, quoted above in paragraph 5, is [sic] not essential for practicing the broad teachings of the invention disclosed in said patent, and I advised Mr. Whitney that, because of this limitation, the scope of the patent was not adequate to protect the invention properly.
10. I recognized, when I investigated the claims of said patent, that my speculation of the prior art, as...
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