October 2, 1970.
Dear Sirs: Re: Final Refection Application No. 975,082
Filed November 8, 1966 P. Richard et al
COATED METAL ARTICLE AND METHOD OF
PRODUCING SAME
In accordance with the request of the applicant in his letter of
January 8, 1970 the examiner's Final Action under Section 47 of
the Patent Rules (prior to amendment by Order-in-Council P.C.
1970-728 effective June 1, 1970) dated October 8, 1969 has been
reviewed.
By mutual agreement with the applicant's Patent Agent a Hearing was
held September 29, 1970 before the Patent Appeal Board. The presen-
tation for the applicant was made by Mr. Baillie of Langner, Parry,
Card & Langner, New York and Mr. Macklin and Mr. McKhool of your firm.
In the Final Action the examiner rejected the application for a reissu
patent on the grounds that it did not come within the provisions of
Section 50(1) of the Patent Act since the invention of the reissue
application was not the same as the invention of the original patent
and furthermore there was no evidence that applicant had intended to
limit his claims in the original patent.
After carefully considering the examiner's actions and the written
and oral presentations on behalf of the applicants the Patent Appeal
Board finds the petition acceptable under Section 50 of the Patent Act
Sufficient evidence has been produced to support applicant's contention
that he intended, at the time the original patent issued, to restrict
his claims to the operable aspects of the invention, and failed to do
so by reason of an oversight.
The applicant was mistaken in his theory of how the invention worked,
however this does not negate the fact that an invention had been
made.An invention is considered to have been made and completed even
though an inventor may not know why he obtained the results. Further-
more, the product can be produced using the starting materials of
either of the two examples given and following the teachings of the
specification. It was also found that the product is claimed in iden-
tical form in the Patent and the Reissue application.
I concur with the findings of the Patent Appeal Board and I am there-
fore setting aside the Final Action and returning the application to
the examiner for resumption of prosecution.
Yours truly,
A.M. Laidlaw,
Commissioner of Patents.
Messrs. Gowling, MacTavish, Osborne
& Henderson,
116 Albert Street,
Ottawa 4, Ontario.