IN THE MATTER OF a request for a review by the
Commissioner of Patents of the Examiner's Final
Action under Section 47 of the Patent Rules
(Prior to the Amendment by Order-in-Council P.C.
1970-728 effective June 1 1970).
AND
IN THE MATTER OF a patent application serial
number 001,820 filed October 5, 1967 for an
invention entitled:
POLYMERIZATION OF NON CONJUGATED DIENES:
WITH ~- MONOOLEFINS
Patent Agent for Applicant: Messrs. Alex E. MacRae & Co.,
Ottawa, Ontario.
This decision deals with a request for a review by the
Commissioner of Patents of the Examiner's Final Action
rejecting application no. 001,820.
The Patent Appeal Board conducted a Hearing on November 12,
1970. Mr. H. Marshall of Alex E. MacRae & Co. represented the
Applicant.
Reissue application No. 001,820 was filed on October 5,
1967 in the name of Natta, et al. The petition reads as
follows:
(1) That Your Petitioner is the patentee of Patent No.
680,494 granted on the 18th day of February, 1964
for an invention entitled Polymerization of Non
Conjugated Dienes with ~- Monoolefins.
(2) That the said Patent is deemed defective or
inoperative by reason of insufficient description
or specification and by reason of the patentee having
claimed more (in some respects) and less (in other
respects) than it had a right to claim as new.
(3) That the respects in which the patent is deemed
detective or inoperative are as follows:
(a) The process claimed in claim 12 of the patent and
described in the first paragraph on page 9 of the
patent better defines the invention than does claim
8, which may be too broad in view of Gresham et al
U.S. patent 2,933,480 which in column 2, first
paragraph, includes the possible use of catalysts
based on vanadium alkoxides and aluminum alkylhalides
(but does not disclose the specific catalysts or
temperatures of claim 12 or the copolymerizates of
claim 1). Accordingly, in the amended specification
submitted herewith, a new main process claim 6 is
submitted having the limitations of claim 12 of the
patent (with only minor variations) and, in conformity
those portions of the disclosure,including Examples
6 and 17 relating to processes not claimed have been
deleted and the Gresham et al patent has been speci-
fically acknowledged on page 2. Original claims 9
and 10 have been rewritten in independent form as
claims 7 and 8, including the limitations of claim
6, and the dependencies of the other original process
claims have been revised.
(b) The patent fails to include a claim reciting the use
of a diolefin having only one terminal double bond,
as exemplified by the diolefins of examples 4, 7, 10,
11, 12, 15 and 16 of the patent. Accordingly a new
claim 11 dependent on claim 6, has been inserted
in the amended specifications, and original claim 14
(now claim 12) has been made dependent on this claim 11.
(c) Claim 1 of the patent ends with functional limit-
ation "the copolymerizates being readily vulcanized
to elastomers having excellent properties and low
permanent deformation at breaks". This limitation
helps to define the consequences of having "substant-
ially all of the diolefin units in each molecule
showing unsaturation in side groups", and makes it
clear that substantially all of the diolefin units
could not be said to show such unsaturation if there
were a sufficient number of cyclized diolefin units
to interfere with attaining these consequences.
However the claim should include the recitation
that substantially all the diolefin units are
enchained in non-cyclized form and with 1, 2 addition,
as disclosed in the patent at page 2 lines 30-31,
page 7 lines 5-8, and page 8, lines 10-12. Accord-
ingly, to improve the definitions of the claim it
has been amended to include this recitations, and the
functional language has been deleted from the claim,
but the significance of the functional language has
been amplified at page 7 where the amount of non-
cyclized enchainment achieved by following the
disclosure has been set out.
(d) Claim l has also been amended
(1) to refer to intrinsic viscosity rather than
molecular weight. Intrinsic viscosity can be
measured accurately, and one of the well known
ways of ascertaining molecular weight is by
measuring intrinsic viscosity (see page 13 of
the patents, line 9), but since there are other
ways of ascertaining molecular weight it is clearer
to refer to intrinsic viscosity rather than to
molecular weight. References to intrinsic
viscosity measurements of the copolymerizates
are found in the disclosure of the patent at,
for example, page 14, lines 26-27 and page 16,
line 13, and, since these references show that
it is the intrinsic viscosity of the products
(the copolymerizates) that is measured, reference
has been made to the copolymerizates at page 13,
line 7 where the relationship of molecular weight
to intrinsic viscosity is given. Similarly
claim 1 as amended refers to the amorphous nature
of the copolymerizates and to the extractability
of the copolymerizates with boiling n-heptane,
since as the Examples show it is these products
that are normally tested.
(ii) to recite that the terminal unsaturation of the
non-conjugated diolefins is a vinyl unsaturation
to conform with the diolefins disclosed at page 6.
(iii) to delete the reference to the copolymers "being
essentially linear". This reference introduces
unnecessarily the relative term "essentially"
and the desired characteristic is established
by the reference in the claim to heptane solubility.
(e) Claim 2 has been restricted to copolymerizates of
propylene or butene-1, other minor amendments have
been made to the claims and claims 6 and 7 of the
patent, which are unimportant claims, have been
delete.
(f) Minor amendments to the disclosure are desirable to
clarify it and improve the translation from the original
Italian, and such amendments have been effected in
the amended specification submitted herewith.
4. That the error arose from inadvertence, accident or
mistake, without any fraudulent or deceptive intention
in the following manner:
The inventors were prior to the filing of their
application for parent in Italy on November 14, 1960,
aware of the Gresham et al United States patent 2,933,480
and drew the attention of their patent agents to this
patent, but in their preparation and presentation of
the application for the Canadian patent said agents
imperfectly described the invention, having overlooked
the suggestion in Gresham et al of the use of catalysts
based on vanadium alkoxides and aluminum alkylhalides,
and consequently did not in the specification suffi-
ciently point out and adequately claim the invention
disclosed to them, although they fully described and
(subject to what is said below as to claim 11) claimed
the subject matter to which the enclosed amended
specification is confined.
The omission of a dependent claim having the limita-
tions of claim 11 presented herewith was an inadvertent
omission of the patent agents.
There was an error of draftsmanship, on the part of
the patent agents, in the language in which claim 1
was expressed; the class of products covered by the
claim is not easy to define with precision, but there
was no intention to draft an indefinite specification
or claim. The draftsman overlooked the possibility
of including the more precise language employed in
the amended claim 1. Similarly more precision has
been introduced by the other amendments made to the
disclosure and claims.
(5) That knowledge of the new facts in the light of
which the new claims have been framed and the
disclosure amended was obtained by Your Petitioner
in the period from February 24, 1967 to date in the
following manner:
A member of Your Petitioner's staff came to Canada
on February 24, 1967 to discuss with Canadian counsel
objections to the patent made in an action brought
by E.I. DuPont de Nemours and Company and DuPont of
Canada Limited in the Exchequer Court of Canada for,
inter alia, a declaration that Patent No. 680,494
is invalid and void. The specification was carefully
reviewed, and the desired amendments were thereafter
settled in consultation with those of the inventors
who are still employed by Your Petitioner and who
confirmed that the amendments are in conformity with
the invention made by the inventors prior to that
priority date of November 14, 1960 and that the
amended specification submitted herewith includes
nothing that they did not,prior to said date,
conceive to be part of their invention or that
they did not intend to protect by Patent No. 680,494.
In an official action dated April 22, 1969, the examiner
refused the Petition for Reissue and expressed the view that
the error in claiming too broadly cannot be considered to
have arisen from inadvertence, accident or mistake within
the meaning of Section 50 of the Patent Act since the exis-
tence of the Gresham patent was known by the inventors and
drawn to the attention of the inventors patent agents before
the filing of the application. The examiner also expressed
the view that improvements in definition and removal of
functional language in claim 1 are not within the meaning of
Section 50. The action raised several other objections
relating to other amendments to the specification proposed
in the Petition for Reissue but not transcribed above.
In a letter dated July 22, 1969 the petitioner argued
that the claims of the patent had not been deliberately drawn
to cover something known to be old and they had not been
drawn with deliberate disregard of what was shown in the
prior art, but that the patent agents overlooked one of the
possibilities suggested by the Gresham patent by inadvertence,
accident or mistake. The petitioner further stated that
the inadvertence was in not apprehending the facts correctly
and referred to Curl-Master Mf. Co. Ltd. v. Atlas Brush Ltd.
(1967) S.C.R. 514 at 531 to support his contention that the
patent agent's mistake is proper grounds for reissue.
The petitioner also argued that one of the principal
reasons for Section 50 is to enable poor draftsmanship to be
corrected. He contended that the agents failure to use
appropriate terminology can be characterized as a mistake made
without any fraudulent or deceptive intention and referred to
Withrow v. Malcolm (1884) 60 R 12. The petitioner advanced
further arguments against the other objections raised in the
official action and submitted an affidavit by all but two of
the inventors stating that the claims of the original patent
do not accord with the original intention of the inventors.
On September 18, 1969 the examiner issued a Final Action
under Rule 46 of the Patent Rules wherein the objections
raised in the above mentioned official action were reiterated.
By a letter dated December 17, 1969 the petitioner amended
the application thereby overcoming all of the objections put
forward in the official action and the final Action except
the two discussed above i.e. (1) that the error in claiming
too broadly cannot be considered to have arisen from inadver-
tence, accident or mistake within the meaning of Section 50
of the Patent Act and (2) that improvements in definition and
removal of functional language in claim 1 are not within the
meaning of Section 50. With regard to these two objections
the petitioner reiterated the arguments put forth in his
letter of July 22, 1969 and pointed out that the patent agent,
like any other person, is susceptible to inadvertence, accident
or mistake. He also contended that improvements in definition
and removal of functional language are in accordance with
Section 50.
On April 16, 1970 the examiner issued a second Final
Action under Rule 47 ot the Patent Rules in which the two
remaining objections were reiterated. In this Action the
Examiner pointed out that it is the responsibility of inventors
and their patent agents to carefully study the prior art known
to them and to frame their patent claims to avoid prior art
and to clearly define the invention and that failure to do
so is not considered to be an error which arose from inadvertence
accident or mistake within the meaning of Section 50 to the
Patent Act.
The petitioner responded by letter dated July 15, 1970
requesting a review of the application by the Commissioner
under Section 46(2) of the Patent Rules and briefly stating
the petitioner's position which was unchanged from that set
forth in the two previous letters. It was also argued that
the existence of inadvertence, accident or mistake is not an
issue of law, but one of fact.
The legislation upon which the reissue of patents is
based is Section 50 of the Patent Act which reads, in part,
as follows: (Section 50(1) quoted).
The patentee's agent has argued that the error of drafting
the claims too broadly in view of the Gresham et al patent was
an oversight on the part of the patent agent in view of the
complex nature of that patent. Similarly it was argued that
the failure to use clear and definite language in claim 1 was
an error in draftsmanship by the patent agent.
The patentee's agent has made reference to Curl-Master
Manufacturing Company Limited v. Atlas Brush Limited(1967)
S.C.R. 514 at 531 where it was held that where failure by a
patent attorney fully to comprehend and to describe the
invention for which he had been instructed to seek a patent
was a proper case for a reissue of a patent.
Upon review of the grounds for rejection set forth by
the Examiner, as well as all the arguments both written and
oral, I am not satisfied that the rejection is well founded.
At the hearing the Patent Agent, Mr. H. Marshall, reviewed
the stand of the applicant and stressed the point that in his
opinion the application for reissue was proper because the
agent had made a mistake in failing to avoid the art while
drafting the claims. The Patent Agent also requested the
Patent Appeal Board to study two extra points stated as follows:
(1) The refusal by the Examiner to allow the applicant
to correct a functional limitation in claim 1.
(2) The refusal by the Examiner to allow the applicant
to delete claims 6 and 7.
At the hearing it was suggested to the Patent Agent that
there was some concern that the petition was not definite
in that some vague terms were used such as: a) ".... the claims
may be too broad in view of Greshman ..." b) ".... the
possible use of catalysts ....". The Court has held, Auer
Incandescent v. William P. O'Brian (1897) 5 Ex. C.R. 243, 285,
that "The use of the word 'deemed' imports that a discretion,
a judgement is to be exercised. But by whom? In the first
place perhaps by the applicant, but in the end and as a
foundation for his jurisdiction by the Commissioner". The
examiner has stated "The invention defined in claim 8 of the
Canadian Patent 680,494 is broadly disclosed in United States
Patent 2,933,480 ...". In view of this the patent can be deemed
defective. Therefore, I find that the petition may be accepted.
Also at the hearing, it was suggested to the Patent Agent
that there was no proof of intention to restrict the claims
as they presently stand.
I find I cannot overlook the affidavits by the inventors,
which substantiate the petition, in which they state "The
claims of the original patent 680,494 are not in accord with
our intentions when the application for that patent was
prepared". Further "It was our intention that the claims
should distinguish clearly from what is disclosed in United
States Patent 2,933,480 ..... thus it was not our intention
to claim a process using catalysts based on vanadium alok-
oxides and aluminum alkylhalides and to do so was a mistake
and an oversight".
In the present situation claim 8 was drawn too broad in
scope in view of the known patent to Gresham. In view of the
evidence presented, that the error arose from inadvertence,
accident or mistake,I find that the applicant should be
allowed to restrict claim 8 to what he actually invented.
In other words he claimed more than he had a right to claim
as new. To so restrict this claim, to my mind, would be in
the public interest.
With respect to the Patent Agent's request for the Board
to comment on the refusal of the examiner to allow the appli-
cant to correct a functional limitation in claim 1, the examiner
states that "Several amendments have been made to claim 1 to
overcome indefiniteness in the claim. However, improvements
in definition and removal of functional language are not in
accordance with Section 50".
In Withrow v. Malsolm (1884) 6 Q.R. 12 the Ontario Judge
quoted with approval statements from a U.S. Supreme Court
decision on reissue as follows:
"The specification may be amended to make it more
clear and distinct ...." (Proudfont J. Page 50).
The great object of the law of reissues seems to
have been to enable a patentee to make the descrip-
tion of his invention more clear, plain and specific".
The Court has also held, Leonard v. Commissioner of
Patents (1914) Ex. C.R. 14 at 358, that the words "by reason
of insufficient description or specification" cover the claim
in the patent as part of the specification. From this it is
evident that a claims on reissue, may be amended to make it
more clear and distinct. In view of this I find no grounds
for the refusal by the examiner to allow an amendment to
claim 1.
On the second point raised by the Patent Agent "the
refusal by the examiner to allow the applicant to delete
claim 6 and 7", I find no reason for this refusal. A reissue
application may be in proper form without containing all the
claims of the original patent. Therefore, I submit it is
quite proper to disclaim on reissue.
I recommend that the rejections, discussed in this report,
for refusing to allow the reissue application be withdrawn.
R.E. Thomas,
Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board
and I am therefore setting aside the Final Action and returning
the application to the examiner for resumption of prosecution.
Decision accordingly
A.M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario
this 26th day of November, 1970.