DECISION OF THE COMMISSIONER
REISSUE- S.50: Added Matter Same Invention Rules 52 and 53
The grounds that the added matter was admissable in the original
application only as a supplementary disclosure and that failure
to file it is not a defect within S. 50(1), and that there was
no intention to claim it, reversed. Affidavit shows that the
matter added to the disclosure and claims was well known and
does not change the actual invention.
FINAL ACTION: Grounds reversed.
IN THE MATTER OF a request for a review by the
Commissioner of Patents of the Examiner's Final
Action under Section 46 of the Patent Rules.
AND
IN THE MATTER OF a patent application serial
number 040,555 filed January 20, 1969 for an
invention entitled:
REDUCTION OF STAINLESS STEEL
Patent Agent for Applicant:
Messrs. C. Harold Riches Associates,
Toronto, Ontario.
This decision deals with a review by the Commissioner of
Patents of the Examiner's Final Action rejecting the Petition
for reissue. The request was made in accordance with Section
46 of the Patent Rules.
Reissue application 040,555 was filed January 20, 1969
in the name of W. Bleloch and refers to "Reduction of Stainless
Steel". The Petition reads as follows:
(1) That your Petioner is the patentee of Patent No.
766.171 granted on the 29th day of August 1967 for an
invention entitled "Reduction of Stainless Steel".
(2) That the said patent is deemed defective or inoper-
ative by reason of insufficient description or speci-
fication and by reason of the patentee having claimed
less than he had a right to claim as new.
(3) That the respects in which the patent is deemed
defective or inoperative are as follows: in the
original Canadian Patent No.766,171 the described
and claimed method of production of ELC stainless
steel included the step of simultaneously introducing
an iron ore slag and a reductant alloy of iron and
silicon into a ladle. The reductant alloy was des-
cribed and claimed as being introduced into the slag
in a solid crushed state. The state of the reductant
alloy should not however have been so limited but
rather should have included a description of, and
claims directed to, the introduction of the reductant
alloy in a molten state.
(4) That the error arose from inadvertence, accident or
mistake, without any fraudulent or deceptive intention
in the following manner; The inventor of the instant
invention, William Bleloch, was employed by the appli-
cant as a consultant engineer and metallurgist. The
applicant instructed its Patent Agents in the Republic
of South Africa to prepare a patent application in
respect of the instant invention. The Patent Agents
held preliminary discussions with the inventor and
based upon these discussions provisional patent
applications were lodged in the Republic of South
Africa to cover the invention. At the time of such
preliminary discussions,the question of the various
suitable states which the reductant alloy of iron
and silicon could take was not considered. Further
discussions took place between the Patent Agents and
other employees of the applicant who were acquainted
with the instant invention to agree upon the form
of the complete specification for the Republic of
South Africa, and other countries. During these
discussions,it was decided that the reductant alloy
should be described as being in a solid crushed
state when added to the ladle. Consideration was
not given to the possibility that the reductant
alloy could be added in a molten state. The
inventor was not involved in these discussions,
he being involved in other research work. The
complete specification which was filed in Canada and
matured to patent No.766,171 was based upon these
further discussions. The limitation of the state
of the reductant alloy in the complete specification
did not come to the attention of the inventor until
after the filing of the complete specification in
Canada. The inventor was aware that the reductant
alloy could be added to the ladle in a molten
state and had, in fact, performed experiments to
establish this fact well before the filing of the
Canadian complete specification. The inventor
informed the Patent Agents of this fact and the Patent
Agents immediately prepared and lodged with the
Patent Office of the Republic of South Africa an
application for a Patent of Addition to include the
use of a molten reductant. The Patent Agents erron-
eously assumed that such an application for a Patent
of Addition formed the proper bases for protection in
convention countries including Canada at a later date.
The Patent Agents did not discover that, in relation
to Canada, the assumption was in error until after
Canadian latent No.766,171 had issued.
(5) That knowledge of the new facts stated in the
amended disclosure and in the light of which the
new claims have been framed was obtained by your
Petitioner on or about the months of April and May
1967 in the following manner: The corresponding
British application No.12719/64 was involved in
opposition proceedings at which time the inventor
William Bleloch was again brought into discussions
with the Patent Agents respecting the
instant invention. It was at this time that the
inventor informed the Patent Agents that the
reductant alloy could be added in a molten state.
Your Petitioner was advised of this fact by the
Patent Agents and your Petitioner immediately
advised the Patent Agents to make applications for
a Patent of Addition to include the use of a
molten reductant. This application was lodged
with the Patent Office of South Africa on May 9,
1967. The Patent Agents did not discover until
about the month of May 1968 that the South African
application for a Patent of Addition did not form
the basis for protection in Canada.
In the examiner's action of March 24, 1970 he stated tha~
the applicant had not shown a satisfactory reason for the
grant of a reissue patent and also that new matter was added
to the application. The applicant in his response of Novembe
25,1969 argued:
We wish to point out however that there cannot
be any invention in using a molten reductant when
it has been disclosed that a solid crushed
reductant is effective. One would be obvious in
the light of the other and would immediately
occur to one skilled in the art. It is there-
fore submitted with respect that the addition of
reductant in a molten state is part of the same
invention and not a new invention.
In the Final Action dated June 29,1970 the examiner
stated:
Reissue is not permitted for the purpose of adding
new matter such as has been incorporated on page five
lines 4 to 21 and in the claims of the reissue
application. Matter of this nature may only be
added to an application in the form of a Supple-
mentary Disclosure; but the entry of a Supplementary
Disclosure is not permitted after the application
has been formally allowed.
There is no evidence in the above communications
supporting the contention that the applicant in-
tended to claim in the original patent what he
claims in the reissue application. Therefore,
Canadian Patent 766,171 is not deemed to be
defective or inoperative by reason of the patentee
claiming less than he had a right to claim as new,
due to inadvertence, accident or mistake and the
application for reissue is refused.
In the applicant's action of September 17,1970 in
which he asked for a review by the Commissioner of Patents
he argued:
The applicant submits that the re-issue application
is not open to objection on the grounds stated by
the Examiner and in support of this submission,
submits a further Affidavit sworn by the inventor
Dr. William Bleloch.
The Examiner contends that the statement that the
reductant can be added in a molten state is the
addition of new subject matter. It is the applicant's
respectful submission however that it can be reasonably
inferred from the statement of Page 4 already referred
to that the reductant can also be added in a molten
state. In paragraph 8 of the Affidavit of Dr. Bleloch
submitted herewith it is stated that:
I believe it is perfectly clear to skilled metallur-
gists in the art to which the invention relates
that solid crushed and molten reductants can be
interchanged but that the latter will require some-
what more careful control of operating conditions.
I further believe that any skilled metallurgist on
being presented with the disclosure of the use of
solid crushed reductants in the process of the
invention would appreciate that a molten reductant
could also be used in the process.
The reason for the use of a solid crushed reductant
is merely because it is easier to handle and control
in this state than when it is molten and this gives
obvious economic advantages.
It is therefore clear that the equivalency of solid
crushed and molten reductants is well known in the
art and a skilled metallurgist knowing that the
reductant can be added in a solid state would know
that it could also be added in a molten state.
In fact, solid crushed reductant is easier to control
than molten reductant and therefore all experiments
prior to the date of application were naturally
conducted with solid crushed reductants. This is
because the reaction is inherently exothermic.
Molten reductant would be an obvious substitution
for solid crushed reductant to a skilled metallur-
gist but if the reductant were added in a molten
state, more careful control of operating conditions
would be required.
If the application which matured to the original
patent were still pending, it is submitted that the
application could be amended to include the state-
ment that the reductant could be added in a molten
state. Rule 52 would not prohibit such an addition
and there would be no necessity to submit a supple-
mentary disclosure. Similarly it is submitted
the present petition is not an attempt to add new
subject matter to the original patent.
I have reviewed the grounds of rejection set forth by the
examiner, as well as all the arguments set forth by the applicant
and I am satisfied the rejection is not well founded.
I find I cannot overlook the affidavit by the inventor,
which substantiates the petition, in which he states:
I am aware of the Petition for reissue which has been
lodged on behalf of Rand Mines Limited.
I hold the degree of M.SC.(Rand) and Ph.D.(London),
in Chemical Engineering, and am a Member of the South
African Institute of Mechanical Engineers, a Fellow
of the Royal Institute of Chemistry, London, a Member
of the Institute of Chemical Engineers, London, and
a Member of the Iron and Steel Institute of London,
and have been since 1932.
I was never aware, until about April 1967, that
this patent or the others corresponding thereto in
various other countries were limited to the fact
that the reaction was effected only with solid
crushed reductant.
This limitation was brought to my attention by the
Patent Agent acting for Rand Mines Limited when I
was consulted during opposition proceedings in the
prosecution of the corresponding British Patent
Application.
I was not consulted on the final form of the speci-
fication for Patent No:766,171.
It was my intention that the invention should include
both the use of a molten reductant and a solid
crushed reductant, since the use of both can be
effected commercially by persons competent in the
reduction of ores to metals.
I believe it is perfectly clear to skilled metallur-
gists in the arr to which the invention relates that
solid crushed and molten reductants can be inter-
changed but that the latter will require somewhat
more careful control of operating conditions. I
further believe that any skilled metallurgist on
being presented with the disclosure of the use of
solid crushed reductants in the process of the
invention would appreciate that a molten reductant
could also be used in the process.
The reason for the use of a solid crushed reductant
is merely because it is easier to handle and control
in this state than when it is molten and this gives
obvious economic advantages.
The examiner maintains that the applicant is adding new
subject matter to the disclosure when he states: "Alternatively
the reductant alloy of iron and silicon may be introduced into
the ladle in a molten state. Preferably however use is made
of a solid crushed reductant since this is generally the most
economic.....". I am satisfied beyond reasonable doubt that to
a person skilled in the art, to whom the disclosure is addressed
and in view of the affidavit of the inventor that this would
not be considered as adding new subject matter.
A search of the prior art, U.S. Patent 3,074,793 to A.M.
Kuhlmann, January 22, 1963, of record on the file of the
Canadian Patent, of which this application is a reissue,
discloses the following.
"The silicon-reducing agent may be elemental silicon
or silicon alloys such as ferrosilicon. However,
silicomanganese is particularly well suited for the
process.
In carrying out the second step of the process, the
silicon-reducing agent may be added to the melt in
the ladle in the molten or solid state or may be part
molten and part solid. The various reactants and
additives may be introduced into the ladle simultaneously
or in sequence. The mixture of reactants may be
poured from one ladle to another to promote complete
reaction."
Therefore, I find that it is common knowledge that ferro-
silicon reductant may be added in solid or molten form.
The examiner also argued that the application should be
refused, "since there is no evidence that applicant intended
to claim in the original patent what he claims in the reissue".
However, I am of the opinion that once again the contents of
the affidavit must be considered and I am satisfied that the
actual invention made by the inventor was not restricted to
the use of the reductant in the crushed form only, and no new
invention is added by changing the disclosure to include the
use of molten reductant.
While it is not incumbent on me, in this consideration,
to make any finding on the patentability of the subject matter
of the claims, the claims should be scrutinized very carefully
for patentability in view of the matter set out in quotations
from the prior art, U.S. Patent 3,074,793.
In the circumstance therefore I see no good reason to
refuse the petition for reissue and I recommend that the
rejection of the examiner, to refuse the reissue, be withdrawn
based on the grounds set forth.
R.E.Thomas,
Chairman, Patent Appeal Board.
I concur with the finding 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 February, 1971.