DECISION OF THE COMMISSIONER
REISSUE - S.50: Lack of Intent is Claim Not Proven.
Commissioner not satisfied that the applicant has failed to meet
the intent of S.50. There is no question of "recapture of subject
matter" since no claims were cancelled in the original patent
application.
FINAL ACTION: Grounds reversed; Subject to further prosecution.
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 009,562 filed January 10, 1968 for an
invention entitled:
AUTOMOTIVE VEHICLE FRAME STRAIGHTENING DEVICE
Agent for Applicant
Messrs. Smart & Biggar,
Ottawa, Ontario.
This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action dated
April 16, 1971 on application 009,562. This application was
filed in the name of Joseph J. Latuff et al and refers to
"Automotive Vehicle Frame Straightening Device".
The petition reads as follows:
That the respects in which the patent is deemed defec-
tive or inoperative are as follows: the claims allowed
in the said patent are too narrow, too specific and
too limited in the protection acquired thereby, by
reason of the patentee claiming less than it had a right
to claim in the patent and that such defects consist
particularly in the following:
(a) Unnecessary limitations in the claims, and by
way of example:
All of the claims are limited to a device having
"inner and outer U-shaped guide-acting frame
members", and "means rigidly mounting said frame
members ... defining therebetween a U-shaped
upwardly opening passage,"; and
(b) Failure to prosecute claims for the patentees'
novel inventive concept; that is,the claims
of the patent are far too specific to details of
structure which may be readily and easily modified;
and which in fact are limited to details of
structure which are not present in the present
commercial structure in accordance with the
patentee's invention.
That the error arose from inadvertence, accident or
mistake, without any fraudulent or deceptive intention
in the following manner:
The patentee's original application was prepared and
filed with the belief that the claims presented therein
covered the subject matter disclosed and that the
claims in the original patent were prosecuted with the
belief that the claims finally allowed covered the
patentee's invention; and, in fact, patentee sold an
exclusive license under said patent to Marquette
Corporation, a corporation of the State of Delaware,
U.S.A., having its principal place of business at
Minneapolis, Minnesota U.S.A., with a mutual under-
standing that the claims of the patent actually
covered the patentee's invention; but since the issuance
of the above-identified patent a United States patent,
a copy of which is attached, which is the counterpart
thereof, issued with the unnecessary limitations
omitted therefrom causing the patentee's attorneys
to review the claims of the above-identified patent and
discover the defects.
Because the above-identified patent issued prior to
the United States counterpart and because the claims
in the said patent were allowed on the first action
by the Patent Office, the defects were not discovered
until the said patent and the United States counter-
part were compared.
That knowledge of the new facts in the light of which
the new claims have been framed was obtained by Your
Petitioner on or about the 30th day of October, 1966
in the following manner;
On or about the date of the signing of a license
agreement between patentee and Marquette Corporation,
patentee's attorneys and Marquette Corporations's
attorneys compared the claims in the above-identified
patent and the United States counterpart whereupon
the defects in the said patent were discovered. Prior
to the said license agreement there was no occasion
to study the claims of the said patent since the
Patent Office accepted the application therefore on
the first action and the patentee was thereafter
preoccupied with the prosecution of the counterpart
United States application. Upon discovering the defects,
and as soon as financially and timely practicable,
patentee authorized its attorneys to begin collecting
information and preparing a petition for the reissue
of said patent,which attorneys in due course and in
the sequence of their workload prepared the present
petition.
In the prosecution terminated by the Final Action the
examiner refused the application for reissue in that applicant
did not intend to claim in the original patent what he claims
in the reissue. In this action the examiner stated:
The rejection of the application is maintained and the
reason for such rejection is that the Applicant did
not intend to claim in the original patent what he
claims in the reissue application. If the applicant
intended to claim the invention in a new way before
the first United States Patent Office action and before
the Notice of Allowance mailed by the Canadian Patent
Office, he could have filed a voluntary amendment.
The fact submitted by the applicant that he amended
the United States claims after January 24, 1966 does
not prove that he intended to claim the invention
in Canada in the new form on or before November 19,
1964 when he filed the Canadian application or at any
other time before the allowance.
The applicant in his response of July 16,1971 stated:
Affidavits by each of the inventors named in the
above identified application are enclosed together
with an affidavit of the attorney who prepared the
application for the original patent and it is believed
that these clearly establish that the applicants
intended to claim the invention in the original
application in the manner in which it is claimed in
the present application and that failure so to claim
the invention arose from a lack of a full understanding
of the invention on the part of the attorney who
prepared the original application and unfamiliarity
with patent terminology on the part of the inventors.
Thus the present case is closely similar to the
Curlmaster case and it is submitted that the re-issue
application is clearly allowable. The Examiner,
therefore, is respectfully requested to withdraw
his final Action and pass the case to allowance. Fail
ing that, this constitutes a request for a review
by the Commissioner.
After reviewing the ground for rejection set forth by the
examiner, as well as the arguments set forth by the applicant,
I am not satisfied that the rejection is well founded or at
least I find the prosecution is such that a proper decision
cannot be made.
Applicant referred to Curl-Master v. Atlas Brush 1967
52 C.P.R. P.51 Supreme Court decision and attempted to draw
an analogy in support of obtaining broader claims in the reissue.
In the Curl-Master decision the patent was held to be defective
by reason of insufficient description and this resulted from a
mistake, namely a failure by the patent agent fully to comprehend
and to describe the invention for which he had been instructed
to seek a patent. I find that we do not have a similar situation
here; such being the case the defence based on Curl-Master is
irrelevant on fact.
Notwithstanding the above, and the inconclusiveness of the
Petition, the affidavit by the applicant dated May 19,1971
cannot be overlooked. The affidavit reads in part:
That on or about 21 October, 1963 I ordered the
preparation of a patent application on an automotive
vehicle frame straightening device, which patent
application I fully intended to cover several
modifications of the automotive frame straightening
device, which modifications my co-inventor,Joseph
J. Latuff, and myself were experimenting with prior
to 19 November, 1964;
That I am completely unfamiliar with patent terminology
and fully believed that all of the modifications to
the automotive vehicle frame straightening device
were included within the language of the claims of
the Canadian patent application filed 19 November,
1964, which patent application resulted in Patent
No. 731,981.
I note from the above that certain modifications, which
the applicant states he intended to claim, were carried out
before the filing of the original patent application. Applicant
has not indicated what the nature of the modifications were.
Furthermore this is not apparent from claim 1,which claim is
not clear and distinct. Also, this claim is not supported by
the disclosure. Part (a), for example, reads "... guide-acting
frame members each having opposed legs spaced apart a sufficient
distance to receive a vehicle therebetween. The subject matter
of the underlined portion is not supported by the disclosure
of this application or of the original application.
Applicant is advised, with respect to a reissue application
that there is a balance of interest between the public's right
to abandoned subject matter and the potential loss of a patentee's
valuable property rights through erroneous claiming. In striking
this balance, a patentee is given preference and is permitted
to eradicate his ostensible abandonment, provided certain
carefully defined conditions are satisfied. One of the
conditions, which may be an issue here, is that the reissue
must be for the same invention,and it must also meet all the
other requirements of Section 50 of the Patent Act. I find
there is no question with respect to recapture of subject matter
in view of cancelled claims in that no claims were cancelled in
the original patent application. It is also permissible, in
some circumstances, to delete an unnecessary restriction in a
claim which forms no part of the real invention.
I am not satisfied, beyond reasonable doubt, that the
applicant has failed to meet the intent of Section 50 of the
Patent Act; however, further prosecution is necessary and in
the circumstance, therefore, I recommend that the decision of
the examiner, to refuse the application on lack of intent to
claim, be withdrawn for the reasons 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 further prosecution.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario,
this 13th day of October, 1971.