DECISION OF THE COMMISSIONER
REISSUE: Claims to be revised.
Claims allowed in orginal patent are refused in view of
art. The remainder of the claims must be amended to include
an additional characteristic. Rejections based on the petition
failing to show intent and claims directed to different
inventions were not upheld.
FINAL ACTION: Modified.
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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 070,459 filed December 19, 1969 for an
invention entitled:
HYDRAULICALLY OPERATED DEVICE FOR
CUTTING TREES, LOGS,AND THE LIKE
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Agent for Applicant
Messrs. Johnson, Marcus & Wray,
Ottawa, Ontario.
*****
This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action dated
July 22, 1971 on application 070,459. This application was
filed in the name of Dick L. Rehnstrom and refers to
"Hydraulically Operated Device for Cutting Trees, Logs and
the Like".
The petition reads as follows:
1. THAT Your petitioners are the patentees of Canadian
Patent 723,956 granted on the twenty-first of
December 1965 an invention entitled "Hydraulically
Operated Device for Cutting Trees, Logs and the Like"
2. THAT the patent is deemed defective or inoperative by
reason of insufficient description or specification
and by reason of patentee having claimed more and 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:
(a) The specification, in paragraph one on the first
page of the disclosure of said issued patent 723,956
broadly recites the invention as relating to "apparatus
for cutting trees, logs and the like and comprising
at least one cutting member movable when actuated upon
by a hydraulic cylinder" but instead, the invention
is more narrowly and correctly concerned with "a
cutting member mounted on a frame and movable relative
upon actuation of power means" and having the cutting
blade and frame arranged such as to provide a jaw "of
the open mouth type" for receiving a tree to be
severed by particular movement of the one relative to
the other, i.e. "in a direction normal to the length
of the article".
(b) The specification, in paragraph two of the issued
patent, recites the invention as consisting of "apparatus
which is designed in such a way that during a cutting
operation each point on the blade of the cutting member
carries out a movement which has a component in the
longitudinal direction of said blade" but more correctly
it is a point "on the cutting edge of the blade" which
has a component of motion parallel to such "cutting
edge". Also, the invention is more narrowly directed
to a severing device of the "open mouth type" illustrated
in the drawings.
(c) In the paragraph of the specification immediately
following the list of drawings, with reference to the
issued patent, the apparatus is described with reference
to the drawings, as being illustrated in various manners
in various positions and more correctly such illustration
is with respect to "Figure 1" and it is the "jaw" which
is illustrated in an "open position" ready to receive
a log. In the same paragraph the point is referred to
in reference to the "blade" but more specifically should
be referred to as being "on the cutting edge" of the blade.
(d) The paragraph next following that last discussed
above, describes the link system as comprising "two link
pairs" but more accurately, and what is illustrated is
"a pair of links 4a and a pair of links 4b.
(e) The fifth last paragraph incorrectly suggests that
the choice of a suitable shape for the "blade",may be
chosen to modify the mentioned advantageous effect but
instead, it la the shape of the "cutting edge" which is
of concern. Reference is also made to the portion
located "inside the blade" and such portion, however,
is actually located in a position relative to the "cutting
edge". The same paragraph also too broadly describes the
actual location of the grooves which are located
perpendicular to the "cutting" edge of the blade.
(f) The second last paragraph of the specification
broadly describes horizontal attitude of the cutting
apparatus by virtue of being suspended but more
specifically such position results from "being suspended
at its center of gravity
(g) Claim 1 of said patent 723,956 claims more than
the patentee had a right to claim by broadly being
directed to a particular movement of a cutting blade
in a shear during severing. The particular movement
consists of "a component in the longitudinal direction
of said cutting blade" and such movement is provided
b,y having the cutting member "mounted in a link system
having two sets of links". Mounting of a shear blade
on a frame by two links providing motion in a blade with
"a component in the longitudinal direction of said
cutting blade" is known in Canadian Patent No. 529,975
issued September 4, 1956.
The error of claiming more arose because of the patentee
having no knowledge of the existance of the Canadian
patent 529,975.
In the prosecution terminated by the Final Action the
examiner rejected the application for reissue on the following
grounds:
(a) Claims 1 to 21 are not directed to the same
invention as the claims alloyed in the original
patent and which claims are presently on file;
(b) There is no error in the original claims through
applicant having claimed more than he had a right to
claim in view of Canadian Patent 529,975, that has
come to his attention;
(c) The petition fails to adduce any evidence of intent
to claim all the features of claims 1 to 21 presented
in the reissue application, and
(d) The petition is defective and incomplete.
In this action the examiner stated: (in part)
Comparing claims 1 and 22 for example, claim 1 contains
the following limitations no present in claim 22:
(a) said cutting member and frame defining a jaw having
an open mouth
(b) said links being disposed so as not to traverse
the bite of the jaw.
Claim 1 however omits many of the limitations of claim
22 including "said cutting member ... having the shape
of an oblong plate". Applicant has contended in the
letter of May 6, 1971, page 3; 2nd paragraph that the
shape of the blade is not a feature of patentability.
It is held however that the blade shape is a structural
characteristic and is a patentable feature. Since
neither of claims 1 and 22 therefore is broader than
the other, such claims are deemed to be directed to
different inventions. Section 50 of the Patent Act
states that a reissue may be obtained for the "same
invention" only.
The petition fails to adduce any evidence of intent
to claim all features of claims 1 to 21 presented in
the reissue application. In the letter of May 6, 1971,
page 6, applicant has argued that the presence of
features in the disclosure of the application as originally
filed is evidence of what applicant intended to cover.
It is held however that the inclusion of features in
a disclosure does not provide sufficient evidence to
support applicant's contention that he intended to
claim them. In fact a review of the prosecution of
the original patent verifies that at no time did
applicant attempt to claim or show any intent to claim
the features of claims 1 to 21.
Item 2 is now defective since by introducing the original
claims it cannot be said that patentee "claimed more
and lees" than he had a right to claim as new. Section
50 of the Patent Act provides for reissue if an applicant
claims more or less and it is not seen how claims could
be defective because of claiming more and less in the
original. Applicant has attempted to overcome this
problem by inserting claims to different subject matters
in the reissue (which has been dealt with in ground A
above.) In any case the submission of the original
claims in the reissue is evidence that applicant considers
the patent is not defective by having claimed "more and
less".
Applicant has failed to fully state in the Petition in
what respect he considers the patent defective or
inoperative in the light of which every new claim of
claims 1 to 21 have been framed. In this respect
attention is directed to Rule 81 of the Patent Rules.
In the response of December 21, 1971 the applicant went to
great lengths, citing twenty-four patents, to show that different
elements of the claims are old and should not be considered as
essential features.
The applicant maintains that the application for reissue
is self-evident of error and compares the teaching of Canadian
Patent 529,975 to show that there is error in that applicant claimed
more than he had a right to claim as new. The error was in
complete inadvertence as the applicant was not aware of the
patent in question. The applicant also maintains that he has
a right to claim other features, such as, "a crane beam" in that
a crane beam is well known in the art.
Applicant also stated: (in part)
Ground D of the objection in the Official Action
concerns defective and incomplete petition. Items H
and I which are referred to as being cancelled by
way of applicant's August 7, 1970 letter, refer to the
claims in the corresponding U.S. patent which has
since been re-issued. Because of the cancellation of
paragraphs H and I, it is indicated that item 2 is now
defective since the patentee states therein claiming
more and less than there was a right to claim as new.
Because of the cancellation in the petition of items
H and I, the words "and less" may be deleted or
considered inapplicable since there is only one
independent claim and which claim claims more than
applicant has a right to claim. The petition is,
admittedly,poorly drawn for reasons as previously
set forth, namely, basing the Petition on re-issue of
the corresponding U.S.patent. However, it is deemed,
in its present form, sufficient to show the respect~
with which the patent is deemed defective or inoperative,
namely, being too broad because of having a claim
which reads on the Disclosure of Canadian Patent 529,975.
Having carefully studied the petition the Board has come to
the conclusion that the claims of the original patent fail to
explicitly set out his invention since it is evident that the
claims are too broad in view of Canadian Patent 529,575. It
follows that the applicant may not retain the patent claims as
they would defeat the object of the petition.
The first round of rejection that, "Claims 1-21 are not
directed to a same invention as the claims allowed in the
original patent," (refiled as claims 22-25 of the present
application) is not well founded. On considering what is meant
by the same invention under reissue, the court in Northern Electric
Co. Ltd, v, Photo Sound Corporation (1936) SCR 649 that,
"... the reissue patent must confirmed to the invention which
the patentee attempted to describe and claim in his original
specification, but which owing to 'inadvertence, error or
mistake', he failed to do so properly; he is not to be granted
a new patent but an amended patent." (emphasis added) This
statement was also cited by Martland J, of the Supreme Court of
Canada in Curl-Master Mfg. Co. Ltd. v.Atlas Brush limited (1967)
SCR 527.
An allowable claim must include, "... power means pivotally
connected to the cutting member ...," as this is necessary for
a complete claim for operativeness. The characteristic in the
original claims, "... having the shape of an oblong plate," may
be deleted from the claims in that it was not added to avoid the
prior art as the prior art shows a blade of this shape; also since
the important limitation is that any point on the cutting edge
of the blade carries out a movement which has a component in the
longitudinal direction of said cutting edge. Assuming the new
claims are of different scope, the Board is satisfied that there
is no evidence of newly discovered subject matter in the new
claims and that the new claims cover substantially the same
invention as that for which the patentee sought to patent in
the original specification.
The second ground of rejection that, "There is no error in
the original claims through the applicant having claimed more
than he had a right to claim as new in view of Canadian Patent
529,975, and at the same time maintain the original claims,"
The third ground of rejection is that, "The petition fails
to adduce any evidence of intent to claim all the features of
claims 1-21 ..." The applicant may restrict the claims of the
patent to more clearly cover the real invention by setting out
the feature of, "the open jaw type mechanism having links so
arranged as not to transverse the bite." The addition of
further limitations in independent claims would also not appear
to offend the intent of the petition since there is no evidence
of fraudulent intention or that the inventor did not intend to
obtain a patent for his real invention which through inadvertence
his agent failed to do.
The fourth ground of rejection that, "The petition is
defective an incomplete," is no longer an issue since the
applicant has cancelled items H and I from the petition and in
response to the Final Action the applicant states, "... the words
and less may be deleted or considered inapplicable." The remainder
of the petition has been considered on its merit.
The applicant asked, "since when does the shape of anything
become a patentable feature"? In answer to this it is well
established that the shape of an article may become a patentable
feature when the particularized shape subserves some new and
unexpected mechanical function. Applicant also states that,
"... it is evident reissues under present practice in office
policy, can only be obtained for the purpose of adding claims
of narrow scope ..." This is an erroneous interpretation since
reissues with broader claims are valid providing the petition
and changes meet the requirements of Section 50 of the Patent
Act and principles established by jurisprudence. The Court in
Withrow v. Malcolm 1884 6 OR 12, held that an applicant has a
right to claim in a reissue could have been claimed in the
original providing specific conditions are met. The amended
petition does not make provision for the issue of broader claims.
In summation the Board finds: (a) the patent claims,
present claims 22-25, are not allowable; (b) the addition of the
characteristic, to the original claims, that the sets of links
are arranged so as not to transverse the bite of the open jaw
type mechanism during the cutting operation, while omitting
the feature that the blade has the shape of an oblong plate,
are permissible. In other words it is suggested that a claim,
such as claims 1 and 2 when combined, or any similar claim, may
be considered allowable. However, the reference in claim 1 to
at least one cutting member may be questioned.
R. E. Thomas,
Chairman, Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and
refuse to allow claims 22-25. Claims 1-21 are refused in their
present form, however, claims drawn according to the guidelines
set forth may be considered allowable. The applicant has six
months in which to appeal this decision in accordance with
Section 44 of the Patent Act.
Decision accordingly,
A. M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario,
this 22nd day of February, 1972.