DECISION OF THE COMMISSIONER
REISSUE: - Not for Same Invention;
- Inadvertence, etc, and intention to claim.
Amended claims not for the same invention that the patentee attempted
to describe and claim in the original specification due to the
ommission of an essential element and enlargement of the claims
to embrace other forms of the rotor. But there was ample evidence
that the applicant intended to claim the invention in different
terms. Ommission of non-essential feature allowed.
FINAL ACTION: Affirmed in part.
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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 104,168 filed February 1, 1971 for an
invention entitled:
REFUSE GATHERING MACHINE
Agent for Applicant
Messrs. Meredith & Finlayson,
Ottawa, Ontario.
******************
This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action dated
October 28, 1971 on application 104,168. This application was
filed in the name of Herbert O. Vinyard and refers to "Refuse
Gathering Machine".
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The decision reproduced the petition in full which set out
details in respect of the following defects:
First, that the drawings are defective and do not clearly
and distinctly illustrate the invention, and in particular,
are inconsistent with the disclosure; and
Second, the claims are defective for not defining the true
invention; in one respect being too restrictive in defining
structure not of principle significance to the invention, and
in other respects being too broad in specifying the structure
needed to achieve the advantages of the invention; particular
the relationship between the housing, the discharge opening,
the mechanical impeller, and the discharge chute; the
essential features and objects of the invention being set
out in detail.
The petition set out details of how the error arose without a
thorough understanding of the significant features in the light
of available prior art, due to the petitioner's lack of appre-
ciation on patent matters and his resulting inability and failure
to communicate on such matters and failure to define his true
invention. A petition to reissue his U.S. patent was indicated
to be allowable.
The prosecution terminated by the Final Action rejecting
the application on the following grounds, in summary:
First, the amended claims for reissue are not directed to
the same invention as the claims of the patent, covering
different combination of elements in that neither one of
the independent claims of the application and the patent
is broader in scope than the other, since the amended
claims have broadened out some of the limitations of the
patent claims and have added new limitations;
Second, the applicant has not presented clear evidence
that he intended to claim the invention defined in the
amended claims; and
Third, the amended claims are not patentable over two Can-
adian patent references .
The applicant in his response of January 27, 1972 maintains
that the claims avoid the prior art cited by the examiner, and
in particular with respect to the discharge opening and other
special features of the chute. The applicant also maintains
that there is ample proof of intent to claim and has supplemented
the petition with an affidavit and other material in support of
his intention to claim his invention as set out in claim 1.
The applicant also stated: (in part)
The applicant submits that he is seeking to reissue
his original patent for, and that the claims are
directed to, the SAME BASIC INVENTION to which his
original patent is directed. The applicant was aware
that his invention was broader in scope than what
has been defined, without his appreciation, in
original Claim 1. He was also aware of the other
features which, although broadly and/or obliquely
referred to in original Claim 1, were required in
properly and accurately defining his invention and
and have been included into Reissue Claim 1. The
Examiner has quoted extensively from the original
Claim 1 and the reissue Claim 1 on the basis of
purportedly illustrating that these two claims are
not directed to the same combination of elements.
On the contrary, the applicant submits that they both
relate to the same basic combination of elements
and therefore are directed toward the same basic
invention.
This implies that reissue is only avilable when an
applicant wishes to change the scope of his claims
whereas it is clearly permissible as supported by
Section 50(1) and the above cases for an applicant
to amend his "specification"to make it more clear
and distinct."Claims" in a patent are part of the
specification and they can be accordingly amended
to make more clear and distinct the patentee's
invention. In making more clear and distinct his
"claims", a patentee surely is entitled to amend
the terminology of his claims and this is what the
applicant has done here. The applicant has removed
the narrowing restrictions of the augers but other-
wise has simply amended its terminology to make more
clear and distinct the relationship between the
housing, the discharge opening, the thrower and the
discharge chute. The strict application of Rule 60
implicit in the Examiner's action has no part in petitions
to reissue where the reason for petitioning is that
the original attorney failed to fully comprehend and
to describe the invention for which he had been in-
structed to seek a patent and the patentee seeks to
correct this error by clarifying and more distinctly
stating what is the basic invention by way of reissue.
The first ground of rejection that, "The claims submitted
with the application are not directed to the same invention as
the claims in the patent, "is well founded only in so far as it
is fundamental that reissue must be for the same invention as the
original patent. 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 held that,"the reissue
patent must be confined 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.
In the prosecution of the patent the applicant states, "Claim
1 specifically recites the blades of the thrower rotor as having
outer free edges which pass the curved lower portions of the upper
and lower chute walls with si~ing tolerance when the rotor is
turned. This is structure not found in the patent to Marr ...."
In the opinion of the Board this is the basic point of novelty
over the prior art, and furthermore, it appears to be an essenti~
feature for the operativeness of the invention in that the
applicant states,(Exhibit A) "Another object is to be able to
load material regardless of moisture content. This machine will
load liquid, slurry or dry material." Without this specific
characteristic the device will not fulfill such a promise.
Therefore, there is no doubt that the applicant had envisioned
this as a basic part of the invention and any new claim
obtained on reissue must include the following characteristic or
its equivalent, "... said blades having outer free edges which
pass said curved walls with wiping tolerance when the rotor
is turned...."
Notwithstanding the above, the characteristics in the original
claims with respect to the augers may be deleted as the Board is
satisfied from a study of the exhibits and the affidavit that the
augers were intended to be regarded as optional as stated in the
original description of the invention to his patent agent dated
February 14, 1966 describing that: "This machine cleans a strip
six feet wide. The augers are each two feet leaving two feet in
the center for throwers. This would vary on the width of strips
to clean (sic) and the size of box to be loaded. If the box is
as wide as the strips to be cleaned their (sic) is no need for
augers." (emphasis added). The Board is also satisfied that the
width of the discharge chute has no specific relation to the
basic invention and from the above quoted statement of the
applicant it appears that if the augers were removed the chute
would be the same width as the throwers, and by inference it
would be substantially the same width as the box; therefore,
no restriction with respect to this characteristic would appear
to be necessary.
The second ground of rejection that, "The applicant has not
presented clear evidence that he intended to claim the invention
defined in the independent claim submitted with this reissue," is
basically well founded. However, the determination made under
the first ground of rejection affects this decision. As maintained,
the present claims cover a different invention from the invention
of the original patent, therefore, the determination with respect
to the present claims in regard to intent does not have to be
considered. Notwithstanding the above, the Board is satisfied
that ample evidence, i.e. the exhibits plus the affidavit, has
been presented in response to the objection to show that the applicant
had intended to claim the invention in different terms than that
covered by the Patent; thus, in the opinion of the Board, an
appropriate amended patent may be granted.
The third ground of rejection that, "The present claims are
not patentable over the Canadian patents to James and Latendresse,"
is basically well founded in that claim 1 does not avoid the prior
art as far as the basic invention is concerned. Whether claim 1
avoids the prior art in some unessential details of the chute
construction which is not the basic inventive concept is
immaterial since, as previously discussed under the first ground
of rejection, an essential characteristic that, "... said blade
having outer free edges which pass said curved walls with wiping
tolerance when the rotor is turned ...," must be included in an
allowable claim. An applicant is permitted an amended patent
provided strict conditions are met; one of which is that the
amended patent must be for the same invention as that of the
original patent in that an applicant is not permitted a claim on
reissue which avoids the prior art by limitation completely
different from those set out in any claim of the original patent.
In any event, there is no indication in the patent or the
supplemental material that the applicant intended to rely on
specific arrangements of the margins of the housing and the chute,
which the applicant now claims in order to avoid the prior art.
The Board does not disagree with the applicants contention
that Section 50 of the Patent Act permits the applicant to amend
his specification to make it more clear and distinct, or that
the applicant has a right to claim more or less than in the
original patent, providing of course that all the other require-
ments of this Section are met. The applicant relies on the Curl-
Master decision to claim differently if the new claims relate to
the same basic combination of elements;again the Board does no
disagree, however, aside from all other considerations of this
decision, it is not considered the same basic combination of
elements when the patent claims a loader with an auger, central
thrower paddles, a central discharge chute and the specific
wiping action of the blades; as compared with the reissue claims
which encompass other types of rotors, including a flail-type
loader with a full width discharge chute having details which
are specific to the latter type loader; as of interest, see Canadia
Patent 704,877 issued in September 18, 1964.
The Board is satisfied, beyond reasonable doubt, that the
applicant has met the intention of Section 50 of the Patent Act
with respect to inadvertence, accident or mistake. However, in
summation the Board finds: (a) that the present claims are not
allowable in their present form for reasons as discussed herein,
and (b) that the original patent claims or claims of similar scope
may be considered allowable while omitting the characteristics
with reference to the augers and the specific width of the chute.
The Board recommends that the decision of the examiner, to
refuse the application in its present form, be upheld.
R. E. Thomas,
Chairman, Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and
refuse to grant a patent on the reissue application in its present
form. The applicant has six months in which to appeal this
decision in accordance with Section 44 of the Patent Act.
Dated at Ottawa, Ont. Decision accordingly,
March 10,1972. A.M. Laidlaw,
Commissioner of Patents