COMMISSIONER'S DECISION
REISSUE: Lack of Intent to Claim; No mistake;
Prior Art Known Before Original Allowed.
No evidence was apparent to doubt that the statement
that the applicant was unaware that he should amend his
patent until several years after the prior art was known or
that the applicant has not acted in good faith or did not
intend to claim the present subject matter.
FINAL ACTION: Overruled.
**********************
This decision deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated May 3, 1972 on application
number 096,160. This application was filed in the name of Sandvikens
Jernverks Aktiebolag and refers to "Threaded Drill Rod Element".
In the prosecution terminated by the Final Action the examiner
rejected the application for reissue on the following grounds (reproduced
in reduced form):
(a) The applicant failed to satisfy the Office that he was not
aware of the teachings of United States prior art before
issue of the Canadian Patent.
(b) The applicant's failure to see the necessity of limiting
the claims of his Canadian application does not constitute
an error arising from inadvertence, accident or mistake.
(c) The fact that the prior art was cited in opposition proceedings
was sufficient to alert the applicant that the teachings of
the prior art may be pertinent to the claims in his Canadian
application.
(d) The petition is therefore rejected for lack of intent to claim
the subject matter now claimed since his failure to limit the
claims to clear the prior art did not arise from inadvertence,
accident or mistake as defined by Section 50 of the Patent Act.
The petition reads as follows (in part):
(1) That Your Petitioner is the patentee of Patent No. 745,931
granted on the 8th day of November 1966 for an invention
entitled "Threaded Drill Rod Element".
(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 than it had a right
to claim as new.
(3) That the error arose from inadvertence, accident or mistake,
without any fraudulent or deceptive intention in the following
manner:
(a) Your petitioner is a company having its place of business
in Sandviken, Sweden. The patent division of the company
translated the basic Swedish application No. 6534/64 into
English from the original Swedish text. Your Petitioners
Patent agents filed the translated application on May 26th,
1965 and it matured to Patent No. 745,931 on November
8th, 1966.
(b) However, the translation effected in Sweden inadvertently
included numerous grammatical errors and improper
choices of technical terminology resulting in the
disclosure and claims being vague and indefinite in some
aspects and without any fraudulent or deceptive intention,
your Petitioners Patent agents prosecuted the application
to patent failing, at the time, to comprehend and claim
the invention properly in view of such errors.
(c) Your Petitioner intended to claim the thread profile of
Patent 745,931 in external and internal form thereby
using the wording "external or internal" in line 1 of
claim 1. This resulted in a vague definition of details
of the thread profile as the external thread has concave
flanks and the internal thread has convex flanks. Due
to differences between Swedish and Canadian patent
practice, Your Petitioners Swedish patent department
failed to properly claim the two profiles of thread.
(4) That knowledge of the new facts stated in the amended dis-
closure and in the light of which the new claims have been
framed was obtained by your Petitioner on or about May,1969
in the following manner:
(a) Opposition proceedings which are still pending were taken
against the basic Swedish application in April 1966 but
the patent division of your Petitioning company did not
reply to the proceedings until September 1966 after the
Canadian application had been allowed. The Swedish
opposition proceedings brought to light U.S. Patent No.
2,052,011 of August 25th, 1936 (Class 225 - 64) which
was not located by Your Petitioners Patent agents of
record during prosecution of the Canadian application
No. 931,611 nor during the prosecution of the corres-
ponding U.S. application, now U.S. Patent No. 3,388,935
of June 18th, 1968 by your Petitioners U.S. patent
attorneys.
(b)An examination of U.S. Patent No. 2,052,011 showed that
it had a similar type of thread as that in Your Peti-
tioners Swedish application and Canadian Patent inas-
much as it shows in Figure 2 a thread profile having a
flat trough 4'. Your Petitioner, in examining his
other Patents including Canadian 745,931 found that
the term "bevelled crest" appearing in Canadian Patent
745,931 was wrong and that the patent was therefore
defective.
(c) Additionally it was also found that the claims in Cana-
dian Patent 745,931 did not include limitations essen-
tial for distinction of the invention over the prior
art, namely U.S. Patent 2,052,011.
(d) Your Petitioner did not at that time realize the necessity
of limiting the Canadian Patent 745,931 and it took
several years of experience with the opposition pro-
ceedings in Sweden to find the proper manner of defining
the thread profile over the prior art.
(e) Between October 1968 and May 1969 Your Petitioners
Patent agents reviewed Patent 745,931 in view of U.S.
Patent 2,052,011 and as a result at was considered that
the patent was defective and inoperative because of the
abovementioned errors and mistakes. It was, however,
the original intent of your Petitioner that proper
English phraseology, technical terms and claim limitations
be used so that the disclosure and claims should read in
accordance with the amendments made hereto but the applicant
failed to do so by reason of the errors that rose from
inadvertence, accident or mistake and the failure of Your
Petitioners Patent agents to properly comprehend the inven-
tion at the time of filing and prosecution.
In the applicant's response of August 2, 1972 he stated in part:
(a) The final action dated May 3, 1972 rejects the reissue applic-
ation "for lack of intent to claim the subject matter now
claimed since his failure to limit the claims to clear the
prior art did not arise from inadvertence, accident or mistake,
as defined by Section 50 of the Patent Act". The prior art
referred to is United States Patent 2,052,011 which was first
notified to applicant in opposition proceedings involving
applicant's corresponding Swedish application but which was
not studied carefully by applicant in relation to its bearing
on the claims of applicant's Canadian patent 745,931 until the
opponent in the said opposition proceedings, at a hearing on
October 6, 1968, asserted a construction of its teachings
which, if accepted, would give patent 2,052,211 a broader
anticipatory value than applicant had previously regarded
it as having.
(b) The possibility of patent 2,052,011 being afforded such cons-
truction (which construction applicant did not accept and
does not now accept) led applicant to review inter alia
its Canadian patent 745,931 to consider the effects of such
possible construction of United States patent 2,052,011 and
it was in the course of such review that it became apparent
that the claims of the Canadian patent were defective in a
way which not only would raise a question of anticipation by
United States patent 2,052,011 if it were afforded such cons-
truction, but also because of an inaccuracy of wording which
extended the scope of the claims to cover thread structures
which were not included in what applicant regarded to be his
invention.
(c) Had applicant been aware that the claims which were granted
in patent 745,931 incorrectly described what he regarded as
his invention he would have amended said claims even in the
absence of knowledge of United States patent 2,052,011. It
was the bringing home to applicant of the fact that claims
1-3 of patent 745,931 covered more than he was entitled to
claim as his invention (which resulted from review triggered
by the assertion of the opponent in the Swedish opposition
of an untenable construction of United States patent 2,052,011
in 1958) which moved applicant to seek reissue rather than
mere knowledge of the existence of United States patent
2,052,011 or its teachings which teachings do not amount to
an anticipation of claims 1-3 of patent 745,931, nor the claims
submitted in this reissue application. If the fact that claims
1-3 of patent 745,931 extended to more than applicant had a
right to claim as his invention had been in the applicant's
mind (i.e. if applicant has realized then what he realized
later as a result of the review referred to) applicant, if
he had intended the claims of his patent to cover more than
he had a right to claim as his invention, would not have
felt called upon to limit his claims by reason only of prior
teachings of patent 2,052,011. The point here is that in
order to suggest, as the final action appears to suggest,
that the applicant intended to adopt the wording of claims
1-3 because he was aware in 1966 of the existence of United
States patent 2,052,011 is to suggest that applicant deli-
berately sought to obtain an invalid patent in circumstances
where it was perfectly open to him to obtain a valid patent.
Such a suggestion is not only unwarranted but contrary to
all reason as well as being contrary to the facts asserted
in the petition for reissue and which are affirmed by affidavit.
Having studied the prosecution of this application the Board finds
that the main questions to be decided are whether or not the petition
should be rejected for lack of intent to claim the subject matter now
claimed and whether it appears that the error arose from inadvertence,
accident or mistake as defined by Section 50 of the Patent Act.
This application refers to threadably coupled drill rod elements
and the like. Amended claim 1 reads as follows:
Drill rod coupling for percussion drilling comprising a
threaded rod and a matching threaded sleeve and being of the type
suitable for connecting rods for percussion drilling, said threads
having a relatively high pitch and a generally wave-shaped profile,
the threads being adapted to respond to a low disconnection torque
and to provide a high fatigue strength and having the following
features in combination:
(a) the threads have at least two starts,
(b) the flank angle of the rod thread between the flank and a
normal to the drill rod axis has a minimum in the vicinity
of the crest of the rod thread, where it is 50-60ø,
(c) the flank angle of the rod thread increases gradually from
said minimum towards the bottom of the thread, a substantial
portion of the flank comprising the base portion thus having
a concave shape and the radius of which is at lest as great
as the depth of the thread,
(d) the flanks of the threads are symmetrical and inclined equally
with regard to said normal,
(e) the crests of the rod threads are beveled and have a profile
substantially parallel to the drill rod axis, and
(f) the crests of the rod threads are spaced from the bottoms of
the matching sleeve threads.
It is noted that this is a more restricted claim than any claim in
the original patent; therefore, there is no question of attempting to
recoup abandoned subject matter, or whether the reissue is not in the
public interest.
This application was filed May 26, 1965, after it had been translated
from the basic Swedish application, and was allowed August 2, 1966 and
issued to patent November 8, 1966. Opposition proceedings were taken
against the Swedish application in April 1966 and a response was made
to these proceedings in September 1966. The Swedish opposition proceedings
brought to light United States patent 2,052,011 which issued in
August, 1936.
The Final Action contends that, since the applicant was aware of
the United States patent 2,052,011 before the original application was
allowed, the only recourse was amendment during the prosecution of the
original application. But the applicant states that the Swedish opposi-
tion, from the beginning, did not contain anything that, looked anticipa-
ting, and that the illustrations of this patent clearly distinguished
from his invention.
The Board find that no reason is evident on which to doubt the
applicant's statement that: "It was not until several years later,
10.6 1968, that our opponents pointed out a passage in the text which
in his opinion referred to a not illustrated embodiment that would be
closer to our invention. We have since taken the position that the
said passage is so obscure that it cannot be regarded as an anticipating
teaching." (emphasis added)
Consequently, in the opinion of the Board it was not until 1968 that
the applicant became aware that he should more clearly define his inven-
tion and that he had claimed more than he intended to claim as new.
The Board, therefore, is satisfied that the applicant acted in
good faith and has met the intention of Section 50 of the Patent Act with
respect to inadvertence, accident or mistake. Also, there is no indica-
tion that the applicant did not intend to claim the presently claimed
subject matter. Moreover, it is in the public interest that the patent
be amended with claims of a more restricted nature.
The Board recommends that the decision of the examiner, to refuse
the petition, be withdrawn.
R . E .Thomas
Chairman
Patent Appeal Board
I concur with the findings of the Patent Appeal Board and withdraw
the Final Action and return the application to the examiner for resump-
tion of prosecution.
A.M. Laidlaw
Commissioner of Patents
Dated at Ottawa, Ontario,
this 12th day of September, 1972.
Agent for Applicant
Messrs. Smart & Biggar,
Box 2999, Station D,
Ottawa, Ontario.