COMMISSIONER'S DECISION
REISSUE: Lack of intention to obtain broader claims. Policy
statement that an applicant must have intended to claim in the
original what he claims in a reissue has been modified since
the Final Action. While the new claims are broader than the
patented claims, they are narrower than any cancelled claim,
in that the patent failed to obtain the protection for the
real invention to which the patentee was entitled, and attempt-
ed but failed to claim in the original patent.
FINAL ACTION: Overruled.
*********************
This decision deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated April 26, 1972 on
application 100,628. This application was filed in the name of Arthur J.
Daugherty and refers to "Photographic Printing Apparatus For Making
Plural Assorted-Sized Prints Simultaneously".
In the prosecution terminated by the Final Action the examiner
rejected the reissue application based on claims 5-8 inclusive for
lack of intention to obtain broader claim coverage.
.
The petition reads as follows:
(1) THAT your petitioner is the patentee of Canadian Patent Number
812,516 granted on the 13th day of May, 1969 for an invention
entitled "Photographic Printing Apparatus for Making Plural
Assorted-Sized Prints Simultaneously".
(2) THAT the patent is deemed defective or inoperative by reason
of insufficient description or specification 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 are as
follows:
In the description of the patent it has not been made clear that the
essence of the invention is the provision of a photographic printing
apparatus including two lenses, each of which projects an image
of a different size onto the print paper. Accordingly the
apparatus simultaneously produces from each single frame of an
exposed roll of film at least two prints of different sizes. The
description does not state clearly that although the most efficient
use of paper is obtained by producing one large print and two small
prints simultaneously the invention resides in printing two differ-
ent sizes simultaneously. Thus only two lenses are required to
carry out the principle of the invention. While the patent
mentions that "multiple images of at least two sizes are being
projected simultaneously" it is felt that a clear statement of
the invention is required.
Claim 1 of the patent which claims the idea of having a plurality
of first objective lenses of a first focal length and at least
one second objective lens of a second focal length is deemed to
by too restricted because Patentee's apparatus could be made with
just two objective lenses of different focal lengths.
Furthermore, claim 1 is deemed to be unnecessarily restricted
by the recitation of specific means for focusing the lenses.
In an Official Action dated July 20, 1967 it was argued by
the Examiner that the original claim 1 was anticipated by
Canadian Patent Nos. 275,660,358,064, 361,364 which disclose
multiple lens systems. At that time it would have been
desirable to include means for focusing the lenses in Claim 1
in order to distinguish over the above-noted prior patents
which showed color filter lenses but claim 1 was not restricted.
(However, a subsequent Official Action dated May 24, 1968
resulted in the unnecessary restriction of the claim 1 which
appears in the patent. In the response dated September 30,
1968 it was pointed out that in the additional reference cited,
United States Patent No. 3,212,396 to Schwardt, none of the
lenses are individually adjustable to allow for corrections in
varying focal length between lenses. Instead, a very cumbersome
external adjustment is provided by mounting brackets at
different heights at the sides of each unit so as to permit the
distance between the negative and a dichroic beam splitter to be
varied.
Accordingly,it would have been possible to recite broad means
for focusing the lenses so as to overcome the individual prior
patents rather than unduly restricting the claim 1 now appearing
in the patent so as to overcome a combination of the cited
references.
That the error arose from inadvertence, accident or mistake
without any fraudulent intention in the following manner:
(4) THAT the application which resulted in the above-noted patent
corresponds to a United States patent application prepared by
applicant's United States patent attorney. Mr. Martin Farber,
Vice President of the Film Corporation of America was chosen by
the company to look after the patent matters and being relatively
unaware of the procedure by which patents are obtained relied
wholly on his U.S. counsel and did not review any paper relating
to the Canadian patent. Although Mr. Farber made a cursory
review of all covering letters concerning the Official Actions
of July 20, 1967, May 24, 1968 and the responses thereto, he
did not understand the changes made in the claims in the patent
application. Furthermore, Mr. Farber was not consulted
regarding the form of claims to be submitted in response to the
Official Action dated May 24, 1968. Within approximately one
month of receiving a copy of the new claims 1 to 4, the application
proceeded to allowance. Mr.Farber was not advised that broader
claims might be obtained in Canada either before or after
allowance due to differences in Canadian and U.S. patent law.
On reviewing the corresponding United States patent it was
observed that the claims of the U.S. patent were unnecessarily
restricted. On making this discovery the above-noted Canadian
patent was also reviewed and an examination of the claims and
cited references led to the conclusion that applicant had
inadvertently claimed less than he had a right to claim.
in the Final Action the examiner stated in part:
Paragraph (b) relating to lack of intention to obtain broader
claim coverage is maintained as the ground for rejection of
this Re-issue application.The allowance of this Re-issue
application, based on claims 5 to 8 inclusive, is therefore
refused.
The Re-issue of a patent is not permitted for the reason of
reasserting claims of similar scope to claims deliberately
cancelled during prosecution of the original patent, in order
to remedy poor judgement on the part of the applicant in
deciding what to claim as his invention.
No Specific evidence can be seen in respect of applicant's
exhibits "A" and "B" (supporting this Re-issue application)
relating to intention on the part of the applicant to obtain
different claims from those appearing in patent 812,516. At
most, applicant appears to be relying on the generalised pro-
position that any applicant intends to obtain the broadest
claims that would be valid.
The applicant's response of August 22, 1972 read in part:
Briefly stated, Applicant wishes to obtain reissuance of the
basic patent by adding new Claims 5 to 8. These claims are
of a scope never before presented in the original application
and are substantially more limited than the claims originally
presented in the basic application, although somewhat broader
than the claims finally allowed and issued i.e. claims 1-4;
For instance, (a) claim 1 calls for "a plurality of first
objective lenses " " " whereas claim 5 specifies "first" and
"second" lenses; (b) claim 5 specifics the relative image size
produced by the "first" and "second" lenses, respectively,
whereas claim 1 makes no mention of image size. Thus, in each
of these respects, claim 5 (and its dependent claims) is
narrower than claim 1.
Among other differences, claim 1 specifies (i) that the tubular
member has an externally threaded end, there being no similar
recitation in Claim 5; (ii) that a "tubular adapter" is
provided as well as "means on said adapter to lock said tubular
member axially with respect thereto", there being no similar
recitation in claim 5. Thus, in these particulars, claim 5 is
broader than claim 1 and calls for a different combination of
elements.
It is again repeated that claims 1-4 allowed in the basic
application are directed to the embodiment shown in Figures 6-8
of the drawings. The embodiment shown in Figures 1-5 is the
apparatus which is in commercial use. This apparatus is not
covered by claims 1-4. Purely as an example, claim 1 calls for
"partition webs integrally formed within said tubular member and
longitudinally compartmentalizing objective lenses of different
focal lengths from each other"; this feature can be clearly
seen in Figures 6-8, However, the embodiment shown in Figures
1-5 does not possess such webs.
As has already been stated Mr Farber is no skilled patent
agent and wholly relied upon his U.S. attorney to draft,
prosecute and obtain allowance of claims covering the
invention set forth in the basic application and he mistakenly
believed that the allowed claims i.e. claims 1-4 covered the
commercial embodiment of the invention, Obviously as a
business man, if not as a patent expert, Mr. Farber would
hardly have acquiesced to the allowance of a mere four claims
had he known that these failed to cover the commercial
embodiment of the invention.
Having studied the application the Board finds that the ground of
rejection, "Claims 5-8 are refused for lack of intent to obtain broader
claim coverage", is based on a strict interpretation of Office policy
that: ".., the applicant must have intended to claim in the original
patent what he now claims in the reissue." However, the policy on this
matter has been modified in the sense that any evidence of lack of intent
on the part of an applicant to claim in the original patent what is being
claimed in a reissue, or any evidence of fraudulent intent, is fatal
to the reissue. The original specification and its prosecution aids in
the determination of what an applicant intended to secure by his patent.
Of interest is the recent unreported; Burton Parsons Chemical Inc.
v. Hewlett-Packard (Canada) Ltd. case, handed down by the Federal Court
of Canada Trial Division on May 31, 1972, - Ref. No. T-390-71. At page
43, Mr.Justice Noel stated:
... it may, I believe be said that if an invention is
disclosed initially, but improperly described and claimed
in the reissue: (sic), this is sufficient to sustain a
reissue providing, of course, that the other requirements
of the Act are complied with. (emphasis added)
Also, of interest to the present case, 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 .."
(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.
During prosecution of the original application the applicant
cancelled claims 1-4 as filed, and the reason as stated by the applicant
was, "... to distinguish applicant's invention over the references
cited...." The application was then allowed and passed to issue.
It is noted that the applicant is attempting to obtain broader
coverage in the reissue than in the patent. However, 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
these conditions is that the recapture of the subject matter abandoned
by the deletion of a claim in the face of a specific rejection during
the prosecution of the original application is not permitted.
In the present situation the examiner's brief to the Patent Appeal
Board has established that claims 5-8 sought by reissue are new claims
more restricted than the original claims cancelled. But, it is also
well settled that an applicant is entitled to make his claims to the
real invention disclosed as broad as the prior art will allow, and
in the present situation it has also been established that claims 5-8
avoid the prior art. It then follows, that the original patent failed
to obtain proper protection for the invention disclosed, but which he
attempted to do by the original claims cancelled, and that by the same
token no attempt is being made to recapture abandoned subject matter
of the same or broader scope than in the original claims cancelled.
Moreover, the public had no basis on which to assume that the additional
subject matter covered by new claims 5-8 was abandoned.
On this bases, the Board is satisfied that the applicant has, by
inadvertence, accident, or mistake improperly claimed the actual
invention which he had a right to claim as new in his original patent.
Therefore, it is held that the conditions of Section 50 of the Patent
Act have been compiled with,and the present application should be
allowed to proceed to patent.
Therefore, the Board recommends that the Final Action 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
resumption of prosecution.
Decision accordingly,
A. M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario,
this 27th day of November,1972.
Agent for Applicant
Moffat & Butler