COMMISSIONER'S DECISION
Rule 44(3): Bone fide response - Electrical Harness
The issue was whether the applicant had made a bone fide response to
an examiner's action.
The manner in which the applicant conducted some areas of the prosecution
is not beyond reproach. On the other hand there were also some ambiguities
in the earlier prosecution by the Office, sufficient that honest misunder-
standings may have occurred. The response was accepted.
Rejection: Reversed
The Patent Review Board has considered your letter dated September 15,
1975 in which you argue against the holding that there has not been a
bona fide response within the meaning of Section 44(3) of the Patent Rules.
The application 100,575 (class 333-28) was filed on December 14, 1970, in
the name of L.S. Finkelstein, and is entitled "Electrical Harness with
Moulded Sockets." The application was involved in conflict proceedings with
another applicant, during which conflict claims C1 to C19 were lost to
this applicant. Following the conflict proceedings the applicant cancelled
all the claims on file on March 6, 1975. He then submitted new claims 1
to 3. On April 2, 1975, the examiner refused these claims as lacking patent-
able subject matter. On June 26, 1975 the applicant indicated be wished to
cancel the new claims 1 to 3, and substitute fresh claims 1 to 10 (which
have not been entered).
The examiner was of the opinion that the latest response was improper, and
that the submission of claims 1-10 was not a bona fide attempt to comply with
the requirements of Section 44(3) of the Patent Rules. His reasons were that
claims 1 to 10 are for subject matter that is either already covered by
the applicants' issued patent, or was subject matter which was lost to him
during conflict proceedings. The Patent Appeal Board gave the applicant until
September 8, 1975 to present written arguments against the examiner's
opinion or to request a hearing to persuade the Board that it should not
conclude that the application is abandoned.
The applicant submitted his arguments to the Board in writing in the above-
sentioned letter of September 5, 1975. We will now review these arguments in
order to determine whether or not the applicant contravened Section 44(3) of the
Patent Rules.
The applicant argues that "claims 1 to 10 which were submitted with applicant's
amendment of June 26, 1975 correspond to claims 12 to 21 as originally on
file in this application." Claims 1 to 6 are method claims, while claims 7
to 10 are directed to apparatus. The apparatus claims were cancelled following
an earlier request for division. They are resubmitted in this application
at this time now that claims C1 to C19 have been deleted.
We observe that method claims 1, 2, 3, 5 and 6 submitted with the letter of
amendment of June 26, 1975, are identical with claims 12, 13, 14, 16, and 17
which were cancelled by the applicant by his letter of March 6, 1975 in
response to the Office Action of September 10, 1974, which action followed the
conflict proceedings.
In that action, September 10, 1974, it was stated that:
Claim 10 is rejected as not patentable in view of the lost
conflict matter.
Claims 2, 4, 6, 12, 13, 14, 16 and 17 are identical with claims
4, 6, 1, 7, 8, 9, 10 and 11 respectively, allowed in the
Divisional Application Number 164,182 now Canadian Patent 945,648
issued on April 16, 1974. The Applicant is required to remove
the overlap.
We find, however, that claims 12, 13, 14, 16 and 17, which are proposed
new claims 1 to 3, 5 and 6, are not identical with claims 7, 8, 9, 10 and 11 of
the Canadian patent 945,648. The proposed claims are broader in scope in that
they do not recite: "... positioning at least one pin in a position where
it will form a ventilating hold through a base of said socket."
Furthermore in the conflict report dated August 9, 1971, claim 10 was indicated to
be non-patentably different from the conflict subject matter, whereas claims
12, 13, 14, 16 and 17 (proposed claims 1 to 3, 5 and 6)were not so designated.
While it is true that the applicant cancelled proposed claims 1 to 6
without argument in his action of June 26, 1975, it is quite possible that
he was mislead, as noted above, by the Office in the action of September 10,
1974. On the other hand, apparatus claims 7 to 10 have not been considered
by the examiner for patentable subject matter.
In summary, the proposed method claims 1 to 3, 5 and 6 were, in effect, de-
signaled as patentably different claims from the subject matter of the
conflict claims; they are not, as stated by the examiner, identical with the
claims in applicant's patent 945648. Furthermore apparatus claims 7 to 10,
which were cancelled on a requirement for division, have not been examined
for patentable subject matter.
In our view the manner in which the applicant conducted some areas of the
prosecution is not beyond reproach. On the other hand there were also
some ambiguities in the earlier prosecution, sufficient, we think, that honest
misunderstandings may have occurred. In such circumstances we are satisfied
that the application should not be held abandoned.
It should be noted that the Board is not assessing the patentability of the
claims in question. That is a determination which still remains for the
examiner.
The Board recommends that the proposed claims should be entered and examined.
J.F. Hughes
Assistant Chairman
Patent Appeal Board
I concur with the recommendation of the Patent Appeal Board and return the
application to the examiner for resumption of prosecution.
J. A. Brown
Acting Commissioner of Patents
Dated at Hull, Quebec
this 7th. day of
November, 1975
Agent for Applicant
Alan Swabey & Co.,
Montreal, P.Q.