COMMISSIONER'S DECISION
REISSUE: FASTENER DISPENSING APPARATUS
Applicant's claims are broader in scope than those deliberately cancelled
during prosecution of the original patent and are directed to a
different invention than that previously claimed.
Rejection: Affirmed
*********
Patent application 330,333 (Class 93-93), was filed on June, 15, 1979
for an invention entitled "Apparatus For Dispensing Fasteners." The invent-
or is Arnold R. Bone, assignor to Dennison Manufacturing Company. The
Examiner in charge of the application took a Final Action on July 11,
1980 refusing to allow it to proceed to patent. In reviewing the rejection,
the Patent Appeal Board held a Hearing on October 7, 1981 at which the
Applicant was represented by Mr. K. Carton and Mr. J. Macera.
The Applicant is seeking to reissue a patent which relates to apparatus of
the type used for dispensing anchoring tags to be attached to articles of
apparel, or coupling buttons to coats. Figures 2, 4 and 26 of the application
are shown below:
(See formula 1)
Tag 30 moves through guide-way 40d under the control of indexing mechanism
80, 81, and is dispensed through hollow slotted needle 45 by plunger 61
when handle 42 is actuated.
The Examiner refused the application to reissue for failing to meet the
requirements imposed by Section 50 of the Patent Act. He stated (inter
alia):
...
The refusal of this application is maintained and the grounds for
such rejection are as follows:
1. Plurality of Inventions
Claims 19-29 presently on file are not directed to the same
invention as the claims allowed in the original patent (which
claims have been refiled in the instant application as claims
1-18) and as such are contrary to Section 50.
Comparing claims 1-18 and 19-29 it is evident that the additional
claims (i.e. claims 19-29) are directed to a plurality of alleged
inventions all of which are different from the one defined in the
claims allowed in the original patent (i.e. present claims 1-18).
In his remarks the applicant did not dispute the above objection but
attempted instead to justify the insertion of these claims on the
ground that Section 50 of the Patent Act specifically provides for
reissuance when the patentee claimed less than he had right to and
therefore he is entitled to insert the additional claims which
should have been inserted originally but were omitted due to inad-
vertence accident or mistake.
Clearly this view can not be entertained as a valid conclusion. Although
Section 50 provides for claiming "more or less" nevertheless the
reissue must be directed to the same invention as that described and
claimed in the original patent. The provision for claiming "more"
may not be construed as a right of applicant to insert a greater number
of claims directed to different alleged inventions.
2. Reassertion of previously cancelled claims:
Claim 22 (old claim 23) the broadest claim in the group of
claims 19-27 directed to one of the alleged inventions is also
broader in scope than the original claim 21 cancelled during the
prosecution of the original patent in response to the requirement
for a restriction of claims to a single invention.
As claims which are broader in scope than those deliberately cancelled
during the prosecution of the original patent may not be re-asserted
in the reissue,-the above claims are rejected.
Applicant's arguments with respect to the above have been noted,
however, his reliance on the original claim 1 in these arguments
is not understood as no reference to this claim appears in the
previous office action. It is claim 22 (old claim 23) which is
considered to be the broadest claim in the group and as such must
be compared for its scope with the claims deliberately cancelled
during the prosecution of the original patent.
3. Duplicate claiming.
The applicant has concurred with offices objection and cancelled
the old claim 22 defining a subject matter which is being con-
currently prosecuted in applicant's copending application #262,159.
However, the particular facts presented in items 3, 4 and 5 of the
Petition in connection with the above have now proven to be incorrect
thereby rendering the petition defective.
4. Lack of support.
Claims 28 and 29 are directed to a concept of a particular mode of
lost motion operation which is not supported by the disclosure.
Lost motion may be inherent in the actuating mechanism described,
however, a lost motion per se is known and a particular mode of
lost motion operation as defined in the claims is not described
as such in the disclosure of the original patent nor was it recog-
nized as inventive therein.
In the letter of February 28, 1980 applicant has merely stated that
it is a particular mechanism for achieving last motion that is being
claimed and not "lost motion" per se, however he did not indicate
where in the disclosure a support for the particular mode of lost
motion operation may be found.
5. Defective Petition.
Items 2 and 3 of the Petition are defective as stated in the previous
office action in that with the resubmission of the disclosure and
claims (1-18) of the Original Patent without inserting a claim to
the same invention but of a broader scope to justify applicant's
contention of claiming more than in the allegedly defective patent
the Petition does not conform to the requirements of Section 50
of the Patent Act as it can not be said that the description is
insufficient or that the patent claims less than applicant had
right to claim.
...
In response to the Final Action the Applicant argued (in part):
Section 50 first requires that the patent be "deemed defective....
by reason of the patentee's claiming....less than he had a right
to claim as new..." Paragraph 2 of the petition for reissue
satisfies this requirement. Paragraph 3 of the petition outlines
the way in which the patent is deemed to be defective or inoperative -
that there was a failure by the patentee's patent agents to apprec-
iate fully the various aspects of the present invention and hence a
failure by the patentee's patent agents to claim various aspects of
the present invention as broadly as the inventor had a right to
claim as new. This has been recognized as a reason to allow a
patent to reissue. See Curl Master v. Atlas Brush (1967) S.C.R. 514.
The Examiner has stated that since the disclosure for reissue has
not been altered (except for the new statement of invention, which
means it has been altered), and since the original claims have not
been altered, there can be no error. Obviously this does not follow.
An error can be an error of omission as well as one of act, and the
Petition filed states that it is one of omission, that the patent
agent of the applicant failed to appreciate the various aspects of
the invention, and that he failed to claim what he should have.
The Examiner has also stated that there is no evidence of any error
in not including in the original patent the subject matter of the
present claims 19-29. It is submitted that the fact that these claims
are directed to what the inventor had a right to claim as new, that
these claims were not included in the original patent, and that the
Petition states the reason for not including these in the original
patent is due to the error of the patentee's patent agent, is evidence of
an error of omission, and in full compliance with the first portion of
section 50 of the Patent Act. Hence items 4 and 5 of the Petition
cannot be defective since the evidence of the error is explained in the
Petition an d is self-evident. Hence there is more here than a mere
allegation of error. The existence of claims which are supported
by the disclosure and which are novel and inventive and broader than
the claims allowed, and which were not included in the original
application, is evidence of an error of omission.
The principle objection of the Examiner seems to relate to the last
part of Section 50(1) which deals with the words "same invention".
It is submitted that these words mean that newly discovered matter may
not be added to the disclosure or claimed, or that matter which was invented
but not disclosed or claimed or shown in the drawings may not be added
to the disclosure or claimed. But where the disclosure and drawings
describe certain aspects of an invention, but were not claimed, then it
is proper to reissue the patent to claim these aspects. It is submitted
that inventors would normally claim everything to which they have a
right to claim, if the inventor is properly advised by a patent agent
who appreciates the invention. Hence, there is a presumption of intention
on the part of the inventor to claim all various aspects of the invention,
This presumption is especially true where there is an error of the
patent agent in which the claims are not directed to all aspects of
the invention.
In the case of Withrow v. Malcolm (1884), 6 O.R. 12, Ferguson J. held
that the words "same invention" were directed to inventions which were
comprehended in the surrendered patent, and that claims cannot be
broadened to import something new into the reissued patent - viz.
some invention not contained or comprehended in the surrendered one. This
case appears to permit reissue with additional and broader claims
provided that the claims are directed to inventions comprehended in
the surrendered patent. The Petition filed supports this contention, as
well as the disclosure of the patent. Hence if the invention is described
in the patent, then it is the "same invention" for the purposes of
section 50(1) of the Patent Act.
In the case of Farbwerke Hoechst AG et al v Commissioner of
Patents (1965), 31, Fox. Pat. C.64; (1966), 33 Fox. Pat. C. 99,
it was held that the reissue must not go beyond the scope of the
invention as disclosed in the original patent, but that a
patent may reissue with added claims for the invention disclosed
by the original patent and not for any new invention. See also
Northern Electric Co. Ltd. et al v. Photo Sound Corp. et al (1936)
Ex. C.R 75 where the words "same invention are interpreted in
contrast to the words "new invention". It was held that a
reissue patent may disclose and protect the patentable subject
matter which it was the purpose of that patent to secure to
its inventor. This is on all fours with the present case - the
inventor intended to protect that which was disclosed in his
patent. Due to error of the inventor's patent agents, the
subject matter was not protected. Hence, the patentee wants to
reissue the patent.
. . .
The issue before the Board is whether or not the original patent should be
reissued.
Parts 2 to 5 of the petition for reissue read as follows:
(2) THAT the said Patent is deemed defective or inoperative by reason
of insufficient description or specification and by reason of claiming
less than was entitled to be claimed.
(3) THAT the respects in which the Patent is deemed defective or inoperative
are as follows:
The Patent may be defective in that, although a generalized statement
of invention is set forth in the disclosure at page 1, line 17 to page 2,
line 13, that statement does not conform strictly with the various
aspects of the invention disclosed in the detailed description and accord-
ingly the disclosure may not distinctly point out the invention as
required by Section 36(1) of the Patent Act.
The Patent may also be defective in that it claims less than the
Inventor had a right to claim, since there. is a failure to cover all aspects
of the invention.
In particular the claims do not cover the Inventor's lost-motion
mechanism feature in which a slide that is movable between two end positions
operates a ratchet assembly for the advancement of fasteners. In addition
the claims do not cover that aspect of the invention by which a needle with
an integral cutting edge is removably mountable within a device for
dispensing attachments.
(4) That the error arose from inadvertence, accident of mistake, without
any fraudulent or deceptive intention in the following manner:
The said Canadian Patent No. 969,399 claims priority from United
States Patent Application Serial No. 169,413 which was filed in the United
States Patent Office August 5, 1971. Said United States Patent Application
and the subsequently filed Canadian Patent Application Serial No. 969,399
were prepared by U.S. attorneys, Roberts, Cushman & Grover, who were
not fully familiar with Canadian practice and law and thus did not appreciate
the desirability of including in the disclosure statements of invention
conforming to the main aspects of the invention.
Furthermore, the said U.S. attorneys failed to comprehend and
appreciate properly the importance of several further inventive aspects
of the dispensing apparatus and thus failed to include claims in the
application directed thereto. The Inventor, Arnold R. Bone, is not
familiar with patent law and practice and did not recognize the
possible defects in the Canadian Application, nor the desirability
of including in the Canadian Application the matters referred to
above.
Additionally, the prosecution of the Patent Application before
the Canadian Patent Office was controlled by the said U.S. attorneys,
through their Canadian patent agents, Messrs. Marks & Clerk, and as
a result the above noted various defects in the specification were not
noticed by said Canadian patent agents.
(5) THAT knowledge of the new facts in the light of which the new claims
have been framed was obtained by your Petitioners in November 1978 in
the following manner:
In March 1976 a review of the counterpart U.S. patent indicated
that there were aspects of the invention that had not been claimed
originally because of inadvertence or mistake.
The foregoing failure to claim less than the inventor had a right
to claim arose because certain aspects of the invention apparently
were overlooked by the attorney who handled the original prosecution of the
case. In March of 1976 the inventor was advised by another attorney that
he appeared to be entitled to protection on the originally unclaimed
aspects of the invention in view of the fact that his filing date disclos-
ing the claimed subject matter is August 5, 1971, and his actual reduction
to practice was before September 30, 1970.
Subsequently, an application for reissue was filed in the U.S. on
March 18, 1976. This application became U.S. Reissue Patent No. 29,310
on July 19, 1977. Thereafter, in the light of the U.S. action a review
was made in November 1978 to determine if other cases should be considered
for reissue and it appeared that the Canadian case would qualify. In
addition it was decided to correct the specification in accordance with
Section 36 (1) of the Patent Act.
There are 29 claims, of which claims 1 to 18 are identical to those in the
original patent. At the Hearing Mr. Carton stressed that the reissue applica-
tion was directed to the same invention as found in the parent. He stated
that claim 8 contains the essence of the invention, is the broadest claim of
the reissue application, and defines each part of the invention.
In the Final Action it is alleged there is a plurality of inventions, of which
"claims 19-29 on file are not directed to the same invention as the original
patent (which claims have been refiled in the instant application as claims
1-18) and as such are contrary to Section 50",
Claim 8 reads as follows:
8. Apparatus for dispensing fastener attachment members one
at a time, the fastener attachment members being coupled to
a carrier by a coupling member, the apparatus including a body,
a hollow needle having an elongate slot along one side supported
by the body and extending therefrom, an ejector supported by the
body for driving a head of a fastener attachment member through
the needle with a filament of the fastener attachment member
coupled to the head projecting through the slot, and [an indexing
mechanism comprising an indexing wheel having a plurality of
teeth positioned about the circumference thereof, a pawl having
a hook-like end for engaging the teeth of the wheel one at a
time to rotate the wheel in one direction, the pawl having a
slotted pivot hole, a support positioned in the pivot hole for
supporting the pawl and at the same time permitting the pawl to
rock back and forth thereon, and drive means coupled to the pawl
to move the wheel in increments as the pawl rocks back and
forth on the support.]
In the above claim the portion between the brackets is identical to the wording
found in claim 1. Clearly then, claim 1 is broader in scope than claim 8.
Claims 2 to 18 inclusive are infringed by the terminology found in claim 1 and
are considered as directed to the same invention. When looking at claims 19
to 29 we are unable to find terminology relating to the indexing mechanism
described in claim 1 which would infringe those claims. Consequently we agree
with the Examiner that claims 19-29 are not directed to the same invention as
the claims allowed in the original patent.
Section 50 permits reissuing to claim the "same invention" as was claimed
originally, not a different invention. As was stated by Mr. Justice Maclean,
for example, in Northern Electric v Photosound, 1936 Ex. C.R. 75 @89:
It is quite clear that the amended patent must be for the same
invention and cannot embrace any new invention.
In the vast majority of cases in which a patent is defective or
inoperative, its defects must be found to reside in the description
given of the invention in the specification or drawings, or in both,
and it was to cure such defects that relief was provided by statute.
Hence, in most cases, the purpose of a re-issue is to amend an
imperfect patent, defects of statement or drawing, and not subject-
matter, so that it may disclose and protect the patentable subject
matter which it was the purpose of that patent to secure to its
inventor. Therefore the re-issue 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 perfectly; he is not to be granted a new
patent but an amended patent. An intolerable situation would be
created if anything else were permissible. It logically follows
of course, that no patent is "defective or inoperative" within the
meaning of the Act, by reason of its failure to describe and claim
subject-matter outside the limits of that invention, as conceived
or perceived by the inventor, at the time of his invention.
Therefore claims 19-29 fail to meet the requirements of Section 50 of the Patent
Act.
Another objection raised in the Final Action was the reassertion of previously
cancelled claims, of which claim 22 is the broadest in the group of claims
19-27. It also pointed out that claim 22 is broader in scope than claim 21
of the original application which was cancelled during prosecution in response
to the requirement for restriction of claims to a single invention.
The Applicant responds by arguing that "now claim 22 is not broader than
old claim 21, but is different from old claim 21." He reasons that "it cannot
be said that all the features in original claim 21 are covered by new claim 22
and hence new claim 22 is not broader than original claim 21."
We have looked carefully at claim 22 of this application and cancelled claim 21
of the patent as filed. While claim 22 does describe the attachment members
in greater detail, the invention is for dispensing apparatus, and the terminology
relating to the apparatus for dispensing the attachment members is broader in,
scope than that of cancelled claim 21.
Provisions for reissuing in Canada are derived from the a corresponding provisions
in the United States Act. This is recognized by the Courts as we find in
Hunter v Carrick (1884), 10 O.A.R. 449 at 468 (affirmed 11 S.C.R. 300) where it
states:
Cases may arise for adjudication in which it will be important
to keep in view the differences between the two statutes; but
as far as they touch the immediate subject before us, viz: the
effect of the reissue of a patent upon corrected specifications,
as they are styled in the United States statute, or amended
or corrected ones as they are indifferently styled in ours, we may
for our present purpose regard them as covering the same ground;
and I agree with the learned Judge, whose decision we are
considering, that we should treat the judgments in the United
States Courts, in which the effect of their statute has been
declared, as laying down the rule which we should follow....
We note, too, that in Curl-Master v Atlas Brush (1967) S.C.R. 514 at 527
& 530), Martland J. quoted with approval from two United States decisions
on reissue, while in Farbwerke Hoechst v Commissioner of Patents (1966 SCR
606 at 614) he pointed to the distinctions which must be made where there
are material differences in the provisions. See also Van Heusen v Tooke Bros.
1929 Ex. C.R. 89 at 100 and Leonard v. Commissioner of Patents, 14 Ex. C.R. 35,
(1914) at 361. Keeping in mind, then, such proper distinctions as should be
made, we turn to IN RE BYERS (1956) 43 CCPA 804 and find at p. 807:
Thus in Dobson v. Lees, 137 U.S. 258, the Supreme Court of the
United State said:
A reissue is an amendment, and cannot be allowed unless the
imperfections in the original patent arose without fraud,
and from inadvertence, accident or mistake. Hence the reissue
cannot be permitted to enlarge the claims of the original
patent by including matter once intentionally omitted.
Acquiescence in the rejection of a claim; its withdrawal by
amendment, either to save the application or to escape an
interference; the acceptance of a patent containing limitations
imposed by the Patent Office, which narrow the scope of the
invention as it first described and claimed; are instances of
such omission.
Similarly in Shepard v. Corrigan, 116 U.S. 593, the Court said:
Where an applicant for a patent to cover a new combination is
compelled by the rejection of his application by the Patent
Office to narrow his claim by the introduction of a new element,
he cannot after the issue of the patent broaden his claim by
dropping the element which he was compelled to include in order
to secure his patent.
. . .
It is evident that since the deliberate cancellation of a claim in
order to obtain a patent constitutes a bar to the obtaining of the
same claim by reissue, it necessarily also constitutes a bar to the
obtaining of a claim which differs from that cancelled only in being
broader. That was the holding in In re White, 23 F. 2d 776, 57
App. D.C. 355, and in In re Murray, supra, this court quoted with
approval the following statement from Ex parte White 1928 C.D. 6:
The deliberate withdrawal of a claim in order to secure a patent
is conclusive of the presumption that there has been no inad-
vertence, accident, or mistake, and the invention thus abandoned
cannot be regained either by construing the claims of the patent
broadly or by obtaining a reissue with broadened claims. The rule
is the same whether the claims sought by reissue or otherwise
are identical, substantially the same, or broader than the
abandoned claims.
Similarly, in In re Wadsworth et al, 27 C.C.P.A. (Patents) 735,
107 F. 2d 596, 43 USPQ 460, it was held that the cancellation
of a claim from an original application on which a patent was
granted, reciting a process including two steps in a specified
order precluded the obtaining by reissue of the patent of a similar
claim which was broader than that cancelled in that it did not
specify the order in which the steps were performed.
We are of the opinion the at the appellant's action in limiting the
scope of original claim 20 by amendment constitute a deliberate
withdrawal of the claim as originally presented, in order to
obtain a patent, and that such withdrawal is a bar to the obtaining
by reissue of claim 20 as it originally stood, or of any claim
differing therefrom only by being broader. Appealed claims 2 and
3, as above noted, differ from original claim 20 as presented, only
in that they are broader than that claim. (Emphasis added)
We think it would also be appropriate to refer to In the Matter of Land's
Patent (1910) 27 R.P.C. 481 to show that a deliberate action cannot be
considered unintentional, even though that deliberate action was taken be-
cause of an error in appreciating what the law might be. That case involved
the restoration of a lapsed patent, but we believe the reasoning adopted
there is appropriate in assessing whether a deliberate action can be brought
within the meaning of "inadvertence, accident or mistake" as used in Section
50 of the Canadian Patent Act.
In this case we are satisfied that the Applicant now proposes to enlarge
claim 22 by deleting limitations intentionally included to obtain a patent.
We are not satisfied that the necessary element of inadvertence, accident
or mistake is present to justify reissuance of the original patent. Therefore
we agree with the view expressed in the Final Action that "claims which are
broader in scope than those deliberately cancelled during the prosecution of
the original patent may not be re-asserted in the reissue."
The Applicant has referred to Curl Master supra as establishing that an error
by the Applicant's attorney is sufficient justification for reissue. In the
Curl Master decision the patent was found defective by reason of insufficient
description, and that resulted in a mistake, namely, a failure on the part of
the patent agent to fully comprehend and describe the invention for which he
has been instructed to seek a patent. We have already noted in the application
before us that the action of the Applicant's agent, in the surrendered patent,
was deliberate, and therefore not an error which may be corrected by reissue.
Apparatus for inserting attachment members having a filament and head on either
end has been in use for some time. The original patent issued for an indexing
mechanism for this type of apparatus. This indexing mechanism is clearly
defined in claim 1 of the application which describes the component elements
and their cooperation one with another. Claims 2 to 18 are also directed to
this indexing mechanism. Claim 19 describes improvements in another compon-
ent of the apparatus, more particularly the ejector component, while only
acknowledging the presence of an indexing mechanism (not necessarily that
of claims 1-18). Consequently claims 19-29 are directed to a different
invention than that of claims 1 to 18. In the original patent Applicant
claimed the indexing mechanism. In this application he wants to claim not
only that invention, but also a second invention not claimed in the original
patent, viz the ejector.
While it was not raised during the prosecution of this application, and does
not form the basis for our rejection, it may be noted that the present reissue
application was the subject of a protest filed by a commercial rival of
Dennison, namely, protest J2480-13-224, filed by Monarch Marking on Feb. 29,
1980. The basis for the protests is the belief:
that Dennison is attempting to recapture abandoned patent
protection to cover Monarch's Model 1310 tag attacher
as well as the recapture of abandoned patent coverage on
the knife and needle idea to obtain claims in Canada of
the same scope as U.S. Reissue patents 29,8.19 and 29,310.
As we indicated above, however, there has been no need to bring the issues raised
by the protestors into our reasons for rejection; but it does underline the
need for the Patent Office to scrutinize carefully petitions for reissue, which
could affect the interests of other manufacturers.
He are satisfied that the Applicant is not entitled by law to reissue his
patent and recommend that the decision of the Examiner to refuse the applica-
tion be upheld.
G.A. Asher S.D. Kot
Chairman Member
Patent Appeal Board, Canada
I concur with the recommendations of the Patent Appeal Board and refuse
to grant a patent on this application. The Applicant has six months
within which to appeal this decision under the provisions of Section 44
of the Patent Act.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 21st. day of December, 1981
Agent for Applicant
Moffat & Co.
Box 2088, Stn. D
Ottawa, Ont.