COMMISSIONER'S DECISION
REISSUE - TOOTHBRUSH KIT
Claim 1 is broader in scope than patent claim 1 and covers what was known
by others but not known by the applicant. It is refused for claiming matter
that was not part of the applicant's invention at the time of issue.
Final Action: Affirmed **********************
Patent application 342,200 (Class 15-108.1) was filed on December 19,
1979 for an invention entitled DENTAL HYGIENE KIT. The inventor is John
A. Manfredi. The Examiner in charge of the application took a Final
Action on November 24, 1982 refusing to allow it to proceed to patent.
In reviewing the rejection, the Patent Appeal Board held a Hearing on
April 18, 1984 at which the Applicant was represented by Mr. G. Rolston
and Mr. F. Forfan.
The subject matter of this application relates to a portable toothbrush
kit in which the brush is housed in a cylindrical sleeve member and the
hollow handle serves as a casing for the toothpaste tube. Figures 1
and 2 are illustrative of the application.
(See formula 1)
Toothbrush 20 is contained in protective sleeve 26 and refillable toothpaste
tube 28 is in hollow handle 12. Figure 2 shows the components in disassembled
form. Plug 38 screws into thread sleeve 40 located at the bottom of tube 28.
Tube configuration and thread sleeve manufacturing alternatives are the areas
which are of concern to the applicant.
In the Final Action the Examiner refused the application for reissue because
of failure to satisfy Section 50 of the Patent Act. That action stated in
part:
...Thus the applicant and his agent displayed no error from inadvertence,
accident or mistake, but accurately defined the essential features of the
invention in view of the relevant facts known at the time of filing the
original application....
...pages 3 and 4 of the affidavit, implies that no error, mistake or
inadvertence arose since the applicant was not aware of the different
manufacturing techniques. Thus the applicant is not entitled to claim
techniques of which he had no knowledge at the time of filing of the
original application....
....It is further noted in the affidavit of George A. Rolston included
in the petition for reissue on page 3 it states, "Apparently, at the
time I was drafting this claim it was not perceived that there were in
fact other ways in which this structure could be made." Claim 1 states,
"a generally cylindrical reinforcement at the other end of said toothpaste
container, said cylindrical reinforcement, together with said toothpaste
container being adapted to make a tight push fit within said open end of
said handle whereby to retain said toothpaste container therein." Thus
the applicant did in fact encompass alternative ways in which the
structure could be made. United States patents 793,259 and 1,505,363
do in fact describe ways the applicant encompassed in the original claim 1.
Hence the applicant amended the claims in view of the prior art. The
applicant may not have perceived other ways that the structure could be
made, but in fact claimed other ways....
In response to the Final Action the Applicant stated (in part):
...
As at the time prior to 1976 there were several different manufacturing
techniques which were well known in the plastics industry. The dispensing
container could have been made by any and all of these techniques.
Mr. Manfredi, and myself, were not aware of all of these techniques at
the time.
Mr. Manfredi and myself believed in fact that the only technique by
which the article could be made was the technique shown in Figure 1 of
the application.
This belief was a mistake.
The claims, during the course of prosecution were amended so that they
were more or less specific to this technique.
There is in fact no newly conceived matter at all. The matter to which
the Examiner is believed to be referring in this passage, relates to the
different manufacturing techniques which were well known in the plastics
industry prior to 1976, but were not known to the inventor and myself.
This cannot be considered as "new" matter which was discovered
or conceived by the inventor.
The inventor is not suggesting that he is the discoverer or
that he has conceived these techniques.
They are techniques which were standard in the industry, and
which industry experts were very familiar with. (see affidavit
of Bahen).
...
The issue before the Board is whether or not the present reissue application
should be allowed to proceed to patent.
Reissue claim 1 reads:
A portable dental hygiene kit of the type having a toothbrush
and a removable toothpaste container within a handle portion of
the brush, said dental hygiene kit comprising:
a main body portion having brush-attaching means thereon and a
toothbrush removably attached to said main body portion;
handle means extending from said main body portion and a recess
within said handle means, said recess having a blind end and an
open end and a generally regular shape with a predetermined in-
ternal diameter;
a toothpaste container having flexible side walls, a nozzle and a
cap at one end, being freely removably disposable within said
recess, being of a generally regular shape from its said one end
to a point short of its other end, and having an external diameter
less than said internal diameter of said recess;
a cylindrical reinforcement member disposed at said other end thereof,
and having an internally threaded bore, said reinforcement member
forming a radially outwardly enlarged terminal portion of said
container, such enlarged portion making a tight push fit within
said open end of said handle means for retaining said toothpaste
container therein;
a threaded plug closure screwed into said threaded bore of said
cylindrical reinforcement member and being removable therefrom to
permit refilling of said toothpaste container through said bore;
an external annular flange on at least one of said cylindrical
reinforcement member and said threaded plug to limit the extent
of insertion of said toothpaste container into said handle, and,
removable cover means for covering said toothbrush when not in use.
In the petition for reissue the applicant in parts 3 to 5 makes the follow-
ing statements:
(3) THAT the respects in which the patent is deemed defective
or inoperative is as follows:
Claim 1 refers to "handle means... having a recess... of a cylindrical
shape...
The interior shape of the recess appears to be irrelevant to the
patentability of the invention, and in addition, it is in fact cap-
able of being made in a variety of different configurations without
suffering any less of the essential function or utility for which
it is provided.
In addition, Claim 1 also refers to "an annular sleeve disposed
within the interior of said toothpaste container at the other end
thereof and having...an external diameter greater than the internal
diameter of the container so as to radially outwardly distend the
terminal portion of said container.
Its is again felt that this wording is unduly restricted, since it
introduces limitations on the specific form of construction, which
are essentially unnecessary to the function or utility of the
features as claimed.
(4) THAT the errors arose from inadvertence, accident or mistake,
without any fraudulent or deceptive intention in the following manner.
THAT amending the wording of the claims in the course of
prosecution, new terminology was used, by the patent agent of record,
which it now appears was not well chosen.
(5) THAT knowledge of the new facts stated in the amended disclosure
and in the light of which the new claims have been framed was obtained
by Your Petitioner on or about the 12th. day of July, 1979 in the
following manner, as a result of a meeting between the inventor and
the patent agent, and a detailed study of the wording of the claims.
with a view to possible future legal action.
We are mindful that Section 50 of the Patent Act permits the reissue of a
patent when the error arose from inadvertance, accident or mistake. Further
we believe that a person relying, upon a mistake under Section 50 has to
establish that the patent which issued did not accurately express the invent-
or's intention with respect to the description or specification of the
invention or with respect to the scope of claims. (see Hoescht vs
Commissioner of Patents 50 CPR 220 (254-5)
At the Hearing Mr. Rolston described the history of the prosecution on the
issued patent. He pointed out that neither he nor inventor Manfredi had
any experience in plastics manufacture and that he had very little guid-
ance from the inventor in drafting the application. An affidavit from
Mr. Rolston was presented with the petition for reissue. That affidavit
stated in paragraphs 3 and 4 of page 3 that:
Apparently, at the time I was drafting this claim it was not per-
ceived that there were in fact other ways in which this struct-
ure could be made, so as to achieve these functions. It now
appears that there may well be other ways in which the tooth-
paste container can be provided with an enlarged or distended
lower portion, to provide this wedging fit, using techniques
which are apparently already in use in the plastics industry.
The inventor himself is understood to have only recently have
been made aware of these manufacturing techniques, and I myself
way not aware of them. It is not suggested that such
manufacturing, techniques are themselves inventive, and indeed it
appears that to persons knowledgeable in this particular art in
the plastics industry such techniques are quite well known.
The purpose of the presently proposed revisions to lines 14 to 23
are therefore to ensure that the claim shall cover the toothpaste
container having the essential functional utility of the toothpaste
container described in the specification, while being made
according to techniques which it now appears are relatively well
known in the plastics industry, although were not known to the
role a ~~ a~ ~~ ~~ that the specification was drafted
The affidavit and the petition clearly establish that the inventor and his
agent were not familiar with the manufacturing techniques available in plastic
manufacturing when the patent was being prosecuted. Mr. Forfan argues that
ignorance of these techniques resulted in unduly restricted claims in the
issued patent and maintains that the Applicant is entitled to the broader
claims now in the reissue application.
We turn first to the amendments contained in reissue claim 1 concerning the
handle means. The recess is now said to be a "generally regular shape with
a predetermined internal diameter", whereas in patent claim 1 the recess
is recited as a "cylindrical shape with a predetermined internal diameter".
In the Agent's affidavit filed December 19, 1979, Mr. Rolston argues the
term "cylindrical" with respect to the handle is unnecessarily restrictive,
and so far as the handle is concerned, since the limitation "predetermined
internal diameter" remains in the claim, we find no objections to making that
amendment.
With respect to the changes proposed for the structure of the toothpaste
container, we make the following observations. The container in reissue
claim 1 is described as being a "generally regular shape" whereas in patent
claim 1 it is a "generally regular cylindrical shape". Each of the shapes
referred to above are also modified by the term "an external diameter less
than the internal diameter" of the recess of the handle. This portion of
the reissue claim would not seem, by itself, to present any difficulty in
finding acceptance.
We next consider the term in reissue claim 1 "cylindrical reinforcement
member disposed at" the other end of the toothpaste container, which replaces
"an annular sleeve disposed within the interior" of the container, as found
in patent claim 1. In Exhibits A and B submitted with the Manfredi affidavit
of November 14, 1980 we see the arrangements now covered by the above tern
in reissue claim 1. Manfredi says in part 3 of his affidavit he believed
the threaded collar had to be forced inside the flexible wall, and we note
that his patent claim 1 reflects this construction. Part 3 of the Manfredi
affidavit also informs us of meetings with experts in plastics design
describing sp~~ welding and injection molding techniques to form the larger
diameter integrally with the smaller diameter. Manfredi also says he did
not know these facts when his application was being processed to patent.
In part 5 of the Petition it is stated the knowledge of the new facts was
obtained on July 12 1979. This date is after the issue of the patent.
In our opinion, reissue claim 1 in reciting the cylindrical reinforcement
disposed at the other end of the toothpaste tube, encompasses the techniques
known by others at the time the patent issued. We do not find in any of
the evidence submitted, or in the original application, a disclosure that
any technique other than that covered by patent claim 1 was known to the
inventor when his patent issued. We consider reissue claim 1 is broader it
scope than patent claim 1 and covers what was known by others, but not known
by Applicant. We are satisfied therefore that reissue claim 1 in reciting
the reinforcement member disposed at the other end of the toothpaste
container, is claiming matter that was not part of Applicant's invention at
the time of issue.
We are guided by the finding of the court in Northern Electric vs Photo Sound
Corp. 1936 S.C.R. 649 @652 where it states:
These conditions necessarily imply that the inadvertence,
accident or mistake must be inadvertence, accident or mistake
affecting the sufficiency of the description or specification
in the original patent, and it is only in respect of such
inadvertence, accident or mistake that the statute contemplates
relief.
The statute does not contemplate a case in which an inventor
has failed to claim protection in respect of something he has
invented but failed to describe or specify adequately because
he did not know or believe that what he had done constituted
invention in the sense of the patent law and, consequently, had
no intention of describing or specifying or claiming it in his
original patent. The tenor of the section decisively negatives
any intention to make provision for relief in such a case.
and at 653 where it reads:
There is no suggestion that the original patent was inoperative
or could be deemed inoperative. It is essential, therefore, to
enable the appellants to invoke the section, that the original
patent should have been deemed defective be reason of insufficiency
of description or specification arising from inadvertence, accident
or mistake.
Is as immaterial to my present purpose whether the word
"deemed" contemplates the view of the Commissioner or the
view of the Court before whom the question of the validity
of the re-issue patent comes for decision, or the view of
the parties concerned. At the lowest, the statute must
contemplate some kind of reasonable ground for apprehension on
the part of the original patentee that the patent is defective
in the sense of the section. It would, in my opinion, be an
abuse of this language to apply it to a case in which it is
obvious that a patent completely fulfills the intention of
the applicant, where there is plainly neither insufficiency of
description nor specification, for the purpose which the
applicant had in view; where, in other words, the invention in
respect of which the patentee intended to obtain protection is
quite certainly and sufficiently described and specified. In
such a case, the patent is not in any proper sense of the
phrase defective.
In the patent the issued claims resulted from an amendment to overcome cited
art while still keeping them within the teaching of the disclosure which
described what the patentee knew at the time. Therefore we believe that
when the prosecution of the original patent tool place the specification
adequately described the invention in terminology which both the inverter
and agent considered to be the inventor's advance in the art. From the
evidence before us, we do not find that it was ever the intention of the
applicant to include the subsequent knowledge which he now wishes to enter
in the application as part of his invention because, as he states in his
affidavit, it was not known to him at the time. We do not see therefore
how that knowledge could have been drafted for inclusion in the original
disclosure. From the above Northern Electric case we think that knowledge, obtained
by the inventor subsequent to the issue of a patent, is not the type of
error for which Section 50 of the Act contemplates relief. Further, that
knowledge is said to have been well known by others at the time of issue and
it is not stated how, nor do we believe that it could be considered as forming
any part of his invention.
In our view the application does not comply with the requirements under
Section 50 because the inventor did not intend to define the scope of
monopoly of the invention in terms as now expressed in claim 1. This claim
and claims dependent thereon define an invention not intended to be claimed
in the original application (Vide Northern Electric vs Photo Sound) and we
recommend that the rejection of the application for reissue be affirmed.
M.G. Brown S. D. Kot
Assistant Chairman Member
I have reviewer the prosecution of this application and concur with
the reasoning and findings of the Patent Appeal Board. Accordingly, I
refuse the claims of this application. The Applicant has six months
within which to appeal this decision under the provisions of Section 4-
of the Patent Act.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 16th. day of August, 1984
Agent for Applicant
G.A. Rolston
43 Eglinton Ave. East,
Toronto, Ont.
M4P 1A2