IN THE CANADIAN PATENT OFFICE
DECISION OF THE COMMISSIONER OF PATENTS
Patent application 379,817 having been rejected under Rule 47(2) of
the Patent Regulations, the Applicant asked that the Final Action of
the Examiner be reviewed. The rejection has consequently been con-
sidered by the Patent Appeal Board and by the Commissioner of
Patents. The findings of the Board and the ruling of the Commiss-
ioner are as follows.
Agent for Applicant
Smart & Biggar
Box 2999, Station D,
Ottawa, Ont.
K1P 5Y6
COMMISSIONER'S DECISION
Reissue. The prosecution to obtain the patent showed exercise of
judgement in claiming over the prior art. No intent found for
broadening the claims. Rejection of two parts of the petition
affirmed.
This decision deals with Applicant's request for review by the Commissioner
of Patents of the Final Action on application 379,817 (Class 281-10) for
the reissue of Canadian Patent 1,012,183 granted on June 14, 1977. The
application is assigned to Moore Business Forms Inc. and is entitled MACHINE
IMPRINTABLE BUSINESS FORMS WITH TRANSVERSE COLORED BARS. The inventors are
Alan M. Gould and Robert H. Allen. The Examiner in charge issued a Final
Action on September 24, 1982 refusing to allow the application. A Hearing .
was held on December 5, 1984, at which Applicant was represented by his
Patent Agent Mr. D. Morrow.
The application relates to a business form provided with a plurality of pre-
printed parallel color bars. In figure 1 shown below, form 10 has a plurality
of parallel bars of at least three different and unlike colors. Bars 15 and
16 of different colors are printed on the form which provides lighter color
spacing bars 17 between them, for example a bright white color, to facilitate
a clear distinction of one bar from another. The form may be fed into a machine
by feed holes 11.
(See figure I)
In rejecting the application for reissue, the Examiner refused amendments
relating to items (a), (f), (g), (h), (i) (1), and (m) of part 3 of the
petition for reissue, and said (in part) as follows:
...
Applicant has not established that the items refused in the
application for reissue were intended to be described or
claimed in the original patent, nor that the description in
his original application was not clear and complete and all
this due to error.
...
His grounds for refusing items (a) and (i) are as follows:
...
Item (a) It is true that the claims have always referred to
"at least three colors", but inserting in the disclosure
new details such as in lines 7 to 13 on page 7, only be-
cause they are within the scope of the claims, cannot
be accepted. Furthermore this cannot be justified as
the result of an error.
...
Item (i) The applicant states that the words "different" and "unlike"
are synonyms and their ~ meaning is exactly the same and
they are redundant. This explanation is not convincing.
First of all, the patentee always used the two terms to-
gether connected by an "and". He never interchanged
"different" for "unlike", and therefore, a distinct
meaning was conveyed by these two words. Leaving them
as in original patent they will describe and define the
same invention as in the original patent. However,
deletion of "unlike" modifies the scope of the claims.
No previous intention of not having the two words combined
can be found in the original specification.
In response, Applicant accepted the Examiner's position for items (f), (g),
(h), (1) and (m) and made appropriate deletion, amendnent, or cancellation.
He raintained the matter in items (a) and (i) was acceptable and argued
for their retention, (in part) as follows:
...
(a) The claims have always referred to "at least three" colours, and
therefore clearly have always contemplated more than three
colours. The amendment to the disclosure at page 7, lines 9-13
merely inserts an explicit statement corresponding to the scope
of the claims. Clearly, the applicant has always contenplated
the use of more than three colours; this is of course inherent in
the claims. The error in question is, purely and simply, a patent
attorney's error, since patent attorneys are supposed to know
that claims are supposed to be supported by the disclosure. The
amendment sought is of a kind that has been repeatedly permitted
in reissue applications. Its purpose is simply to correct a
technical error by a patent attorney. It is respectfully submitted
that this amendment ought to be allowed, and the statement has
been retained in the disclosure.
(i) We respectfully maintain this amendment. This is plainly
another instance of attorney's error. The words "different"
and "unlike" are dictionary synonyms. Even if their meaning
does not precisely coincide, it clearly substantially over-
laps. The words are redundant.
No applicant for patent intends to include redundancies in
his claims. However, every applicant represented by an
attorney is in the hands of that attorney when it comes to
details of claim terminology. Nothing in the prosecution of
the application turned on this particular terminology. This
is an error of claiming which has been perceived subsequent
to issuance of the patent. We respectfully submit that it is
simply a matter of amending the application to delete an
obviously ambiguous limitation in the claims. Whether or not
the claims, in their present wording, or as amended, cover two
different shades of a single colour is a hypothetical question
that is beside the point, and need not be discussed in connect-
ion with this application. We respectfully submit that this
amendment should be allowed.
...
The issue before the Board is whether or not parts 3(a) and 3(i) of the
petition for reissue of the application are acceptable under Section 50 of
the Act.
In his letter of March 14, 1983 responding to the Final Action, the Applicant
considered the only issues were whether or not several paragraphs of the
petition for reissue are allowable. Since then discussion between the Applicant
and the Examiner has narrowed those paragraphs to two paragraphs, (a) and (i)
of part (3) of the petition. At the Hearing Mr. Morrow felt these two para-
graphs were th a only subject matter to be resolved, noting all other aspects
of the petition had been approved by the Examiner or, alternately, portions of
the rejection had been withdrawn. He stated that the patentee deams the
term "at least" in the claims to be limited to three colors, and now desires
that the meaning of "at least" should be interpreted to permit the meaning
that more than three colors may be found in any sequence of four bars even
though the disclosure in one area does not read that way. He says the
Applicant deams there is nothing specific that would exclude more than three
colors in the disclosure. At the Hearing the Board asked whether there may
be indefiniteness in the claim wording because one part of one claim covers
more than three colors, and another part of the same claim seems to be
directed only to three colors. The agent said that problem of claiming has
been cured since the Examiner is no longer pursuing that kind of objection
to the claims. The agent stresses that Applicant seeks to cure the disclos-
ure. He reasons no patent attorney would use a different term in the
disclosure to describe the same feature at two different places.
At the Hearing considerable discussion took place with respect to Section
50 of the Patent Act. As this section contains no provision to amend the
petition, any failure in the petition is a basis for refusal of the reissue.
In the situation before us the Examiner has viewed parts of the petition as
acceptable and other parts as improper. Our concern is whether or not the
petition is acceptable. If it fails to comply with what is required by
Section 50 then the application for reissue is improper.
In general terms the agent agreed with the Board on this point, but he said
he did not come prepared to deal with that Kind of rejection i.e. a rejection
of this petition, because as he understood the rejection there were only two
outstanding differences to be resolved, between the Applicant and the Examiner,
parts (a) and (i), above. Mr. Morrow urged that if the error, accident or mistake
was made by the patent attorney and not the inventor himself, and if the
Commissioner is satisfied the facts stated in the petition are not at variance
with that is sought to be corrected, no impediment to reissue should exist.
In this case, he points out some amendments met with approval by the Examiner,
while others did not and have been withdrawn. He referred to the prosecution
of the original application, noting that preoccupation by the patent attorney
with the prior art to distinguish the claims therefrom caused the errors.
Mr. Morrow said the amendments now sought relate to technicalities of
crafts~~ship and in his view the original attorney did not turn his mind to
specification drafting.
It appears that the Examiner did not maintain his initial rejection of cer-
tain parts of the petition, and we will not deal with them, although we
think what is significant in our view is the Notice to the Patent Procession
published in the Patent Office Record of July 22, 1969 p.vii and viii.
There the Commissioner notes that no amendments, other than typographical,
will be permitted to parts (3), (4), (5) of petitions for reissues and
comments that if the facts in these parts of the petition proved to be in-
correct the only way to make correction would be to file a completely new
application for reissue (if time permits) and pay new fees. The Notice reads:
NOTICE TO THE PATENT PROFESSION
Petitions For Reissue
In filing an application to reissue a patent, a petition in
Form 10 is to be completed. In this petition the petitioner in-
dicates in parts (3), (4), & (5) pertinent data supporting the
reasons why a reissue patent should be granted.
Applicants are advised that once a petition to reissue has
been filed, no amendments will be entertained relating to parts
(3), (4) & (5) of the form, other than the correction of simple
typographical errors obvious from the document itself. where
necessary it is permissible to file additional evidence supporting
the facts presented in the petition, but they may not be added to
the petition itself.
If the facts presented in the parts (3), (4) & (5) of the
first petition subsequently prove to be incorrect, the only way to
make correction will be to file a completely new application for
reissue (if time still permits) and to pay new fees.
During the Hearing we commented on the letters Applicant submitted during
prosecution leading to the issue of the original application. We believe an
awareness of what occurred during its prosecution is important in consider-
ing the rejection of parts 3(a) and 3(i) of this petition. In the original
prosecution, after a first notice of allowance on March 12, 1976, two
amendments after allowance, a supplement to an amendment after allowance,
and a voluntary amendment were submitted. On August 23, 1976 the case was
withdrawn from allowance. Then an action w as written citing art and two
responses were submitted before the case was allowed a second time on
February 1, 1977. Following this, another amendment after allowance was
filed, a change of inventorship was recorded, and the patent issued June 14,
1977. During all this prosecution the term "different and unlike" was
retained. At the Hearing it was suggested that where an agent makes an
error, a plea of accident, inadvertence or mistake may be made describing
how the error arose; and we enquired if in this case there might be bad judge-
rent involved leading to the error rather than accident, inadvertence or
mistake. Mr. Morrow said that in a proper circumstance where bad judgement
has been visited on an applicant, the applicant has to live with it. Mr.
Morrow feels however, this is a case where no judgement was made by the
attorney on the above term. He argues a mistake was made and it should not
be a burden on Applicant. He urges the patentee always intended to define
what he now wishes to add to the application. He emphasizes that the argument
over the prior art was the reason the previous attorney failed to consider the
technical importance of the words.
We have reflected on the very ably presented reasons by Mr. Morrow why this
reissue application should be allowed, and his opinion with respect to only
two issues being open for review, viz items (a) and (f) of part (3) of the
petition. In determining the acceptability or otherwise of these items,
we find our course of action is set by Section 50 of the Act and the Commiss-
ioner's notice to the Patent Profession. We are directed to determine if
parts 3(a) and (i) of the petition satisfy Section 50. A study of what is
said to be the invention in the original application and its prosecution must
therefore be made.
To determine what lead to the acceptance of the claims in the patent, we
refer to the original application and the argument in the letter of amendment
of December 13, 1976 during its prosecution. On page 2 of the original
application a broad aspect of the invention is said to be a business form
having a plurality of bars "...of at least three different and unlike colors,
ene of which is lighter than the other two colors." From this, we agree with
the impression that the Patentee is now said to have, namely, there are not
more than three colors specifically stated. In the last five lines of page 2
a repetitive spacing of the bars is said to be "in such manner that
the lighter color bars are spaced from each other alternately by a single
bar of one of the other colors.." Another feature is then said to be "...any
sequence of four adjoining bars included bars of at least three different
colors..". We note, as does Applicant, nothing specific is said about more
than three colors. Turning to page 3 a second aspect of the invention is
given, and the plurality of bars are "...of at least two colors different
and unlike each other and the color of the surface...". The color and
surface bars are spaced repetitively, as in the broad aspect, so that
"...the color bars are alternately disposed on the surface and each color
bar adjoins a surface bar on either side...". The sequence of four adjoining
bars is said on page 4 to include "..at least one surface bar and two differ-
ent color bars..", and a preferred form is given having two different colors
"..with the spacings therebetween being surface bars of bright white color
to facilitate a clear distinction of one bar from the other..." From all the
examples provided in the original application in describing the invention,
we find it is silent about more than three colors. We appreciate Applicant's
concern that it describes not more than three colors in any four bar sequence.
We turn to Applicant's letter of amendment of December 13, 1976 on the
patent file, responding to the examiner's action in which all claims had been
rejected in view of prior art. On page 3 thereof the Applicant refers to his
use of three different color bars, one of which colors is lighter than the
other two, and to his sequence of bars as an important part of the invention.
He says in that letter the arrangement is expressed in his claims, noting the
lighter color bars are spaced from each other alternatively by a single bar of
one of the other colors. He defines the sequence of bars as, light color -
X color - light color - Y color - light color - X color, et seq. He argues
as a further limitation in the claims that in "...any sequence of four
adjoining bars, there are bars of at least three different colors." He then
dismisses the prior art, referring particularly to the shortcomings of the
Eberhardt and Baskerville patents arguing they do not supply the features
that he describes on page 3. Further in that letter, his argument refers
to every other bar as being white and shows how his system cannot be found
in either of the two patents. We view the arguments at that stage as a
clear statement not only of what Applicant believed the invention to be,
but also as a deliberate attempt to show how the invention was patentable
in view of prior art. In view of Applicant's illustration of how his
system provides a four bar arrangement which uses one light color - the white
paper - as a bar not only to border each of the X and Y colors but also to
separate them, we are persuaded the sequence of the light color is not intended
to include different light colors. Moreover we find the disclosure and the
arguments are silent concerning an understanding that the light color is
intended to be alternating different light colors. We are satisfied Applic-
ant's term "at least three" is used in the sense that only three colors are
to be used in his four bar sequence, two being darker than the third which
separates the two darker colors at all times. We are not persuaded by the
arguments the Applicant advances in the prosecution of this reissue application
and by the agent during the Hearing, that an error due to inadvertence,
accident, or mistake w as made. We have an opposite view, the evidence shows
judgement was exercised to obtain the claims that were allowed in the patent.
We now turn to the information provided in Applicant's letter of July 16,
1982 during the prosecution of the reissue application. He says the attorney
prosecuting the original application did not give "...any extensive consider-
ation to the question of scope of claiming, or the scope of the invention".
From our review above, we do not share that view. Further, in determining
when the aspect now being considered occurred to the inventors, we find the
first mention occurs in the letter of July 16, 1982, wherein Applicant says
this aspect "...was not seriously considered until counsel was retained
subsequent to issuance of the patent...". This brings us to our concern
that the petition for reissue does not meet the requirements of Section 50.
In Northern Electric Co. Ltd. v Photo Sound Corp. et al (1936) SCR 651, the
court comments:
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 has 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.
Further in the letter of July 16, 1982, in referring to interviews with the
inventors, the Applicant says:
The inventors further considered that the essence of their
invention was the use of at least three colours in a business
form, where one of the three is substantially lighter than
the other two, and where the two darker colours alternate
with the lighter colour. This was the essential feature of
the invention, not disclosed in the prior art, that facilit-
ates lengthwise reading of multiple characters printed by
a business machine.
Applicant now says there are unnecessary limitations in the issued patent
which do not accord with the appreciation held by the corporate patentee.
He also argues that such an error on the part of an attorney is ground for
reissue.
With due respect we cannot sustain Applicant's arguments. We agree that an
error on the part of an attorney may be ground for reissue in a proper case.
Here we see no error caused by accident, inadvertence or mistake has occurred.
In our view the prosecution of the original shows the agent fully considered
the descriptive material and used his judgement in arguing on the basis of
that description. We note that during the original prosecution the attorneys
presented a strong argument, including detailed reasoning and explanation,
to show why the sequence of four bars using only three colors presented a
patentable invention in view of applied art. After reviewing the prosecution
of the original application and the written and oral arguments presented
in this application, we see from the evidence that only subsequent to issuance
of the patent was there consideration given to the possibility of encompassing
more than three colors in a four bar sequence. We conclude that prior to issue,
Applicant was satisfied with the wording in his claims and the scope of his
disclosure. We believe the additional matter provides the base for broadening
the scope of the claims, a base we believe was not envisaged by the inventors
nor by Applicant prior to issue. We do not find any intent in the original
application or its prosecution to claim in the manner now desired. Further,
we agree with the Examiner that deletion of "unlike" from the term "different
and unlike" broadens the coverage of the claims beyond what was originally intended.
We are satisfied from the evidence on the patent file that Applicant did not
at any time prior to issuance of the patent intend to describe the additional
matter presented for reissue. Keeping in mind the requirements of Section 50,
we have determined parts 3(a) and 3(i) of the Petition for Reissue have not
advanced acceptable reasons, nor have satisfactory arguments been advanced in
support of these parts, to enable us to find the reissue application to be
acceptable.
We recommend the application for reissue containing the scope of the subject
matter presented for reissue by parts 3(a) and 3(i) of the petition for reissue,
be refused for failing to establish clearly that the matter now sought was in-
tended to be described and claimed in the original patent.
M.G. Brown S..D. Kot
Acting Chairman Member
Patent Appeal Board
I concur with the findings and the reasoning of the Patent Appeal Board.
Accordingly, I refuse to grant a reissue patent on this application containing
the subject matter of parts 3(a) and 3(i) of the petition. The Applicant has
six months within which to appeal my decision under Section 44 of the Patent Act.
J.H.A. Gari‚py Agent for Applicant
Commissioner of Patents Smart & Biggar
Box 2999, Station D
Dated at Hull, Quebec Ottawa, Ontario
this 21 day of January 1986 K1P 5Y6