COMMISSIONER'S DECISION
Reissue: Intent of inventors was established. The disclosure was found to
support the broader claim sought. Rejection withdrawn.
This decision deals with Applicant's request for review by the Commissioner of
Patents of the Final Action on application 400,496 (Class 4-20) filed April 5,
1982, for reissue of Canadian Patent 1,072,255 granted on February 26, 1980.
It is assigned to International Water Saver Toilet Inc, and is entitled WATER
CONSERVING TOILET. The inventors are A. Hennessey sad J.D. Inch. The Examiner
in charge issued a Final Action on August 19, 1983 refusing to allow the appli-
cation.
The application relates to a water conserving toilet shown in figure 2 repro-
duced below. A first water trap 40 extends upwardly from a first waste bowl 36
to a second waste holding compartment 42 having a volume exceeding the volume
of liquid discharged from the first bowl. A second trap 44 leads from the
compartment to a sewer inlet. A flexible diaphragm 116 is fitted to the
compartment at a level above that at which liquid discharges from the bowl to
accommodate air expansion is the compartment.
(see figure I)
In part 3 of the Petition for Reissue, Applicant describes his patent protec-
tion as being unduly narrow. He sets forth the essential features of the
invention as follows:
a) a bowl for receiving waste;
b) a waste outlet extending laterally from the bowl and defining a first,
shallow trap arranged so that a relatively shallow body of liquid is
normally retained in the bowl for preventing gaseous communication
through the trap;
c) a flush system arranged, when operated, to deliver a charge of flushing
liquid into the bowl in a direction to cause the body of liquid and
waste to be discharged through the outlet;
d) an enlarged chamber communicating with the bowl outlet for receiving
waste from the bowl;
e) an outlet extending outwardly from the chamber and adapted for
connection to a sewer inlet, the chamber outlet defining a second trap
of substantial height capable of preventing reverse flow of sewer gas
into the chamber in use; and,
f) means communicating with the chamber and adapted to relieve increasing
gas pressure caused by liquid entering the chamber from the bowl, where-
by back pressure resistance to flushing of liquid from the bowl is re-
duced.
He says it was intended originally to obtain broader claims to these features.
He relates that in patent claim 1 the specific recitation of a flexible
diaphragm is only one example of a pressure relieving means, and that the
larger volume of the holding tank relative to the bowl is a non-essential
feature.
The inexperience of the inventors is said in part 4 to have resulted in a
failure to appreciate the restricted claims in the patent. The failure is
attributed to a breakdown in investor-patent agent communication. The results
of four patent searches are set out, after which the patent application was
drafted. It is said the inventors failed to appreciate the breadth of the
patent claims.
Part 5 outlines the events leading to the filing of a reissue application, on
behalf of the Petitioner, a corporation, in part, as follows
. . . other shareholders became involved and on August 12, 1981, a meeting
took place between one of these shareholders, Mr. Roland Belanger, and
Mr. David Langton of Rogers, Bereskin & Parr for the purpose of discussing
the overall patent protection relating to the toilet in view of plans by
the corporation to proceed towards the manufacture of the toilet on a com-
mercial scale in Canada and marketing both in Canada and other countries.
During the course of this meeting, the claims of the Canadian patent were
reviewed and the scope of the claims was explained to Mr. Belanger in de-
tail. At a subsequent meeting between Mr. Belanger and Mr. Langton on
October 29, 1981, Mr. Belanger instructed that a Petition for Reissue of
the Canadian patent be prepared in view of the undue limitations present in
claim 1 of the patent.
The Examiner refused the application for reissue on the ground that the evi-
dence did not establish satisfactorily the intent of the inventor prior to
issue of the petitioner's patent. He said in part, as follows:
. . .
In the latest response of July 18, 1983 no evidence at all is submitted
which substantiates that the inventors intended to have the claims worded
as presently proposed prior to the issue of the original patent. The
response sets forth the inventor-patent agent relationship wherein the
agent is given direction to obtain the best patent possible, in the words
of the response, page 2, "to obtain the broadest protection for their in-
vention to which they were entitled." It is fair to say that this sort of
arrangement applies in every case where an inventor has his application
handled by an agent. In this particular case, there is no evidence on
record which alters these normal and usual circumstances.
It is indeed unfortunate that a more useful patent may not issue to
Canadian inventors especially when the United States has issued a patent
with broader claims but jurisprudence and practice in Canada does not to
date permit us to provide a reissue patent in the present set of circum-
stances.
The petitioner is advised that parts (3), (4) and (5) of the petition for
reissue (illustrated in Form 10 of the Patent rules) may not be amended
after the petition is filed, other than to correct simple typographical
errors obvious from the document itself. Additional evidence supporting
the facts presented in the petition may be submitted to be put on file, but
not added to the petition itself. Section 50 of the Patent Act does not
provide for amendments to the petition which significantly change the
reasons for reissue....
...
In presenting reasons for acceptance of the Petition, the Applicant argues, in
part, as follows:
...
In any event, as far as it is understood, the Examiner's objection appears
to be that the record fails to show that the inventors intended to have the
claims worded as proposed in the reissue application. This requirement to
show the intent of the inventors is clearly not present in Section 50(1) of
the Patent Act and the Final Action contains no support for this position.
The Examiner, Mr. Johnstone, and his section chief, Mr. Cillis, kindly
granted applicant's agent an interview on February 15, 1984 at which time
the present application was discussed and it was pointed out to applicant's
agent that the requirement to show the inventor's intent is based on estab-
lished office practice. It is understood that this practice derives from
the decisions in Northern Electric Company limited v. Photo Sound Corpora-
tion (1936) SCR 649 and Farbwerke Hoechst v. Commissioner of Patents 50 CPR
220. However, it is respectfully submitted that the facts in the present
case may be contrasted from the facts in those two decided cases in that,
in both of those cases, the applicant for the reissue patent was attempting
to present claims of a different class than the claims appearing is the
original patent. In the Northern Electric case, the reissue claims were
directed to subject matter disclosed but not claimed in the original
patent. It should also be noted that the decision in that case was given
under the previous statute which contained no provision for reissue in a
case in which the patentee had claimed less than he had a right to claim as
new; in other words, under that statute, it was not permissible to reissue
in order to obtain broader claims. In the Hoechst case, the purpose of the
reissue was to add specific claims to a compound and a process for its
preparation in order to comply with an intervening decision by the
Exchequer Court of Canada on the interpretation of Section 41(1) of the
Patent Act. The Supreme Court found that judgment was exercised by the
patentee and a decision reached to rely upon the original process claim in
the patent and that there was therefore no mistake of the kind falling
within Section 50 of the Patent Act. The Court considered that the
patentee had deliberately elected to make a process claim in the widest
possible terms and had no intention of restricting its invention solely to
the production of a particular compound referred to in the claims sought to
be added to the reissue.
The facts in the present case are not on all fours with the facts in the
Hoechst case in that the patentee in the present case simply failed to
appreciate the scope of protection which would be afforded by the claims
originally issued in Patent No. 1,072,255.
...
In concluding, it may be of relevance for the Patent Appeal Board to be
aware that the applicant company in this case, International Water Saver
Toilet Inc. is in bankruptcy and that the assets of the corporation includ-
ing Canadian Patent No. 1,072,255 and related patents in other countries
have been transferred to Jenrob Development Limited of Belleville,
Ontario. That company is controlled by Mr. Roland Belanger, formerly
Vice-President Finance of International Water Saver Toilet Inc. Since his
involvement with International Water Saver Toilet Inc., Mr. Belanger has
made extensive efforts to promote commercialization of the invention and in
fact significant interest in the invention has been shown by a number of
manufacturing companies in Canada and by potential customers in other
countries. However, development has been hindered by internal disputes
between the shareholdes of International Water Saver Toilet Inc, which re-
sulted in the corporation being placed in bankruptcy. As a consequence of
these proceedings, the inventors are no longer co-operative with the
present owners of the invention.
. . .
The issue before the Board is whether or not the Petition for Reissue of the
application and the evidence submitted present acceptable reasons for reissue
under Section 50 of the Act. Claim 1 of the application reads:
1. A toilet which includes:
a bowl for receiving waste;
a waste outlet extending laterally from the bowl and defining a first,
shallow trap arranged so that a relatively shallow body of liquid is
normally retained in the bowl for preventing gaseous communication through
the trap;
a flush system arranged, when operated, to deliver a charge of flushing
liquid into the bowl in a direction to cause said body of liquid and waste
to be discharged through said outlet;
an enlarged chamber communicating with said bowl outlet for receiving
waste from said bowl;
an outlet extending outwardly from said chamber and adapted for connec-
tion to a sewer inlet, said chamber outlet defining a second trap of sub-
stantial height capable of preventing reverse flow of sewer gas into said
chamber is use; and,
means communicating with said chamber and adapted to relieve increasing
gas pressure caused by liquid entering the chamber from the bowl, whereby
back pressure resistance to flushing of liquid from the bowl is reduced.
Subsequent to the Final Action, the Petitioner submitted an affidavit executed
by Arnold Hennessey, one of the inventors. It identifies the particular
features, a to f, set out in part 3 of the petition. Mr. Hennessey says they
are the essential features of the invention. He writes that he and Mr. Inch,
the co-inventor, were inexperienced in patent matters and did not appreciate
their patent protection would be restricted to the features found in patent
claim 1. That claim, he points out, additionally contains (i) pressure
relieving means in the form of a flexible diaphragm, and (ii) an enlarged
second chamber and a second trap containing a substantially large volume of
liquid compared to the volume discharged from the bowl.
In assessing the merits of this application, we look to a passage given by
Maclean J. in Northern Electric Company Ltd. v Photo Sound Corporation [1936]
Ex. C.R. 75 at 89, as follows:
. . . the purpose of a re-issue is to amend an imperfect patent, defects of
statement or drawings, 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.
Martland J. referred to the above passage in Curl-Master Mfg. Co. Ltd, v. Atlas
Brush Ltd. [1967] S.C.R. 514 at 530, and also to the following reasons in
United States jurisprudence, Wilson v. Coon, Vol. 19 U.S. Off. Patent Gaz. 482:
The new patent must be for the same invention. This does not mean that the
claim in the reissue must be the same as the claim in the original. A
patentee may, in the description and claim in his original patent,
erroneously set forth as his idea of his invention something far short of
his real invention, yet his real invention may be fully described and shown
in the drawings and model. Such a case is a proper one for a reissue. A
patent may be inoperative from s defective or insufficient description,
because it fails to claim as much as was really invented, and yet the claim
may be a valid claim, sustainable in law, and there may be a description
valid and sufficient to support such claim. In one sense such patent is
operative and is not inoperative, yet it is inoperative to extend or to
claim the real invention, and the description may be defective or insuffi-
cient to support a claim to the real invention, although the drawings and
model show the things in respect to which the defect or insufficiency of
description exists, and show enough to warrant a new claim to the real in-
vention.
We see from the affidavit evidence that the inventors intended to obtain more
protection for their invention. We learn from the original application that
the holding tank and the diaphragm are of such dimensions to prevent a syphon-
ing effect when contents from the bowl are flushed to the holding tank. The
tank is said to have a volume sufficiently in excess of the bowl so that the
volume of liquid it receives from the bowl will cause the contents of the tank
merely to overflow. The flexible diaphragm functions to accommodate upward
displacement of the air in the tank when liquid is received from the bowl.
These two elements are recited in claim 1 for reissue respectively as an
enlarged chamber, and means communicating therewith to relieve increasing gas
pressure above the liquid in the tank when matter arrives from the bowl thereby
reducing resistance to flushing of wastes from the bowl. We accept the
Petitioner's arguments that broader claims are supportable by the disclosure,
and that it was the intent of the inventors to obtain claims commensurate in
scope with their disclosure.
On review of the prosecution we note no prior art-has been cited. Further, no
references were applied during the prosecution of the original application,
that application issuing without any Examiner's report being made prior to
allowance. In short, we find no impediment to the issue of a new patent
containing the claims of this application for the unexpired term of Canadian
patent 1,072,255 in view of the Petition for Reissue and the evidence before
us.
We recommend withdrawal of the refusal of the reissue application for lack of
intent to claim the invention in broader terms than the patent.
M.G. Brown S.D. Kot
Acting Chairman Member
Patent Appeal Board
I concur with the findings and recommendations of the Patent Appeal Board.
Accordingly, I remand the application for prosecution consistent with the
recommendation.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 3rd day of December 1986.
Rogers, Bereskin & Parr
P.O. Box 313
Commerce Court Postal Station
Toronto, Ontario
M5L 1G1