IN THE CANADIAN PATENT OFFICE
DECISION OF THE COMMISSIONER OF PATENTS
Patent applications 446,291 and 502,373 having been rejected under Rule
47(2) of the Patent Regulations, the Applicant asked that the Final Actions
of the Examiner be reviewed. The rejections have consequently been
considered by the Patent Appeal Board and by the Commissioner of Patents.
The findings of the Board and the ruling of the Commissioner are as
follows:
Agent for Applicant
Dennison Associates
133 Richmond St. West
Toronto, Ontario
M5H 2L7
COMMISSIONER'S DECISION
Filing cancelled claims, from an application where agreement was reached to claim
its allowance as a result of their cancellation, in another application under ~e
guise of divisional claims is considered unacceptable, as is the filing of such
cancelled claims in a reissue application under the pretense of inadvertence,
accident, or mistake to justify reissue. Rejection affirmed.
This decision deals with the Applicant's request that the Commissioner of
Patents review the Examiner's Final Actions, on application 446,291 for
reissue of Patent 1,131,273, and on application 502,373 for reissue of
Patent 1,171,117 which was filed as a divisional application of the
original application resulting in Patent 1,131,273. The Petitioner in each
application (identically entitled ROLL-UP TARP FOR TRAILERS) is Wahpeton
Canvas Company Inc., the original Applicant. The inventors are Jerry R.
Dimmer et al.
The Examiner in charge issued a Final Action on August 20, 1985, and May 4,
1988 respectively, refusing reissue of the patents. Although the
applications will be considered together for purposes of the review, it is
agreed by the Applicant that the decision taken will form part of the file
of each application. A Hearing covering both of them was held on July 12,
1989, Mr. F. Farfan, the Patent Agent, representing the Applicant.
Subsequent thereto, Mr. Farfan submitted a supplemental submission on July
16, 1989.
The applications disclose a roll up tarp system for covering a semi-trailer
as shown in figures 1, 4 and 5 reproduced below. The tarp is fixed at 28
and attached to tube 36 which rolls it to its position under downwardly and
outwardly canted plate 50 to prevent movement by wind. The tube, through
universal joint 44, is rolled by rod 46 and crank 48 which acts with bar 58
to secure the tarp under the plate.
(see figure I)
In refusing application 446,291, the Examiner said in part, as follows:
The number of claims in this application is 64.
The refusal of claims 14 to 64 is maintained. Claims 1 to
13 are allowable.
A reissue is an amendment which cannot be allowed unless the
imperfections in the original patent arose from
inadvertence, accident or mistake. Hence the reissue cannot
be permitted to enlarge the claims of the original patent by
removing restrictions once intentionally inserted.
Acquiescence in the amendment of a claim, either to save the
application or to escape a conflict, which narrows the scope
of the invention as it was first described and claimed
represents clear evidence of intent on the part of the
applicant and thus cannot be reversed by reissue.
Applicant should note that as a result of the interview
between the agent then representing the applicant and the
examiner, applicant agreed to include the restriction latch
plate 50 being canted outwardly and downwardly, in all
claims. A record of this interview is noted in applicant's
letter dated May 12, 1982 which forms part of the file of
C.P. 1,131,273.
Claims 14 to 64 do not include the above noted and agreed to
restriction, hence their refusal is maintained.
In response, the Applicant says its Patents 1,131,273 and 1,171,117 are
defective due to insufficient description or in claiming less than it had a
right to claim, and it requests one or more patents for the fullest
protection to which it is entitled. The Applicant argues in part:
...
In short, the invention merely requires, among other things,
a restraining means to restrain the upward movement of the
bar as it is wound up. The rolled material is not wedged
into place. It is held in tension against the restraining
means by a crank. A particular type of latch plate is not
critical to the invention.
... the Examiner has requested that the limitation be added
to include a latch plate extending outwardly and
downwardly. Thin feature is not part of the invention for
the reasons given in paragraphs 3(c) to (e) of the Petition
for Reissue. The presence of this limitation is one
essential reason for the filing of this reissue application.
...
The amendment of May 12th, 1982 in the original application
states that "[as] a result of the recommendations of the
Examiner, a number of changes have been made in the claims".
The submission then goes on to discuss a number of
amendments, including the cancellation without prejudice of
Claim 1 as then filed, which did not include the limitation
now requested by the Examiner.
... The applicant's agent made inquiries in March, 1982. On
April 20th, 1982, he filed a request for action. In May,
1982, he again made further inquiries. On about May 4th,
1982, the applicant's agent spoke on the telephone with
(the) Director of Examination ...
On about May 6th, 1982, the applicant's agent received a
telephone call from the Section Chief ... On about May 6th
or 7th, 1982, the Examiner telephoned the applicant's agent,
stating that he had some suggestions for changes to the
claims ...
Furthermore, the official action of August 20th, 1985 states
"... as a result of the interview between the agent then
representing the applicant and the examiner, applicant
agreed to include the restriction latch plate 50 being
canted outwardly and downwardly, is all claims".
The limitation requested herein by the Examiner was included
in the original application and patent by error arising from
inadvertence, accident or mistake. After the interview of
May 10th, 1982 between the Examiner and the applicant's
agent, the agent reported promptly to the instructing United
States agent by telephone. The United States agent
instructed the Canadian agent to proceed with the amendment.
The amendment was not discussed by the United States agent
with the applicant or the inventors. He thus erred in
failing to discuss the proper scope of the invention with
them. He also erred in failing to comprehend the true
nature of the invention. He also erred in failing to seek
the broadest possible protection for the invention.
The Canadian agent proceeded with the amendment on the
mistaken instructions of the United States agent. The
Canadian agent thus inadvertently incorporated the error
into the Canadian application, as described in paragraph 4
of the Petition for Reissue. Thus, the failure to include a
broad claim, unrestricted by such a limitation, was in
error, made by inadvertence, accident or mistake.
On May 12th, 1982, the amendment was filed with the
intention of filing a divisional application incorporating
the cancelled claim. It vas anticipated that any conflict
problems would be resolved is such a divisional application.
The claim was is fact included is divisional application no.
408,317 filed on July 28th, 1982. No conflict problems were
ever raised during prosecution thereof.
...
The Examiner took his Final Action on application 502,373 is part, as
follows:
...
Claims 1 to 13 of the present divisional application are
identical to the claims in the parent application now patent
1,131,273 and the subject of reissue application bearing
number 446,291. As stated previously, the applicant
considered these claims to be a different invention from the
single claim as prosecuted and issued in patent number
1,171,117. A reissue application must be for the same
invention as stated in Section 14.01 of MOPOP the last
sentence of the first paragraph. Therefore claims such as
claims 1 to 13 cannot be considered as proper claims for
reissue in this application.
In addition, the applicant is referred to Section 10.08.03
of MOPOP second last paragraph, which basically states that
the applicant cannot justify claims appearing in the
divisional application by inserting them in the parent
application after the divisional application has been filed.
Claims 1 to 64 as originally filed in this application were
never in the parent application 364,734 (with the exception
of claims 1 to 13) prior to the filing of divisional
application 408,317. The last paragraph in Section 10.08.03
of MOPOP states that if a divisional claims subject matter
at any time that had not been claimed in the parent, the
applicant is advised that the application is not entitled to
divisional status because it claims matter not claimed in
the parent. Therefore, it is concluded that the present
application contains subject latter not previously claimed
in the present application and is not entitled to divisional
status. All reference to divisional status must be deleted
from the present application.
Claims 14 to 64 as filed originally are considered to be
different inventions from the single claim as issued in
patent 1,171,117 and reference is once again made to Section
14.01 of MOPOP last sentence of the first paragraph.
It is noted that claims 1 to 64 as filed in this application
are identical to claims 1 to 64 of copending reissue
application 446,291 which is the reissue application of the
present divisional parent application.
Amended claims 14 to 54 of the present application are
considered to be directed to a different invention from the
invention as in the single claim as issued in patent
1,171,117 and cannot be considered as proper claims for
reissue as per Section 14.01 of MOPOP, last sentence of
paragraph one.
Claims 1 to 54 (with the exception of claims 1 to 13) of the
present application claim subject matter that had not been
previously claimed is the parent application (and are) not
entitled to divisional status. All reference to divisional
status must be deleted from the present application as
stated is Section 10.08.03 of MOPOP last paragraph.
With the loss of divisional status this application reverts
to an ordinary application filed February 20, 1986 and all
citations become applicable, that is Canadian Patent
1,131,273 dated September 7, 1982 corresponding to United
States Patent 4,302,043 dated November 24, 1981 and Canadian
Patent 1,132,168 dated September 21, 1982.
In item 4 of the petition for reissue the applicant states
that the patent agents failed to consult with the petitioner
and therefore failed (page 4) to claim the invention.
Effectively, the applicant states that there was
insufficient "superinvention" by the patent attorney to
provide claims as broad as they could be had. ...
Superinvention, thus depends on the skill and experience of
the claim draftsman rather than on failure to communicate
the original invention.
The Supreme Court of Canada ... in Burton Parsons v. Hewlett
Packard (1976) 1 S.C.R. 555 at 568 rejected a contention
that there was no error from inadvertence or mistake because
the error was made by the agent rather than by the
applicant, saying:
"As to the contention that there was no "error"
because whatever inadvertence or mistake happened
vas that of the patent attorneys, sot that of the
inventor himself, I can see no reason for such a
restrictive construction of the Act. On
application for extension of time, relief from
default sad the like, no court would listen to the
objection that the delay was that of the party's
attorney, not of the party himself".
But conversely, where an agent deliberately takes action,
the applicant cannot disavow what his agent has done for
him. In Bandag v. Vulcan Equipment 32 CPR (2d) (a patent
case), at 3, the Federal Court accepted as correct the
decision in Scherin v. Palette (1966) 57 D.L.R. (2d) 532 at
534, holding that:
"Where a principal gives as agent general authority
to conduct any business on his behalf, he is bound
as regards third persons by every act done by the
agent which is incidental to the ordinary course of
such business or falls within the scope of the
agent's authority".
. . .
... in Northern Electric v. Photosound, 1936, S.C.R. 649 at
652:
"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 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 relief in such a case".
Also at 653:
"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 as 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 disclosure nor specification, for
the purpose which the applicant had in view; where,
in other words, the invention is 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".
Reference is made to an American decision on reissue, viz In
re Beyers (1956) (109 USPQ 53 at 56):
... in Dobson v. Lees, 137 U.S. 258, the Supreme Court
of the United States 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 as 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 claims 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.
... The following statement from Ex parts White 1928 C.D. 6
states:
The deliberate withdrawal of a claim in order to secure
a patent is conclusive of the presumption that there has
been no inadvertence, 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.
If one looks at claim 56 as originally filed in this
application, it is quite apparent that the claim has been
broadened, as well as amended claim 37, both of these claims
appear to be rejectable in view of United States Patent
2,976,082 issued March 21, 1961 to Dahlman and which had
originally been cited in the Office Action of May 22, 1981
in the prosecution of the original parent application
bearing serial 364,734 and now issued as patent 1,131,273.
One must then conclude that the applicant is reissuing to
change the claims because the patent is being circumvented
by others, and such contention is borne out by the
litigation referred to on page 6 of the petition. Reference
is made to Section 14.08(J) of MOPOP which given an
unacceptable reason for reissue.
... reference is also made as covered by Northern Electric
v. Photo Sound, supra and at page 89 of that decision and is
particular to a passage from Robinson on Patents, Vol. 2,
page 318...
... If the idea of means had possibilities of further
development or application, which the inventor did not then
perceive, these did not enter into his actual invention. If
his idea, as already conceived and apprehended was divisible
into other ideas of means, only a part of which had been
reduced to practice, the latter alone could have constituted
his invention. If his idea presented different aspects,
capable of embodiment in essentially distinct inventions,
each of which would have formed natter for an independent
patent, the one selected by him as the subject of the patent
whose amendment is in question is the sole invention which
that patent could, if perfect, have secured. The limits of
this invention thus exclude all new developments of ideas of
means which have taken place since the original patent
issued, all ideas which were not reduced to practice before
the application for the original patent, and all distinct
and independent parts or forms of the invention which were
not embraced within the subject matter of the patent already
issued; and therefore no defect or insufficiency of
statement concerning these can render the original patent
inoperative or invalid, or furnish an occasion for its
amendment. All that it can be made to cover, by any degree
or species of correction is that completely conceived,
perceived and practically operative means for which the
inventor sought and the government then bestowed
protection. Intervening inventions, whether wholly distinct
or consisting of substantial variations or improvements on
the old, subsequently discovered attributes of the invention
or any of its parts, independent arts or instruments though
tracing their origin to the same fundamental idea, and new
matters of any kind, are equally beyond the scope of the
original patent and of any correction or enlargement of its
terms by a reissue.
. . .
The Applicant responded to the Final Action on application 502,373 in part
as follows:
The only intention of the applicant in prosecuting this
application and the parent reissue application has been to
obtain one patent of the scope to which it is entitled -- no
more and no less. The applicant has simply been seeking to
correct the various errors arising in the prosecution of
both original applications.
During the course of prosecution of the parent reissue
application, a 1981 decision of the Patent Office was
brought to the attention of the undersigned (the decision,
although believed to be unreported, was briefly noted in
Newsletter #85 of the Patent and Trademark Institute of
Canada dated September 30, 1981; a copy of the note has been
filed). The case related to Canadian reissue patent
1,101,917. In that case, two Canadian patents -- a parent
and a divisional patent - were surrendered and reissued as
one patent. In view of the precedent setting nature of that
decision, the applicant made this application and
surrendered its divisional application.
The circumstances of this case are virtually identical to
those of patent 1,101,917. The applicant has now
surrendered both its parent and divisional patents and is
seeking the same relief as granted with respect to patent
1,101,917. The facts upon which the applicant bases its
request for reissue have been fully stated in the petitions
filed. The applicant is prepared to amend either or both of
its petitions in any way requested by the Patent Office in
order to give effect to its intentions stated above.
The examiners involved is the prosecution to date of this
reissue application and of the parent reissue application
have consistently maintained that in their view the fact
that certain actions Were taken voluntarily by the
applicant's agents now precludes the granting of a reissue
patent. The applicant's position throughout has been that,
notwithstanding any voluntary aspect of any such actions,
such actions were still taken in error arising by accident,
inadvertence or mistake, thus entitling the applicant to a
reissue patent.
. . .
. . . The divisional patent is an issued patent. There is no
basis for asserting that it should lose its status as a
divisional. The application before the Examiner is a
reissue application. It is not a new application filed
February 20, 1986 and under no circumstances is there any
authority for treating it as a new application.
The only decision which the Examiner is entitled to make is
whether the criteria for reissue set forth in section 50 of
the Patent Act have been satisfied in respect of the
divisional patent. It is acknowledged that the reissue
application is subject to examination on art. However, as
referred to in paragraph 14.10.02 of MOPOP, such examination
is limited to new art which ought to have been applied (or
old art which was applied) against the original application.
No such new art has been cited or relied upon by the
Examiner.
In view of the above, it is respectfully submitted that
Canadian patents 1,131,273 (corresponding to United States
patent 4,302,043) and 1,132,168 are irrelevant to the
prosecution of this application. ...
. . .
. . . the applicant denies that it is seeking to augment
"insufficient superinvention". The fact is the invention
was fully described and exemplified in the original parent
application. The deficiencies referred to is the petitions
arose not in the disclosure of the invention, but in the
claims to the invention as fully supported by the
disclosure. The applicant's position is that claims 1 to 13
of the original parent patent and claim 1 of the original
divisional patent do not correctly claim the invention, in
that they are not of the scope to which the applicant (on
the basis of the invention described) was entitled. It is
the applicant's position that it was, and has always been,
entitled to the broader claims it now seeks because they are
fully justified and supported by the original disclosure.
It was through the errors set forth in the petitions that
such claims were not obtained in the original patents.
The Northern Electric case ... applies only to the situation
where "a patent completely fulfills the intention of the
applicant" or where "the invention in respect of which the
patentee intended to obtain protection is quite certainly
and sufficiently described and specified" (underlining
added).
. . .
The applicant also states that Bandag, also cited by the
Examiner, did not relate in any way to Section 50 and is
thus irrelevant to the issues in this application ... the
authority given by an applicant to a patent agent is to
obtain claims to the invention of the scope to which the
applicant is entitled. This is a fact of which the Patent
Office is well aware and is the very basis on which all
patent applications are prosecuted. Finally, the applicant
points out that if the Examiner's position with respect to
Bandag were to prevail, the result would be completely
contrary to the clear law laid down by the Supreme Court of
Canada ... in the Burton-Parsons case. ...
The Examiner also relies upon the United States cases In re
Beyers, Dobson v. Lees, Shepard v. Corrigan and Ex parte
White to support his contention ... If United States case
law states otherwise, then it is respectfully submitted that
such case law is not the law of Canada and has no
application in Canada.
. . .
. . . it is also pointed out that Dobson, She and and White
were all decided prior to and, obviously, without any
consideration of the Curlmaster sad Burton Parsons cases.
. . .
. . . Dahlman teaches as apparatus using a complicated
arrangement of springs to tension the tarpaulin. He
certainly does sot suggest, let alone teach, the use of any
restraining scans to prevent the winding up of the tarpaulin
to tension same. . . .
. . .
The applicant denies the contention that it is now seeking
protection for a new invention developed after the original
patents issued. The nature of what it is seeking is clearly
set out in the petitions.
. . .
The issue before the Board is whether or not the applications for reissue
of Patents 1,131,273 and 1,171,117 should be permitted to proceed. A
comparison of claim 1 in each application may be seen below:
Application 446,291 Application 502,373
A cover assembly for an
elongated body having an
elongated opening,
comprising:
a flexible covering material
having a longitudinal
dimension approximately
equal to the longitudinal
dimension of said opening
and having a lateral
dimension slightly greater (the same)
than the lateral dimension
of said opening, said
covering material having one
longitudinal edge adapted
for attachment to one
longitudinal edge of said
opening;
a bar member attached to the
other longitudinal edge of
said covering material;
crank means attached to said means (the same)
bar member for rolling said
bar member transversely of
said body for rolling or
unrolling said covering
material; and
a plate adapted for
engagement to an opposite
longitudinal edge of said (the same)
opening, said plate
being canted outwardly having a surface extending away
and downwardly
from said opening for
holding said bar sad said
material in a wedged
condition when said material
is unrolled from said bar (the see)
over said plate and
reversely rolled onto said
bar against said surface.
This decision uses the section numbering of the Patent Act is force on
December 12, 1988, whereas the Final Actions and the Applicant's responses
use that in effect before that date.
At the hearing Mr. Farfan discussed five figures purporting to show what he
describes as "rolling to tension", a page headed "Overview of the
Invention", and two pages entitled "List of Mistakes". He argues this
submission augments the information in the respective Petitions for Reissue
in the applications and sets out the scope of claim coverage originally
intended. Mr. Farfan refers to Part 5 of the 502,373 Petition for a
description of the contribution of a United States attorney, James P.
Ryther, in arriving at an appreciation of the kind of action and structure
in rolling a tarp beneath a support member to obtain a "rolling to tension"
of the tarp, in contradistinction to the limitations in Patent 1,131,273 of
a plate canted outwardly and downwardly, and a wedging of the tarp. He
points out Mr. Ryther developed the "rolling to tension" aspect from May 20
through August 1, 1982, a time period before Patent 1,131,273 issued
September 7, 1982.
Mr. Farfan argues that "rolling to tension" is possible using either a
canted or a horizontal plate, as shown by figures 2 and 4 in his
presentation, as reproduced below:
<IMG>
In each figure he says the tarp is reverse wound across the top of the
plate and down until the winding causes it to touch the underside of the
plate, and then only further wound to create a tension in the tarp, but not
to wedge it against the side of the container for example, thus achieving
the "rolling to tension". Mr. Farfan argues the limitations of a canted
plate outwardly and downwardly and the wedging of the tarp, in claim 1 of
Patent 1,131,273 as a result of the amendment made on May 12, 1982, unduly
limit the scope of the invention. Mr. Farfan says the inventors should not
be deprived of subject matter they intended to be covered, and relies on
Curl Master v. Atlas Brush (1966) Ex. C.R. 4; (1967) S.C.R. 514.
In the July 18, 1989 submission Mr. Farfan refers to the outwardly and
downwardly canted flange of the Applicant's applications compared to the
horizontal flange in the Michel patent 1,132,168. He notes the Michel
roller would rotate a fraction of a turn until the tarp was about 90.degree. to
Michel's flange to tension the roller as Michel claims. In saying there is
no material difference between Michel's claim 1 and claim 1 of Patent
1,131,273, Mr. Farfan contends the Office erred by failing to declare a
conflict involving the Applicant's applications and Michel's then pending
application.
The Board believes there is an added dimension in considering the issues in
the applications for reissue before it, additional to the direction
provided by Curl Master, supra, in which the description and the drawings
of the application were carefully looked at. The added dimension arises
from the circumstances relating to the desire by the Applicant when
prosecuting the original application to obtain a patent in Canada. In this
regard the record shows there was an urgency by the Applicant in that a
special order vas jade, followed by lengthy discussions between the
Applicant's Canadian Agent and the Examining staff in reviewing the
description and the drawings to reach as understanding of what subject
matter could be claimed and patented, culminating in the amended claim 1
that issued in Patent 1,131,273. The Curl Master case does not have this
added dimension.
The Applicant argues there was no conflict declared involving the
application leading to Patent 1,171,117, in which the broad claim,
cancelled from the application leading to Patent 1,131,273, was filed by
the Applicant as being a divisional claim. At the Hearing, the Division
Chief, who had participated in the discussions leading to that Patent,
identified that on May 10, 1982 agreement was reached With the then Agent
for an acceptable claim supportable by the description and the drawings of
the application, and of the acceptance on May 12, 1982 by the United States
representatives. The record shows amended claim 1 was filed with the
letter dated May 18, 1982, no mention included of intent to file the
cancelled claim as a divisional claim is another application. In any event
the Applicant filed a divisional application, containing as its sole claim
the cancelled claim 1, which Mr. Farfan notes was copending with the Michel
application from July 28, 1982 until September 22, 1982 when the Michel
patent issued.
Regarding the arguments re cancellation without prejudice, the broad claim
was cancelled and replaced by an amended claim to obtain Patent 1,131,273.
Concerning those that there vas no declaration of conflict involving the
application issued to Patent 1,171,117, it is observed that the Applicant's
act of removing the broad claim would then permit the Office to alloy both
this party's application and that of the other party. Indeed, the records
show the Examiner allowed the Applicant's original application 364,734 and
the Michel application on the same date May 26, 1982. From the Board's
understanding of the reasons set out in Section 14.08 of the Manual of
Patent Office Practice, to file a broad cancelled claim later as the only
claim is an application the Applicant identified as a divisional
application, in view of its previous deliberate cancellation is a dubious
way of invoking conflict proceedings.
A concern arises in determining whether the idea now presented by
Mr. Farfan by figures 1 to 5 of his presentation was perceived by the
inventor or by the pronouncement by Mr. Ryther subsequent to the involved
discussion by the Patent Agents and the Examining staff in May 1982.
Another concern relates to whether the limits of the invention said to be
covered by that pronouncement are ". . . subsequently discovered attributes
of the invention . . . beyond the scope of the original patent . . .", as found
in Robinson on Patents quoted by the Examiner from Northern Electric v.
Photo Sound, supra. A further concern stems from the deliberate amendment,
is order to obtain patent 1,131,273, that was made in May 1982, bearing in
mind the comments on reissue referred to is the United States case in re
Byers 109 USPQ 53 on page 56, column 1, originating from the United States
Supreme Court in Dobson v. Lees 137 U.S. 258, as follows:
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 at first described and
claimed; are instances of such omission.
Further discourse concerning reissue and deliberate action by an applicant
is found in re Byers column 2 page 56 in the passage from is re White
23 F. 2d 776 and Ex parte White 1928 C.D. 6:
(5) It is evident that since the deliberate cancelation 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 canceled 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 parts 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 inadvertence, 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.
Consideration by the Board of the direction provided by the above United
States jurisprudence is believed acceptable is view of the Exchequer Court
case, The Detroit Fuse and Manufacturing Co. v. Metropolitan Engineering
Co. of Canada Vol. XXI Ex. C.R. 277 at 280:
The general similarity of the patent law between the
Canadian and the American Statutes, --as stated by
Patterson, J. in Hunter v. Carrick (1), will be a
justification to seek support upon that ground from the
American authorities. In re Allen v. Culp (2) it was held
that "when a patent is thus surrendered (for a re-issue)
there can be no doubt that it continues to be a valid patent
until it is re-issued, when it becomes inoperative." See
also Walker on Patent, 3rd Ed. 214 et seq.
Moreover, the Board notes that the Supreme Court of Canada is Farbwerke
Hoechet Aktiengesellschaft Vormals Meister Lucius Bruning v The
Commissioner of Patents (1966) S.C.R. 604 at 613, compared the issue before
it with certain views expressed by the Supreme Court of the United States
in Mahn v Harwood (1884) 112 U.S. 354 at 363.
The Board reads in Part 5 of each Petition for Reissue that new facts
stated in the amended disclosure were obtained by the Petitioner June 9,
1982 and in light of them the new claims are framed. On May 20, 1982 the
Petitioner obtained Mr. Ryther, counsel, in United States litigation
between Wahpeton Canvas Co. v. Frontier, Inc. and Koffler Mfg. Inc. Civil
No. A3-82-61. From May 20 through August 1,1982 he obtained copies of the
prior art references, met with the inventors, and obtained documents of the
invention and viewed its operation. On comparing the references with the
invention disclosed, Mr. Ryther reached the conclusion the claims of the
United States Patent 4,302,043 corresponding to Patent 1,131,273, had been
too narrowly drafted. The Petition says it was apparent the improved cover
assembly could be employed with various latching mechanisms and did not
require a particular form of plate.
Consequently in or about April 1983, a review of the Canadian patent was
made, with the finding it did not sufficiently describe and claim the
features intended to be covered. The reissue application for Canadian
patent 1,131,273 was filed January 27, 1984. Part 5 of the Petition for
Reissue of patent 1,171,117 says the Petitioner desires to obtain at least
one patent with claims of the proper scope and decided therefore to
surrender Patent 1,171,117.
The Board sees from the record that Mr. Ryther's review of the Wahpeton's
Canadian Patent 1,131,273 occurred as a result of ligitigation between
Wahpeton's United States patent and the Michel patent in the United
States. In his deposition on August 3, 1983, during that litigation, Mr.
Michel says of his November 1980 working model that his pipe hooked under
an angle iron with no more excessive rolling, whereas the Wahpeton pipe
drops down and is rewound under a flange. The Board thinks these
statements may be helpful in establishing a date of first to invent, but it
does not, in the Board's view, establish what the inventors understood with
respect to the kind of features now sought by reissue of either or both of
the Canadian Wahpeton Patents. The Board recalls that claim 1 is reissue
application 446,291 is identical to claim 1 in Patent 1,131,273, and
particularly defines the crank means, the outwardly and downwardly canted
plate, and reverse rolling feature and that it was acceptable after
extensive review. The direction provided by the United States Supreme
Court in the United States decision Dobson v. Lees is significant in
assessing the terms inadvertence, accident, or mistake found in Section
47(1) of the Canadian Patent Act.
As the Exchequer Court commented in Detroit Fuse v. Metropolitan
Engineering supra, there is general similarity in the reissue provisions in
Canada and the United States and there is justification therefore in
regarding United States jurisprudence in the field of reissue.
The Board finds no jurisprudence persuasive for acceptance of the
Applicant's arguments. According to Robinson on Patents, inter alia, if
the idea of means had possibilities of further development or application
which the inventor did not then perceive or was not reduced to practice
before the application for the original patent or, if there are
subsequently discovered attributes of the invention or any of its parts,
then these are beyond the scope of the original patent and say not be
accepted in a reissue application. From jurisprudence provided by the
United States Supreme Court, reissue is not permitted in cases of
intentional omission to escape as interference procedure involving
conflicting applications.
The Board cannot overlook the fact that the claims in Patent 1,131,273
issued September 7, 1982 and were strenuously sought after as witnessed by
the good faith discussion and endeavor on the part of the Patent Agent and
the Examining staff that resulted is those claims. The Board is not
persuaded it should find acceptable the revisions to the meaning of Patent
specification 1,131,273 brought to it by Mr. Ryther subsequent to the
review by the previous Agent and the Examining staff to obtain a patent.
As stated in each Petition, Mr. Ryther was retained on May 20, 1982 as
counsel by Wahpeton in litigation in the United States involving it and
Frontier Inc. et al, and from May 20 through August 1, he obtained copies
of the prior art. No date is given in the Petitions for his conclusion
that the claims of the corresponding United States Patent 4,302,043 were
too narrowly drafted. In the Applicant's letter dated February 20, 1986 on
application 446,291 it is said a corresponding United States reissue
application wan filed September 9, 1982. According to the Petition,
Wahpeton reviewed Canadian Patent 1,131,273 in or about April 1983. The
Board sees no definite indication by the inventors at any stage that
signals their intent, either before or after the issuance of Patent
1,131,273. The Board notes that is re Application 009,562, Patent 930,656
12 C.P.R. (2d) 163 referred to by the Applicant, there was an affidavit
indicating what the inventors intended. The Board considers that case
touches only one of the points under consideration here and not all the
circumstances, and therefore does not assist the Applicant.
Is application 446,291, claims 1 to 13 are identical to the thirteen claims
in Patent 1,131,273 and are acceptable. Claims 14 to 64 are unacceptable
is that they fail to specify the features agreed upon to obtain issuance of
the above patent, namely, the crank means, the outwardly and downwardly
canted plate, and the reverse rolling, and in that they are couched is the
terms developed, during litigation of patent setter involving another
party in the United States by Wahpeton's counsel, Mr. Ryther.
Regarding application 502,373 for reissue of Patent 1,171,117, the Board is
satisfied it should not be accepted. In the Board's view, the presence of
a broad claim alone in a second filed application that was taken from a
first filed application, with no claim in the second application to say
embodiment claimed in the first filed application, does not meet the
requirements to accord divisional status to the second application. A
broad claim is the second application, by the nature of its construction,
is directed to and covers the embodiment in the first application, and if
issued later in time acts to extend the life of the first issued patent.
The Board notes that such a condition contravenes the term of a patent set
under Section 46 of the Patent Act, and transgresses the intent of Section
36(1) of the Act to issue one patent for one invention. The sole claim in
Patent 1,171,117 is directed to the combination of elements found in, but
in broader terms than, Patent 1,131,273. Claims 14 to 54 of application
502,373 are not acceptable in that they define subject matter that has not
been claimed at any time in Patent 1,171,117 nor in the original
application leading to Patent 1,131,273, and in that they are couched in
the terms developed during United States patent litigation by Wahpeton's
counsel. Further, claims 1 to 13 of application 502,373 may not be
included therein as they are identical to claims 1 to 13 in application
446,291 and which issued only in Patent 1,131,273.
The Board notes with interest the reference to the Canadian Patent
1,101,917 as identified by the Applicant in Newsletter #85 published by the
Patent and Trademark Institute of Canada.
In part 6 of that patent's Petition for Reissue it is stated:
THAT the said Patent 1,000,185 is also deemed defective.
Based on the facts given in paragraph 5 above, your
Petitioner believes that Patent 1,000,185 is defective in two
possible alternative ways. It is apparent that had the
prosecution of Application 183,360 bees given the attention
it deserved, then Application 233,639 which later matured to
Patent 1,000,185 would never have been filed, and would never
have been granted.
Further, if the request lade in this Petition for the reissue
of your Petitioner's patent 985,619 is granted either is
respect of paragraphs 3(a)(i) and (ii) above, or in full,
then your Petitioner's rights to a separate monopoly in
Letters Patent 1,000,185 for the only use to which the
apparatus disclosed and claimed in the reissue of Letters
Patent 985,619, is open to doubt. It is the belief of your
Petitioner that double patenting may then exist since these
two groups of claims both need not and should not exist in
separate Letters Patent having different dates. Without any
intent to deceive or defraud the public your Petitioner
believes that it will have obtained protection for a single
invention through these two patents for more than the 17 year
period prescribed by Section 48 of the Patent Act. Your
Petitioner believes that it is within your discretion to
accept the surrender of two patents simultaneously, even
though reissue of only one of them is being sought.
The Applicant notes the surrender of two Canadian patents was offered for
the issuance of that patent. As expressed in that Petition there was a
concern that the two groups of claims in those patents should not exist in
separate patents as they would have obtained protection for a single
invention for more than the 17 years prescribed by the Act.
Here, the set of circumstances present in the previous prosecution together
with the evidence submitted establish a situation different from that found
in the prosecution of Patent 1,101,917. It may be there is a similarity in
the concern that the Applicant's patents provide more than a 17 year period
of protection for a single invention. However, after its above review, the
Board is satisfied that no reissue of either of the Applicant's patents is
permissible. The Board notes that in Section 47 of the Act the provisions
for reissue of patents are designed to provide a new patent that contains
an acceptable amended version of the original patent, but that reissue is
not for the sole purpose of withdrawal of the original patent by surrender
without replacing it with as acceptable amended version. Section 47 reads:
(1) Whenever any patent is deemed defective or inoperative by
reason of insufficient description and specification, or by
reason of the patentee's claiming more or less than he had a
right to claim as new, but at the same time it appears that the
error arose from inadvertence, accident or mistake, without any
fraudulent or deceptive intention, the Commissioner may, on the
surrender of the patent within four years from its date and the
payment of a further prescribed fee, cause a new patent, is
accordance with an amended description and specification made by
the patentee, to be issued to him for the same invention for the
then unexpired term for which the original patent was granted.
(2) The surrender referred to in subsection (1) takes effect
only on the issue of the new patent, and the new patent and the
amended description and specification have the same effect in
law, on the trial of say action thereafter commenced for any
cause subsequently accruing, as if the amended description and
specification had been originally filed is their corrected form
before the issue of the original patent, but, is so far as the
claims of the original and reissued patents are identical, the
surrender does not affect any action pending at the time of
reissue or abate any cause of action then existing, and the
reissued patent to the extent that its claims are identical with
the original patent constitutes a continuation thereof and has
effect continuously from the date of the original patent.
(3) The Commissioner may entertain separate applications and
cause patents to be issued for distinct and separate parts of
the invention patented, on payment of the fee for a reissue for
each of the reissued patents. R.S., c.P-4, s.50.
The Board thinks the Applicant's arguments concerning misjoinder of
inventors are not helpful. As noted in M.O.P.O.P. 14.08(f) misjoinder of
inventors is not a reason for reissue. In any event, the Board is
persuaded by the factors relating to the deliberate action taken to obtain
a patent.
In summary, the Board recommends that applications 446,291 and 502,373, for
reissue of Patents 1,131,273 and 1,171,117 respectively, be refused.
M.G. Brown
Acting Chairman
Patent Appeal Board
I concur with the findings and recommendation of the Patent Appeal Board.
Accordingly, I refuse acceptance of the petitions for reissue of Patents
1,131,273 and 1,171,117 as presented in applications 446,291 and 502,373,
respectively. The Applicant has six months within which to appeal my
decision under the provisions of Section 42 of the Patent Act.
J.H.A. Gari‚py
Commissioner of Patents
Dated this 21 day of December 1989.
Hull, Quebec.
Dennison Associates
133 Richmond St. West
Toronto, Ontario
M5H 2L7