IN THE CANADIAN PATENT OFFICE
DECISION OF THE COMMISSIONER OF PATENTS
Patent application 615,585 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 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
Jane Parsons
Suite 706
45 Eglinton Avenue East
Toronto, Ontario
M4P 1A2
Patent application 615,585 (class 18-741)was tiled on 28 December
1989 in the name of Manfred A. A. Lupke and is entitled
"Extrusion Die for Externally Ribbed Plastic Tubing". This is an
application for the reissue of Canadian patent 1,258,156 which
issued on August 8, 1989. This decision deals with the
Applicant's request that the Commissioner of Patents review the
Examiner's Final Action dated March 19, 1991. A hearing before
the Patent Appeal Board, composed of Mr. Frank Adams, Chair; Mr.
Murray Wilson, member and Mr. Tom Virany, member was held on
January 22, 1992. Mrs. Jane Parsons represented the applicant at
the hearing.
The reissue application relates to an extrusion die for
externally annularly ribbed seamless plastic tubing. The die has
an elongated nozzle within which a hollow mandrel is placed to
define an annular extrusion orifice. A portion of the orifice is
conical in shape with the angle of the cone being more than 45·
from the longitudinal axis of the nozzle in order to ensure that
the mould cavities which correspond to the annular ribs are
efficiently filled with extruded material.
Figure 1 of the application shows the applicant's extrusion die.
<IMG>
The applicant's extrusion die comprises an elongated extrusion
nozzle 2 which is located coaxially about an elongated mandrel 3
to define an annular channel 34. The downstream end of the
elongated extrusion nozzle carries a funnel shaped member 46 and
it forms a diverging exit channel 48 with exit mandrel 17.
Extrudate enters the die, is forced through the annular channel
and the exit channel and enters travelling mould 32 which is made
of two conveyors of cooperating mould blocks 28 which come
together to form a mould tunnel. The exit channel is generally
cone shaped, with the generatrix of the cone forming an angle of
more than 45· with the longitudinal axis of the exit mandrel.
In part 3 of the Petition for Reissue, Applicant states that the
description and specification of his patent are insufficient in
that the language of the disclosure and claims contains errors
and ambiguities which obscure the intended meaning of the claims
and certain parts of the disclosure. More specifically, the
Applicant stated:
"....claim 1 of the patent No. 1,258,156 included the
following limitations: "an extrusion head having a
central bore with a lateral opening for receiving an
extrudate of a thermoplastic material under pressure
therefrom,".
This limitation is directed to the lateral input of
extrudate to the extrusion head upstream of the nozzle.
The application was intended to be general as to the
arrangement of extrusion head and extrusion die, the
invention lying in the exit angle of the extrusion
nozzle. This limitation is directed to the direction
of input of the extrudate, that is, "lateral" input,
whereas the invention disclosed in the patent and
contemplated by the inventor is operable with all
conventional arrangements including both axial and
lateral direction of input.
Moreover the claims were limited to an extrusion die
where clearly the whole tube producing apparatus is
contemplated with or without the specific mould tunnel
and smoothing plug for the inner wall.
The description to the drawings is too succinct and
insufficiently explanatory and is possibly misleading
due to unintended ambiguities introduced by the
unskilled draftsman to whom English is a second
language.
Especially the disclosure is contradictory in
indicating on page 3 that it is the whole invention
which is illustrated in the drawing while page 6
indicates that it is only an exemplary embodiment."
In part 4 of the petition, the Applicant gives details of how the
error arose. The inventor disclosed the invention to Mr.
Fishgal, who was employed by the inventor to assist in connection
with obtaining patents. It is noted that Mr. Fishgal is
identified as Mr. Seymor Fishgal in some places and as Mr. Seymon
Fishgal in others. Mr. Fishgal was not a registered patent
agent, however, he had some knowledge of patent matters. Because
the inventor's native tongue is German and Mr. Fishgal's native
tongue is Russian, neither appreciated that Claim 1 contained at
least one limitation which was not essential to the definition of
the invention.
Part 5 of the petition outlines the events that led to the filing
of a reissue application as follows:
In August 1988, the inventor dispensed with the
practice of employing unqualified patent assistances
(sic). As substantive matters arose on pending cases
they were put into the care of a Registered Patent
Agent. However, no substantive matters arose
concerning the Canadian patent application which has
now issued as Canadian Patent No. 1,258,156. When the
final fee became due it was paid. After allowance of
the Canadian application and payment of the final fee
the inventor became aware of a competitor whom he
believed to be providing an extrusion die according to
his invention. The inventor consulted Jane Parsons, a
Registered Patent Agent of Blake, Cassels & Graydon.
It was at this point that the inventor realized the
unintentional inclusion of the limitation of lateral
opening, which is not part of his invention.
On March 19, 1991, the examiner issued a Final Action refusing
the application for reissue on the grounds that (1) the original
patent is not defective or inoperative, (2) there was no
inadvertence, accident or mistake, (3) the applicant failed to
show that he intended to claim the invention that he is now
claiming in the reissue application and (4) that the invention
now being claimed is not described in the original patent. He
stated as follows:
Patent 1,258,156 is not inoperative as the device will
operate as described and claimed. Further applicant
does not cite inoperativeness as the reason for
reissue.
Applicant claims the patent to be defective by reason
of insufficient language in the disclosure and claims.
The insufficient language being the limitation in claim
1 (and in all other claims) of "extrusion head having a
central bore with a lateral opening for receiving an
extrudate of a thermoplastic material under pressure
therefrom".
"Insufficient description or specification" is limited
to insufficiency arising from inadvertence, accident or
mistake in describing or specifying in the original
patent the invention in respect of which the applicant
therefore intended to ask protection. 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, has no intention of describing
or specifying or claiming it in his original patent.
The original patent cannot be deemed defective in a
case where it obviously completely fulfilled the
applicant's intention - where the invention in respect
of which he intended to obtain protection is quite
certainly and sufficiently described and specified.
Therefore the patent is not defective.
Further, according to Section 47(1) of the Patent Act,
there must be "inadvertence, accident or mistake". It
is submitted there was no inadvertence, accident or
mistake.
Respective part 4 of the petition, the applicant
engaged the services of Mr. Seymon Fishgal to prepare a
patent application, being fully aware that Mr. Seymon
Fishgal was not a registered patent agent. The
engagement of Mr. Fishgal may not have been a very
sound decision, but the engagement was deliberate and
did not arise from inadvertence, accident or mistake.
In August 1988, well before the issue of Canadian
Patent 1,258,156, (issued August 8, 1989), applicant
employed the services of a Registered Patent Agent and
"no substantive matters arose concerning the Canadian
Patent application". Therefore the applicant, who now
had a registered agent, was satisfied with the
specification of the application and let it proceed to
issue.
After allowance of the application and payment of the
final fee (the exact date is not clear) applicant
became aware of a competitor. At this point applicant
became aware of the limitation of the lateral opening,
which is in all claims of the original patent, and
therefore of the limitation of the invention. From the
foregoing it is clear that the applicant only became
aware of the limitation of the invention of the
original patent because of a competitor after the
payment of the final fee and applicant did not, before
the competitor's appearance, intend to have claims
without the limitation in the original patent.
In response to the Examiner's Final Action, the Applicant
discussed each of the 4 reasons given by the Examiner for
refusing the application for reissue. The Applicant stated, in
part:
THE FIRST REJECTION
It is the Applicant's position that the Patent No.
1,258,156 is defective, and as a result may be
inoperative, for the purpose for which it was intended
due mainly to the fact that, in error, he claimed less
than he was entitled to claim and that the
specification is insufficient.
The patent is believed to be defective in that the
claims are textually constructed so that the invention
is applied only to one specific type of extrusion die
rather than to the general type for which the invention
was intended.
There is disagreement between the disclosure of Patent
No. 1,258,156 and its claims, in that the disclosure
refers to the provision of an inventive extrusion
nozzle to general apparatus such as that known and
described in, for example U.S. Patent Nos. 3,891,007,
3,998,579 and 4,365,948.
..........
THE SECOND REJECTION
The Examiner states there was no inadvertence, accident
or mistake. On the contrary, the filing and
prosecution of the application contains more than one
such inadvertence, mistake and possibly also accident.
It is alleged by the Examiner that the engagement of
Mr. Fishgal may not have been a very sound decision,
but the engagement was deliberate and did not arise
from inadvertence, accident or mistake.......
The applicant, as a prolific inventor wished to employ
a patent agent in his payroll rather than pay fees to
an outside firm patent agent. In interviewing
potential individuals for the post, he was informed by
Mr. Fishgal that Mr. Fishgal's status was not
important. The applicant employed Mr. Fishgal and, by
doing so, made a mistake. This mistake appears to be a
matter of fact rather than opinion. Thereafter, a
number of mistakes were made or inadvertence
occurred.....
While Mr. Fishgal was employed by the applicant, the
applicant at least usually signed communications to the
Patent Office himself. Nevertheless, Mr. Fishgal due
to his own allegations as to his competence and due to
the applicant's belief therein, was certainly in the
position of a patent attorney. As such his mistakes,
in addition to any personally made by the applicant,
are contributory to the defects in Patent No.
1,258,156.
THIRD REJECTION
The examiner bases his contention that the applicant
did not intend to claim the invention more broadly on
the fact that the error was not discovered until a
competitor was noticed in the marketplace. It is
contended that the time of discovery of the error is
totally irrelevant to the fact that an error was made.
The applicant has submitted evidence in the form of an
affidavit in the German language as to what his
intentions were at the time he instructed Mr. Fishgal
to file a patent application. The applicant's
statements are corroborated by the disclosure itself
which, contrary to the allegations made by the
Examiner, outlines the invention in a broad manner. For
example it states the drawback of known dies as
described in U.S. Patent Nos. 3,891,007, 3,998,579 and
4,365,948. These patents have been previously
discussed and it is reaffirmed that one of them does
not mention the orientation of the entry of the
extrudate into the die, one of them utilizes both
lateral and in-line entries, and the remaining one
mentions an in-line entry.
FOURTH REJECTION
...... apparatus without a lateral feed for extrudate
to the die has been described in that the invention is
stated to overcome the drawbacks of previously
mentioned U.S. patents. Moreover, during the
prosecution of corresponding U.S. Patent 4,712,993 in
the United States, the Examiner allowed issue of a
claim which is not limited with respect to the nature
of the entry to the die. It was, therefore clearly the
opinion of the U.S. Examiner that there was basis for
claim 4.
The issue before the Patent Appeal Board is whether or not the
Petition for Reissue of application 615,585 and the evidence
submitted present acceptable reasons for reissue under Section 47
of the Patent Act.
Examiner's Rejection 1
It is a well established principle that the reference in Section
47(1) to a patent that is "deemed defective or inoperative" does
not mean that the invention protected by the patent must be
defective or inoperative. If the invention were inoperative,
that would result in an invalid patent because of lack of
utility. Instead, it is the patent itself which is defective or
inoperative. This principle was expressed by Martland J. in
Farbwerke Hoechst Aktiengesellschaft y. The Commissioner of
Patents [1966] S.C.R. 604 at 615:
Section 50 (now Section 47) deals with a patent which is
defective or inoperative. In my opinion it contemplates the
existence of a valid patent which requires reissue in order
to become fully effective and operative.
We feel that the applicant has set forth sufficient evidence that
his original patent is defective in that the claims are
restricted to one specific type of extruder with a lateral inlet
whereas he intended to claim a device which could be used with
extruders having different types of inlets. The extrusion die is
the portion of the complete device in which the inventive
features lie and it is not specifically adapted to operate with
an extruder that has a lateral feed.
The applicant has stated that his company is in the business of
producing dies for all types of extruders. It is therefore
evident that the original patent was defective because the
patentee had restricted the claims in such a manner as to claim
less than he had a right to claim.
Examiner's Rejection 2
The Applicant has alleged that two mistakes were made during the
prosecution of the original patent application.
The first error was the employment of Mr. Fishgal to do the
applicant's patent work. Mr. Fishgal was not a patent agent and
his first language was not English. These two facts lead us to
agree that this was perhaps an error but we do not believe that
this is the type of error to which the Section 47 of the Patent
Act refers and therefore is not relevant to the situation.
The second error was the inclusion of the word "lateral" in the
claims. This appears to have been a genuine mistake and the
evidence of the applicants's corresponding United States patent
would indicate that he did not intend to be restricted to lateral
feed extruders.
As a result, we agree with the applicant that the inclusion of
the word "lateral" was an error and that this error was made
without any fraudulent or deceptive intention. There was no
discussion of the type of inlet during the prosecution of the
original patent and inlet type does not appear to have been a
significant factor in the determination of patentability.
The applicant has described the events which took place as the
original application was being prosecuted. There were changes in
personnel, language problems and a lack of understanding of the
complexities of the patent system. These factors could account
for the inclusion of the word "lateral" which the applicant would
now like to remove.
Examiner's Rejection 3
The applicant has stated that his company produces equipment
which is used with both lateral feed and axial feed extruders.
The prior art mentioned by the applicant in the disclosure
includes both of these types of extruder. There does not appear
to be any reason why the applicant would want to limit his
invention to lateral feed extruders and there do not appear to be
any technical reasons why the invention could not be used on
other types of extruders. Therefore, we feel that the applicant
did not intend to not exclude any particular type of extruder.
Examiner's Rejection 4
It appears, from a review of the prior art which the applicant
has included in the disclosure of the original patent, that there
is support in the original application for a claim which is
directed to a general type of extruder, rather than the specific
lateral feed extruder claimed in the original patent. The U.S.
patents mentioned by the applicant in the disclosure of the
original patent are directed to the manufacture of externally
ribbed plastic tubing, the same product which is made by the
apparatus disclosed and claimed in this application. These prior
patents show that this type of tubing can be produced by
extruders with either type of feed. The applicant states in the
original application that this device is an improvement over
these devices. Therefore, it is an improvement over extruders
with either a lateral or an axial feed.
From the foregoing, the Board is of the opinion that the original
patent is defective or inoperative because of the inclusion of
the word "lateral" and that the error arose from inadvertence,
accident or mistake.
As a result, we recommend that the refusal of reissue application
615,585 be withdrawn and that the application be returned to the
examiner for further prosecution.
F.H. Adams M. Wilson T.Virany
Chairman Member Member
Patent Appeal Board Patent Appeal Board Patent Appeal Board
I concur with the findings and the recommendation of the Patent
Appeal Board. The Petition for Reissue satisfies the
requirements of Section 47 of the Patent Act. Accordingly, I
remand the application to the Examiner for further prosecution.
M. Leesti
Commissioner of Patents
dated at Hull, Quebec
this 29th day of October, 1992