BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 EX PARTE ALPHA INDUSTRIES, INC. Appeal No. 92-0351

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)

 

*1 EX PARTE ALPHA INDUSTRIES, INC.

Appeal No. 92-0351

February 27, 1992

HEARD: February 6, 1992

 

 

 Application filed October 12, 1988, Serial No. 256,907, which is based on Reexamination Certificate issued on August 18, 1987, which in turn is based on Reexamination Certificate issued on Jan. 1, 1985, for the Reissue of Patent No. 4,108,029, granted on August 22, 1978, based on Serial No. 799,205, filed May 23, 1977. Cut-Off Die Set.

 

 

Donald L. Wood et al. for Appellant

 

 

Primary Examiner -- Hien H. Phan

 

 

Before Serota

 

 

Chairman and Vice Chairman

 

 

Pendegrass, Cohen and Staab

 

 

Examiners-in-Chief

 

 

Verlin R. Pendegrass

 

 

Examiner-in-Chief

 

 

 This is a decision on appeal from the final rejection of claims 1, 2, 3, 6, 9, 10, 11, 13 through 17, 22 and 23, all of the claims pending in the application.

 

 

 The patent upon which this reissue application is based is directed to an apparatus, termed a "cut-off die set" by the patentee, that is used to cut predetermined lengths of tubing from a rapidly moving continuous length of stock emanating from a tubing mill. In operation, the die set is clamped to the continuous length of stock, moving therewith a short distance, a notching blade is drawn across the stock, a main cut-off blade passes through the formed notch to sever the stock, the notching blade returned to its initial position, and the die set returned to a home position. A vertically reciprocating ram simultaneously initiates the action of the clamping, notching and severing mechanisms of the die set.

 

 

HISTORICAL BACKGROUND

 

 After issuance of the patent on August 22, 1978, a first reexamination request was filed June 23, 1983, and a first reexamination certificate was issued on January 1, 1985. A second reexamination request was filed on December 10, 1984, and a second reexamination certificate was issued August 18, 1987. Attached to this decision is a copy of the respective reexamination certificates. A review of the claims in the first and second reexamination certificates reveals the history of the changes of the claims of the patent.

 

 

 This reissue application was filed to correct asserted errors that were present in and that occurred during the prosecution of the application resulting in the second reexamination certificate. In the prosecution of the application that resulted in the second reexamination certificate, the appellant made specific amendments to the claims in order to overcome an Office rejection based on prior art and the examiner's requirement that a limitation, relative to the mechanism for moving the notching blade and the path of movement of the notching blade, be added to independent claim 1 so that it was not broader in any respect than claim 1 of the first reexamination certificate. More specifically, claim 1 of the second reexamination certificate was amended to recite that operation of the clamping means, cut-off blade and notching means was "simultaneously" initiated to overcome a rejection under 35 USC § 102(b) made by the Board of Patent Appeals and Interferences under the provisions of 37 CFR § 1.196(b). (Note the last italicized portion of claim 1 in the second reexamination certificate for the recitation of "simultaneously initiating.") The word "simultaneously" was added to independent method claim 13 and a new claim 17 was added which included the feature of simultaneous initiation of the clamping, notching and cutting means.

 

 

  *2 The new claim 17, added in the second reexamination application, is broader in scope than any claim confirmed in the first reexamination certificate, and we will discuss this matter in further detail below.

 

 

 We reproduce claim 1 on appeal (claim 1 is considered illustrative for purposes of discussing the primary issues on appeal) by added underlining and {((( } in the penultimate paragraph of the claim to indicate additions and deletions over the corresponding claim in the second reexamination. The amendments to the penultimate paragraph of the corresponding claim were apparently made in response to a requirement by the examiner in a telephone interview, relative to 35 USC § 305, that the claim not be broader in any respect than claim 1 of the first reexamination certificate. We have added [ ] in the last paragraph of claim 1 to indicate the deletion sought by the patent owner in this reissue application.

 

 

 1. A cut-off die set for use in an elongated stock cut-off apparatus of the type including a ram mechanism for operating said cut-off die set, said die set comprising as an integrated combination which is removable as a unit from said cut-off apparatus:

   an upper die shoe;

   a lower die shoe;

   guide means interconnecting the upper and lower shoes for reciprocal motion therebetween;

   clamping means comprising a pair of clamping jaws on said lower shoe; cam means depending from said upper shoe for directly and positively actuating said jaws as a result of motion of said upper shoe relative to said lower shoe for clamping said die set to said stock;

   a main cut-off blade, carried by said upper shoe to sever said stock after said clamping means clamps said die set to said stock;

   notching means for notching said stock periphery prior to said severing by said main cut-off blade at the point on said stock at which said severing is initiated said notching means including:

 a notching blade, slide {producing notching of said stock} for reciprocally drawing said notching blade from an initial position through a notching stroke across said stock prior to said severing of said stock by said main cut-off blade and returning {means positioning} said notching blade {in} to said initial position through the same path as the notching stroke and normally without change in attitude after said main cut-off blade has severed said stock at said notching point, {whereby said notching and return strokes of said notching blade occur before and after respectively of said severing movement of said main cut-off blade}, and actuating means mechanically connecting said slide means to said upper shoe for positively driving the slide means only in the notching stroke direction as the upper shoe descends toward said lower shoe for positively driving the slide means only in the return direction as the upper shoe ascends reciprocally away from said lower shoe,

   said cam means, said slide means and said actuating means, in combination,  [simultaneously] initiating operation of said clamping means, said main cut-off blade and said notching means in response to reciprocation of said upper die shoe toward said lower die shoe by said ram mechanism.

 

 

  *3 During the prosecution of the second reexamination application, counsel for patent owner repeatedly argued that one of the distinctions of the instant invention over the prior art (in particular, Patent No. 3,129,624 granted to Auer on April 21, 1964, a copy of which is attached to this decision), is the simultaneous initiation of the operation of the clamping means, the main cut-off blade and the notching means. To illustrate, we reproduce portions of the patent owner's arguments made in the second reexamination application:

   In short, there is no teaching in Auer or either the previous Borzym patents to support the proposition that the simultaneous initiation of all three functions in the die set is obvious. (Brief, application paper no. 25, sentence spanning pages 26 and 27.)

   Patent Owner's counsel argued in his brief and at the oral hearing that the language of claim 1 stating that the initiation of the clamping, notching and severing functions was "substantially simultaneous" distinguished the present invention from the operation of Auer....

   .... Patent Owner, therefore, intends to file a proposed amendment eliminating the word "substantially" from claim 1 thereby to place this claim in condition for confirmation by eliminating from the claim the only basis for the ongoing rejection which has been identified in the Board's Opinion. (Request for Reconsideration, application paper no. 31, pages 2 and 3.)

   Although several claims are being amended to read "simultaneously" where they previously read "substantially simultaneously," Patent Owner comprehends no substantive difference between the two phrases and the resulting claims. Patent Owner intended the word "substantially" to mean--essentially--and, given this interpretation, the claims distinguish from the Auer device in both forms. (Amendment, application paper no. 34, page 10.)

 

 

 In this reissue application, in addition to deleting the word  "simultaneously" from each of the independent claims, namely claims 1, 13 and 17, the appellant has presented two new independent claims 22 and 23 which are not only broader in scope than the claims confirmed in the second reexamination certificate, they are broader in scope than any claim confirmed in the first reexamination certificate.

 

 

THE EXAMINER'S REJECTIONS

 

 Claims 1, 2, 3, 5, 6, 8, 9, 10, 11, 13 through 17, 22 and 23 stand rejected under 35 USC § 251 as based upon a defective reissue declaration. The examiner considers the reissue declaration to be defective in that no error has been demonstrated for the following reasons: first, the appellant intentionally limited the claims by amending the claims to recite a simultaneous operation of the clamping means, the cut-off blade and the notching means in order to secure confirmation of the reexamination claims and second, the appellant is attempting to recapture subject matter intentionally canceled, In re Byers, 230 F.2d 451, 109 USPQ 53 (CCPA 1956).

 

 

  *4 Claims 1, 2, 3, 5, 6, 9, 10, 11, 13 through 17, 22 and 23 stand rejected under 35 USC § 251 as being barred by that statute's prohibition against enlarging the scope of the claims of the original patent by a reissue application filed after two years from the date of the patent grant.

 

 

 Claims 1, 2, 3, 5, 6, 9, 10, 11, 13 through 17, 22 and 23 stand rejected under 35 USC § 251 on the basis that in a reissue application that seeks to broaden claims the declaration therein must be signed by the inventor and not the assignee. The declarations in this application are signed by the assignee.

 

 

 Claim 23 stands rejected under the doctrine of res judicata. The examiner considers the scope of claim 23 to be essentially the same as claims 1, 2 and 5 of the second reexamination application, which claims were rejected by the Board of Patent Appeals and Interferences and not further contested by the patent owner.

 

 

 We refer to pages 4 through 9 of the examiner's answer for the examiner's detailed reasoning in making the above-listed rejections.

 

 

OPINION

 

 At the outset we note that the patent owner does not separately argue any specific claim, even though the reissue declarations of record specify errors in various claims. Accordingly, we will consider the patentability of all claims to stand or fall with representative claim 1. Note, In re Nielson, 816 F.2d 1567, 2 U.S.P.Q.2d 1525 (Fed.Cir.1987); In re Wood, 582 F.2d 638, 199 USPQ 137 (CCPA 1978); In re Hellsund, 474 F.2d 1307, 177 USPQ 170 (CCPA 1973).

 

 

 The patent owner does not contest the rejection of the claims based on the prohibition set forth in 35 USC § 251 [FN1], that a reissue declaration cannot be signed by an assignee where the reissue application seeks broader claims.

 

 

 Accordingly, we sustain the rejection of claims 1, 2, 3, 5, 6, 9, 10, 11, 13 through 17, 22 and 23 under 35 USC § 251 based on that statute's prohibition against an assignee signing the application papers of a broadening reissue application.

 

 

 Similarly, we sustain the rejection of claim 23 on the ground of res judicata. Even though we have reservations about the propriety of a rejection based on the doctrine of res judicata; note, In re Craig, 411 F.2d 1333, 162 USPQ 157 (CCPA 1969); In re Kaghan, 387 F.2d 398, 156 USPQ 130 (CCPA 1967); In re Herr, 304 F.2d 906, 134 USPQ 176 (CCPA 1962); and M.P.E.P. § 706.03(w) (a rejection on the ground of res judicata should be accompanied by a rejection on the basis of prior art); and even though claim 23 is different in scope than any claim in the second reexamination certificate, the appellant does not contest this rejection and, in fact, does not even mention the rejection in the brief.

 

 

  *5 Turning to the rejection of all claims on appeal under 35 USC § 251  [FN2] on the basis that a reissue application cannot be granted enlarging the scope of the claims unless it is filed within two years of the grant of the original patent, we have carefully considered the patent owner's arguments. However, we agree with the examiner that, when a reexamination certificate issues, the claims of the reexamination certificate replace the claims of the original patent and the two-year bar running from the grant of the original patent applies to the claims of a reexamination certificate.

 

 

 It is the patent owner's contention that, where claims in a reissue application are not broader that the original claims of the original patent, the two-year bar against the reissue application broadening the scope of claims in a reexamination certificate should run from the grant of the reexamination certificate, not the grant of the original patent. The patent owner urges that the issue involved is a case of first impression and that neither 35 USC § 251 nor 35 USC § 307(b) prohibits the broadening of claims of a reexamination certificate where such claims are not broader than the original claims of the original patent. It is the patent owner's position that, for the purpose of applying the two year bar, the date of the original patent should be moved up to the date of the reexamination certificate as is done with respect to intervening rights as set forth in 35 USC § 307(b). [FN3]

 

 

 While we are not unmindful of the points raised by the patent owner, the two year bar set forth in 35 USC § 251 starts from the grant of the original patent. Compare, In re Fotland, 779 F.2d 31, 228 USPQ 193 (Fed.Cir.1985); Buell v. Beckestrom, (BPAI 1992) (submitted to LEXIS on January 22, 1992, submitted to BNA for publication). [FN4] Neither 35 USC § 251 nor the reexamination statutes, 35 USC § 301, et seq., permit a reissue application to present claims broader in scope subsequent to two years from the grant of the original patent.

 

 

 Furthermore, it is reasonably clear from reading 35 USC § 307(a) [FN5] that the claims of a Reexamination Certificate replace or become the claims of the original patent except with respect to intervening rights as set forth in 35 USC § 252 and 35 USC § 307(b).

 

 

 35 USC § 305 [FN6] prohibits any amendment or new claim in a reexamination proceeding that enlarges the scope of a claim of the patent. When a reexamination certificate issues, the public is put on notice that the claims therein are of the same or narrower in scope than the patent claims. When a subsequent reexamination certificate is issued, the claims in that certificate cannot be broader than the claims in the earlier certificate. To permit a patent owner to broaden the claims in a reexamination certificate by way of a reissue application filed some ten years after the grant of the patent would vitiate the prohibition in § 305 against enlarging the scope of the patent.

 

 

  *6 Accordingly, we hold that a reissue application filed more than two years after the grant of the original patent cannot enlarge the scope of the claims in a reexamination certificate.

 

 

 It follows that we will sustain the rejection of claims 1, 2, 3, 5, 6, 9, 10, 11, 13 through 17, 22 and 23 under 35 USC § 251 based on the prohibition against enlarging the scope of the claims of the original patent after two years.

 

 

 In addressing the rejection of all claims under 35 USC § 251 on the basis that the patent owner has not shown the requisite error correctable by reissue, the patent owner attacks the rejection on two fronts: one, the position of the Office with respect to the "recapture rule" is not in line with decisions of the Court of Appeals for the Federal Circuit, and two, the patent owner was forced to submit two amendments to claim 1 of the second reexamination application, either of which would have made the claim allowable.

 

 

 The patent owner cites Black & Decker, Inc. v. Hoover Service Center, 886 F.2d 1285, 12 U.S.P.Q.2d 1250 (Fed.Cir.1989); Sun Studs Inc. v. ATA Equipment Leasing Inc., 872 F.2d 978, 10 U.S.P.Q.2d 1338 (Fed.Cir.1989); and LaBounty Mfg. Inc. v. U.S. International Trade Commission, 867 F.2d 1572, 9 USPQ 1995 (Fed.Cir.1989), for instances where the Court relieved the patentee of the effects of excessive amendments.

 

 

 Each of the cases cited by the patent owner relates to the doctrine of equivalents as applied in infringement litigation. The cases do not relate to the recapture rule. The only common element between the doctrine of equivalents and the recapture rule is that prosecution history estoppel may be present. Indeed, Black and Decker, supra, sets forth:

   Under the doctrine of prosecution history estoppel, claim amendments and arguments may preclude a patentee from recapturing what was foregone during prosecution of the patent application. Advance Transformer Co. v. Levinson, 837 F.2d 1081, 1083, 5 U.S.P.Q.2d 1600, 1602 (Fed.Cir.1988).

Ball Corp. v. United States, 729 F.2d 1429, 221 USPQ 289 (Fed.Cir.1984), bluntly sets forth:

   Thus, the applicability of the recapture rule and the sufficiency of error under section 251 turn in this case, in the absence of evidence of the patentee's intent, on the similarity between the reissue and the canceled claims. Narrower reissue claims are allowable; broader reissue claims or reissue claims of the same scope as the canceled claims are not (emphasis ours).

Also compare In re Watkinson, 900 F.2d 230, 14 U.S.P.Q.2d 1407  (Fed.Cir.1990); ex parte Morimoto, 18 U.S.P.Q.2d 1541 (BPAI 1990).

 

 

  *7 It is clear to us that the recapture rule applies to the factual situation before us. The patent owner repeatedly asserted in the prosecution of the second reexamination application, as we have noted above, that the feature of simultaneously initiating the clamping means, notching blade and cutting blade was a critical distinction between the claimed invention and the prior art. The patent owner is barred by the recapture rule from omitting the simultaneously initiating feature of the claims in this reissue application.

 

 

 With regard to the patent owner's contention that he was forced to excessively amend the claims during the prosecution of the second reexamination application, the limitation of "substantially simultaneously" initiating was clearly intentionally put in claim 1 to distinguish over the prior art. Even though the word "substantially" was dropped from the claim 1, the patent owner maintained that "simultaneously" and "substantially simultaneously" were synonymous. Adding limitations to claim 1 relative to the path of the notching blade means was a requirement necessitated by 35 USC § 305, in that the reexamination claim 1 could not be broader in scope than the previously confirmed claim 1.

 

 

 Accordingly, in our view, the amendments made to claim 1 during the prosecution of the second reexamination application were intentional or required, and no error of the type contemplated by 35 USC § 251 was committed during such prosecution.

 

 

 Quoting from In re Weiler, 790 F.2d 1576, 229 USPQ 673 (Fed.Cir.1986):

   The reissue statute was not enacted as a panacea for all patent prosecution problems, nor as a grant to the patentee of a second opportunity to prosecute de novo his original application.

and from footnote 4 of Weiler, in part:

   As indicated in the text § 251 does not authorize a patentee to re-present his application. Insight resulting from hindsight on the part of new counsel does not, in every case, establish error.

 

 

 Having concluded that there was no error in claim 1 of the second reexamination certificate with respect to the inclusion therein of "simultaneously," and having concluded that the patent owner is attempting to recapture that which was dedicated to the public in the prosecution of the second reexamination application, we will sustain the rejection of claims 1, 2, 3, 5, 6, 9, 10, 11, 13 through 17, 22 and 23 under 35 USC § 251 on the basis that the reissue declaration is defective in failing to show error.

 

 

NOTES

 

 We note that claims 17 [FN7], 22 and 23 of this application are broader than any claim in the first reexamination certificate. (In re Self, 671 F.2d 1344, 213 USPQ 1 (CCPA 1982); a claim broader in any respect enlarges the scope of the claim). Claims 17 and 23, for example, omit the limitations of "guide means interconnecting the upper and lower shoes," "clamping jaws" and "returning said notching blade through the same path as the notching stroke and normally without change in attitude" appearing in claim 1, the broadest apparatus claim, of the first reexamination certificate. Claim 22, for example, omits the steps of powering an upper component toward a lower component, driving clamping jaws directly on an upper die component and unclamping the stock, that are present in claim 13, the broadest method claim in the first reexamination certificate. Since the scope of claim 17 is prohibited by 35 USC § 305, no error in making claim 17 even broader in this reissue application can be present and the rejection of claim 17 under 35 USC § 251 is proper for this reason alone. Since claims 22 and 23 were presented in a reissue application filed more than two years after the issuance of the first reexamination certificate, claims 22 and 23 are clearly improper, even under the patent owner's theory of when the two year bar applies. The rejections of claims 22 and 23 under 35 USC § 251 could be sustained on this basis alone.

 

 

  *8 We would like to comment on the reissue declaration because the arguments in the brief do not track the asserted errors set forth therein. The paragraph numbering and page numbering of the declaration received March 13, 1991 and signed by Richard Hartman (given application paper No. 15) are so inconsistent as to make specific references thereto difficult. However, in the paragraph numbered 1 on the page numbered 3 of 5 and the paragraph numbered 1 on the added page which is unnumbered but which appears to be page 6, the declarant asserts that the word "simultaneously" is misdescriptive, and, by implication, the omission thereof corrects a potential problem under 35 USC § 112, second paragraph.

 

 

 In our opinion, the meaning of the word "simultaneously" when used to describe the initiation of the clamping means, notching means and cutoff blade is perfectly clear when the word is interpreted in light of the specification, as it must be. Note, In re Goffe, 526 F.2d 564, 188 USPQ 131 (CCPA 1976). Furthermore, any potential misunderstanding of the term could be corrected, not by making the claim broader in scope, but by specifying that even though simultaneously initiated, the cutoff blade makes its cut subsequent to the passage of the notching blade.

 

 

 The paragraph numbered 1 on what appears to be page 6 of the declaration also makes statements such as:

   Since the Board has held that a 35 USC § 103 obviousness type rejection is not available to these claims because of the proven commercial success and copying, and since claims 1 and 17, even with the "simultaneously" language removed, clearly distinguish over Auer (or any of the other known prior art), claims 1 and 17 obviously continue to be patentable.

These assertions in the declaration are based on erroneous assumptions. The prosecution history of the second reexamination application reveals that the Board of Patent Appeals and Interferences reversed a rejection under 35 USC § 103 of the claims on appeal based on the record before it. Implicit in the reversal was that the Board considered all of the evidence of record, including the scope of the claims before it, whether the claims were commensurate in scope with the evidence of nonobviousness, and whether a nexus had been established between the claimed invention and the evidence of nonobviousness. Because the Board reversed a specific rejection of specific claims, that should not be construed that any rejection under 35 USC § 103 would or should be reversed or that the claims broader in scope than those whose rejection was reversed would be allowable. Evidence of nonobviousness does not always result in rebuttal of a case of prima facie obviousness. Note, Newell Companies, Inc. v. Kenney Manufacturing Co., 864 F.2d 757, 768, 9 U.S.P.Q.2d 1417, 1426 (Fed.Cir.1988).

 

 

  *9 The fact that the Board does not enter a new ground of rejection of certain claims cannot be construed as an indication that the Board allowed such certain claims, for the Board does not allow claims; it merely decides if, based on the evidence before it, the rejection was proper or not. The Board has limited authority under 37 CFR § 1.196 to enter a rejection of the claims, make a recommendation that previously allowed claims be rejected, and make a recommendation that a claim be allowed if certain additions to the record are made. The Board is without authority to "allow" a claim. A reversal of an examiner's rejection normally results in an allowance of the claims involved. However, the examiner is not required to allow a claim where there is a change in the record of the application. The presentation of new evidence, such as newly discovered prior art, or an applicant's submission of claims broader in scope than the claims whose rejection was reversed, renders the Board's decision moot.

 

 

 Accordingly, we take exception to the patent owner's statements in the declaration relative to broader claims being allowable based on a prior decision of the Board, because such statements are based on unfounded assumptions.

 

 

 In summary:

 

 

 We sustain each of the examiner's rejections of the claims based on 35 USC § 251 and on the ground of res judicata.

 

 

 The decision of the examiner is affirmed.

 

 

 No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).

 

 

AFFIRMED.

 

 

BOARD OF PATENT APPEALS AND INTERFERENCES

 

 

Saul I. Serota

 

 

Chairman

 

 

Ian A. Calvert

 

 

Vice Chairman

 

 

Verlin R. Pendegrass

 

 

Examiner-in-Chief

 

 

Irwin Charles Cohen

 

 

Examiner-in-Chief

 

 

Lawrence J. Staab

 

 

Examiner-in-Chief

 

 

FN1. § 251. Reissue of defective patents

 

 

***

 

   The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent.

 

 

FN2. § 251 Reissue of defective patents

 

 

***

 

   No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.

 

 

FN3. § 307 Certificate of patentability, unpatentability and claim cancellation

 

 

***

 

   (b) Any proposed amended or new claim determined to be patentable and incorporated into a patent following a reexamination proceeding shall have the same effect as that specified in section 252 of this title for reissued patents on the right of the person who made, purchased, or used anything patented by such proposed amended or new claim, or who made substantial preparation for the same, prior to issuance of a certificate under the provisions of subsection (a) of this section.

 

 

FN4. A copy is attached to this decision.

 

 

FN5. § 307 Certificate of patentability, unpatentability, and claim cancellation

 

 

***

   (a) In a reexamination proceeding under this chapter, when the time for appeal has expired or any appeal proceeding has terminated, the Commissioner will issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable (emphasis ours).

 

 

FN6. § 305 Conduct of reexamination proceeding

 

 

***

 

   No proposed amended or new claim enlarging the scope of the patent will be permitted in a reexamination proceeding under this chapter.

 

 

FN7. Based on our interpretation of the breadth of claim 17, in any future prosecution of an application involving claim 17 the examiner may find it appropriate to reconsider the allowability of claim 17.

 

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