Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE WILLIAM A. LARKIN
August 19, 1988
Application filed November 15, 1985, Serial No. 798,637, for the Reissue of Patent No. 4,496,490, granted January 29, 1985 based on application Serial No. 120,753, filed February 12, 1980; which is a Continuation-in-Part of Serial No. 043,997, filed May 31, 1979, abandoned; which is a Continuation of Serial No. 454,363, filed March 25, 1974, abandoned; which is a Division of Serial No. 343,648, filed March 22, 1973, abandoned. Non-Toxic Organotin Stabilizers for Vinyl Chloride Polymers.
Norman H. Stepno et al. for appellant
Primary Patent Examiner--Helen M.S. Sneed
Seidleck and Steiner
This is an appeal from the examiner's refusal to allow claims 5 through 21, which are all of the claims involved in this reissue application.
The claims on appeal are directed to a packaged foodstuff comprising a food grade vinyl halide polymer stabilized with a particular monoalkyltin compound.
Claim 5, the only independent claim on appeal, reads as follows:
5. A packaged foodstuff, comprising a food or beverage sealedly packaged within a shaped article packaging material which comprises a stabilized food grade vinyl halide polymer composition, said polymer composition comprising a nonhazardous effective stabilizing amount of a monoalkytin compound having the formula n-C@8H@17Sn(SCH@2COOR)@3 wherein R is a linear or branched alkyl group of 8 carbon atoms and said compound being individually devoid of such contaminants and exhibiting such acute, chronic and no-effect toxicity levels and extractability values as to satisfy FDA Toxicity Quotient criteria.
In addition, for convenience, claim 1 of the patent is reproduced below:
1. A food grade liquid organotin stabilizer for polyvinyl chloride and copolymers of vinyl chloride with copolymerizable ethylenically unsaturated compounds, wherein said stabilizer consists essentially of between 95 and 100% by weight of mono-n-octyltin compound of the general formula
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
wherein R' represents an alkyl radical containing eight carbon atoms, the remaining 0-5% of said stabilizer consisting essentially of other octyltin compounds.
The appealed claims "stand rejected under 35 U.S.C. 251 as lacking statutory basis for reissue" (Answer, page 2).
The rationale underpinning the examiner's rejection is that appellant's failure to claim a packaged foodstuff in the application upon which the patent issued does not constitute an "error" within the meaning of 35 U.S.C. 251, since there was no intent to claim the packaged foodstuff in the original application. The examiner cites In re Weiler, --- F.2d ---, 229 USPQ 673 (Fed.Cir.1986) and In re Rowand, 526 F.2d 558, 187 USPQ 487 (CCPA 1975).
*2 We have reviewed the record and applicable precedents; however, we find ourselves in agreement with the views expressed by appellant in the Brief. We shall, therefore, reverse the examiner's rejection for the reasons advanced by appellant. The following comments are added for emphasis.
The reissue statute is remedial in nature and based upon fundamental principles of equity and fairness. Accordingly, the reissue statute is to be construed liberally. In re Weiler, supra; In re Bennett, 766 F.2d 524, 226 USPQ 413, 416 (Fed.Cir.1985) (in banc). However, the reissue statute was not intended as a panacea for any problem which arose during patent prosecution or to afford a patentee the opportunity to prosecute an application a second time de novo. In re Weiler, supra, and the decisions discussed therein at 229 USPQ 677.
The requirement for an "intent to claim" has been characterized as a judicial shorthand denoting whether the requirement of the statute for "error" has been established. In order to ascertain whether an appellant had the "intent to claim," it is necessary to look to "objective indicia of intent." In re Weiler, supra; In re Mead, 581 F.2d 251, 256, 198 USPQ 412, 417 (CCPA 1978).
A review of the patent for which reissue is sought makes it abundantly clear that the entire thrust of appellant's invention is an improvement in food packaging by utilizing a particular monoalkyltin stabilizer. On pages 8 and 9 of the Brief, appellant points out where in the patent can be found objective support for the conclusion that the essence of the disclosed invention is an improvement in food packaging. In addition, the preamble of claim 1 of the patent characterizes the stabilizer as "A food grade liquid organotin stabilizer for polyvinyl chloride ..." (Emphasis supplied). The only disclosed utility of the stabilizer in the patent is for food packaging material.
The determination of whether the requisite "error" under 35 U.S.C. 251 has been established must necessarily depend upon the facts of each case. Under the facts of this particular case, it is our opinion that the food grade monoalkyltin stabilizer previously claimed is so inextricably linked to the now claimed packaged foodstuff comprising a food grade vinyl halide polymer stabilized with that particular monoalkyltin compound that appellant's failure to claim the packaged foodstuff in the original application constitutes the "error" capable of being remedied by the reissue statute. The filing of the reissue application before us would appear to be a legitimate attempt by appellant to limit the claims simply as a hedge against possible invalidity of the original claims. In re Handel, 312 F.2d 943, 136 USPQ 460 (CCPA 1963).
BOARD OF PATENT APPEALS AND INTERFERENCES
Ian A. Calvert
Arthur J. Steiner