This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the rejection by the primary examiner of claims 3 and 6 of appellant's application No. 577,426, filed April 10, 1956 for reissue of his patent No. 2,674,908. The sole basis of the rejection is that appellant is precluded from obtaining the appealed claims in a reissue of his patent by reason of the substitution of claim 15 for unrejected claim 12 during the prosecution of his original application. In the opinion of the board, claim 12 included "the heart of the invention recited in claims 3 and 6."
For purposes of comparison, claim 3, which is typical of the appealed claims, and original claim 12 are reproduced below.
Appellant's device is a deep hole drill and comprises a shank having a longitudinal opening and a drill tip mounted on the shank and having a longitudinal opening communicating with the opening in the shank. The opening in the drill bit is eccentric with respect to the axis of the bit, and is large enough to include that axis. With this arrangement the rotation of the drill tip, which is provided with one or more cutting flutes, produces a hole having a solid core which is axial with respect to the bit but which is smaller than and lies within the bit opening, thus providing a longitudinal passage through which a drilling fluid may be supplied to the tip.
The issue here is whether the deletion of claim 12 from the original application and the substitution of the narrower claim 15 was due to an "error without any deceptive intention" which will permit a reissue of the patent under 35 U. S.C. § 251.
The record presented here as to the history of claim 12 in appellant's original application is extremely meager. It shows, however, that claim 12 was entered by a supplemental amendment on January 13, 1954, and was deleted and replaced by another claim by a supplemental amendment on February 10, 1954. No action by the examiner intervened between those amendments. Thus claim 12 was never rejected or otherwise acted on. The remarks which accompanied the claim when presented are not included in the record, nor are those which accompanied its deletion, except for the following paragraph:
The record does not show what prior art, if any was cited against appellant's original application or discussed at the interview which led to the substitution at the "discretion" of the examiner of claim 15 for claim 12
The reissue provisions of the Patent Act of 1952, like the reissue provisions of the earlier patent statutes, are remedial in nature. They are based on fundamental principles of equity and fairness and should be so applied to the
35 U.S.C. §§ 251, 252 was enacted to provide the present statutory basis for the granting of reissues. These provisions differ in significant respects from the prior reissue statute (R.S. 4916, 35 U.S.C. § 64). The differences pertinent to the present issue are found in section 251 which authorizes a reissue to correct a wholly or partially invalid or inoperative patent when due to "error without any deceptive intention," and if as a result of such error, the patentee has claimed less than he had a right to claim.
The present reissue provisions (35 U.S. C. §§ 251, 252), thus give statutory effect to the view expressed by Mr. Justice Brown in Topliff v. Topliff, 1891, 145 U.S. 156, 12 S.Ct. 825, 36 L.Ed. 658, as follows:
In In re Byers, 230 F.2d 451, 43 CCPA 803, we affirmed the refusal of the Patent Office to allow the reissue claims because the court found that the changes made to the original claim were deliberately and intentionally made in order to secure a patent, and held that this was not the type of "error" contemplated in section 251 as justifying a reissue.
We think the present case is distinguishable on its facts from the Byers case and is a case of the type contemplated by Congress as justifying a reissue under section 251. Applicant, due to an error in prosecuting his original patent, did not secure as broad patent protection as he appears to have been entitled to secure since claim 15 which was submitted as a substitute for claim 12 is narrower than required to properly claim applicant's invention.
The result of this error was the issuance of a patent which appellant asserts in his reissue oath is defective in "unnecessarily limiting the device to a drill having `straight' flutes, `equally' spaced flutes, and lands with `radially' positioned leading sides." There is also the assertion under oath that such error arose without fraudulent or deceptive intention on his part.
From our examination of reissue claims 3 and 6 and a comparison of these claims with deleted claim 12 of the original application and the allowed claim 15 of the original application, which became the single claim of the patent, we find that the reissue claims, while broader in scope than allowed claim 15, are somewhat narrower in scope than deleted claim 12. Reissue claims 3 and 6 are narrower than claim 12 with respect to the eccentric opening but are broader than this claim in the limitations relating to the flutes. Thus, the issue before us is not the issue presented in many reissue cases in which an applicant cancels a claim to secure the issuance of the patent and then seeks to recapture it by a claim of the same scope in a reissue application.
It remains to be considered whether such error occurred "without any deceptive intention." We are unwilling to impute a deceptive intention to the examiner in using his "discretion" to effect the deletion of claim 12 and the substitution of claim 15 therefor. This act, and not the act of appellant, is the final act which brought about the cancellation of claim 12. While we question the propriety of placing such a responsibility on an examiner, where, as here, he accepted it and acted upon it, we are bound to pass on the nature of the resulting "error" rather than upon the question of the propriety of placing this responsibility on the examiner.
Was there a deceptive intention on the part of appellant in requesting the examiner "in his discretion" to make the changes? We think not. Unfortunately the record does not reveal what occurred at the interview between appellant's attorney and the examiner. We think it proper to take judicial notice of the fact that such interviews are common and usually are conducted in the spirit of a free and open discussion as to the merits of the invention, the pertinency of the prior art and the allowability of claims. We feel certain that the interview referred to in the amendment of February 10, 1954, in the original application must have been of this type and that appellant's attorneys must as a result of the interview have been very confident of the competency of the examiner to have permitted him to use his "discretion" in deleting claim 12 and substituting claim 15 therefor. We think this reliance on the examiner's discretion was in good faith and without any deceptive intention. We are, therefore, unable to find in this entire proceeding anything which constitutes any evidence of a "deceptive
The numerous cases on reissues, cited in the brief for the Commissioner in support of the position of the board, are cases either decided under prior reissue statutes or they are cases in which it was found that the cancellation or amendment of a claim in the original patent was done deliberately and under such conditions that no "error" was present.
The substitution, as here, of a claim proper in form for a claim which is formally defective but not rejected by the examiner for this or any other reason is, in our opinion, clearly distinguishable from the typical fact situation of these prior cases. The deliberate cancellation of a claim of an original application in order to secure a patent cannot ordinarily be said to be an "error" and will in most cases prevent the applicant from obtaining the cancelled claim by reissue. The extent to which it may also prevent him from obtaining other claims differing in form or substance from that cancelled necessarily depends upon the facts in each case and particularly on the reasons for the cancellation.
In the instant case, the reasons for the deletion of claim 12 of the original application do not appear of record, and we may not properly speculate as to what they may have been and base our decision on the results of such speculation. The appealed claims differ materially from cancelled claim 12 and there is nothing of record on which to base a holding that the cancellation of claim 12 was in any sense an admission that the reissue claims on appeal were not in fact patentable to appellant at the time claim 12 was deleted.
The circumstances shown by the record are not sufficient to establish that the deletion of claim 12 was such an action as would forfeit appellant's right, by reissue, to obtain the appealed claims.
We hold specifically that the substitution of claim 15 for claim 12 in the original application was, under the circumstances of this case, an "error without deceptive intention." We therefore reverse the appealed decision.