APPLICATION OF HANDEL

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 4-6 of appellant's application Ser. No. 755,830, filed August 1, 1958, for reissue of his patent No. 2,705,797, granted April 12, 1955, for "Terminal Applicator Construction."

The sole issue in the case is whether the appealed claims are "for the invention disclosed in the original patent," as required by 35 U.S.C. § 251, the statute governing the granting of reissues. The Patent Office held they are not and appellant argues to the contrary.

The invention disclosed in the original patent1 is a machine for applying electrical terminals to pieces of wire, the terminals being fed by the machine from a reel to the point of application in continuous strips from which they are severed, as applied, one at a time. The need appellant sought to fill by his invention was for a machine capable of being variously set up to apply automatically "a considerable variety of electrical terminals or connectors." To this end, the machine, which is in the nature of a stamping press, is arranged to employ a variety of sets of matched crimping and shearing dies suited for use with the different terminals or connectors; and the feeding mechanism, which advances the strips of terminals or connectors one unit at a time, is made adjustable. Two of the more significant objects of the invention stated in the application read as follows:

It is not questioned that the specification and drawings fully describe a machine which carries out these objects.

The Claims

The Patent Office admits that appealed claims 4, 5, and 6 incorporate entirely (with the exception of changing the word "mechanism" to "machine") the language of original patent claims 1, 2, and 3 and differ therefrom in subject matter only in that each of the appealed claims adds one or two elements to the patent claim on which it is based. We quote as acceptable the solicitor's explanation:

The solicitor also states, and we agree, that the issue before us is the same as to all claims, notwithstanding their slight differences.

The Rejection

There is some confusion as to the rejection before us.

The examiner rejected the claims on two grounds: (1) "that they are drawn to the old combination of a fastener applicator and feed means," citing two references to show the combination; (2) "that the original patent was not partially inoperative and defective by reason of applicant's claiming less than he had a right to claim in his patent."2

The board reversed ground (1), saying, "we shall not sustain the rejection of claims 4, 5, and 6 on the ground that the recited combination is disclosed by either of the * * * references." That rejection is, therefore, clearly out of the case.

As to ground (2) it is necessary to recite some added facts3 before the statements of the board can be understood. It appears that at some time during the prosecution of the application for the original patent the examiner required "division" (restriction) as between claims to "1. Combination of applicator and feed; 2. Subcombination of applicator." The examiner says the applicant elected to prosecute claims to the subcombination, which resulted in the allowance of the three claims of the patent and in the issuance of the patent. In his Answer, in connection with his second ground of rejection, the examiner said:

It will thus be seen that underlying the examiner's refusal of the claims was his requirement for restriction and the applicant's election in the original application, including cancellation of nonelected claims. The board stated its understanding of the examiner's position as follows:

The board then pointed out that appellant's argument was that since the appealed claims and the nonelected claims were to distinctly different combinations he was not estopped to present the instant claims in a reissue application.

Against this background, we now quote the board's ruling on the examiner's second ground of rejection:

In view of this statement, as well as other discussion of the matter in the board's opinion, we cannot conclude otherwise than that the board rejected the entire rationale of the examiner's second rejection, which was predicated on the requirement for restriction and appellant's acceptance thereof.

The board nevertheless sustained the examiner's rejection of claims 4, 5, and 6, but on a basis never suggested by the examiner, and one which we regard, on the whole, as contrary to law. It said (emphasis ours):

On request for reconsideration the board clearly reaffirmed its position saying that its decision had been that the appealed claims are directed to "a different invention from that recited in the claims of the patent sought to be reissued." (Emphasis ours.) It also reaffirmed its finding of no intent to claim the subject matter of the appealed claims but amplified its position by stating that this finding was based on an examination of the claims presented for prosecution in the application for the issued patent.4

On the basis of the foregoing holdings in the tribunals below, we arrive at the following conclusions as to the rejection which is before us. The board clearly reversed ground (1) based on old combination. The board effectively reversed ground (2) by entirely disagreeing with the only reasoning used by the examiner to support it. The board said, however, that it was "not convinced of any fundamental error in the Examiner's position," which we can take in this context as meaning no more than that he was right in rejecting the claims. But the board substituted for the examiner's reasoning an entirely different statutory basis of its own for holding that appellant could not have claims 4, 5, and 6 in a reissue.

The examiner's reason was that appellant had not shown that he had claimed less than he had a right to claim in the original patent, a reason based on section 251 (see fn. 2, supra) coupled with an estoppel due to cancellation of nonelected claims. It appears clearly to us that the board substituted for the examiner's reasons for saying appellant had not brought himself within section 251, which reasons it rejected, entirely new reasons of its own, which were two: First, that the patent claims and the reissue claims are not for the same invention, on the basis of a comparison of both sets of claims alone; second, that looking to the patent as a whole a clear intention to claim the subject matter of the appealed claims does not appear.

We stated at the beginning of this opinion that the issue before us is whether the claims are for the invention disclosed in the patent. We say this notwithstanding the Patent Office Solicitor's opening statement in his brief that the appeal is from a decision affirming a rejection on the ground that appellant has not shown that he claimed less than he had a right to claim in his patent. Only in a very technical sense is the solicitor correct, because the examiner made such a rejection and the board held it not to be "fundamentally" in error and affirmed it. But in reality the board affirmed it only by reversing all the underlying reasoning of the examiner and substituting its own, relying on the same section of the statute but not on the same clause. The examiner's rejection was left an empty shell notwithstanding the affirmance.

It seems to us that our function is to pass only on such grounds of rejection as have not been reversed by the highest tribunal of the Patent Office. In the instant case that means that the only grounds before us are the final reasons given by the board for refusing the appealed claims. We believe the issue to be as we have stated it.

Our Opinion

The board erred in applying the wrong test to determine whether appellant's claims are for "the invention disclosed in the original patent," which is the only provision of section 251 relied on by the Patent Office. In looking only to the claims of the patent it disregarded the express command of the statute, which is to look at the disclosure. The cases relied on by the board, United States Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corporation, 315 U.S. 668, 62 S.Ct. 839, 86 L.Ed. 1105, and Parker and Whipple Company v. Yale Clock Company, 123 U.S. 87, 8 S.Ct. 38, 31 L.Ed. 100, 1887 C.D. 584, do not support its position. Although these cases were prior to the enactment of the Patent Act of 1952, which changed the words of the prior law, "for the same invention," to the words above quoted, even they stand for the proposition that the entire disclosure of the original patent is to be considered in determining what the patentee intended to claim and what invention the patent discloses.

We are constrained to agree with appellant that if the board's view were to prevail, the reissue statute would be of very little practical effect, for, by elementary principles of claim interpretation, whenever an element or other limitation is added to or taken from a claim it becomes a claim to a different invention. Yet the whole purpose of the statute, so far as claims are concerned, is to permit limitations to be added to claims that are too broad or to be taken from claims that are too narrow. That is what the statute means in referring to "claiming more or less than he had a right to claim."

The decisions of this court, both before and after the effective date of the 1952 act, are also to the effect, as stated in In re DeJarlais, 233 F.2d 323, 43 CC PA 900, 904, that "It is also well settled that the same invention means whatever invention was described in the original patent, and which appears to have been intended to be secured thereby." See In re Mayo, 129 F.2d 700, 29 CCPA 1192, and In re Murray, Jr., 64 F.2d 788, 20 CCPA 1046. In the District Court for the District of Columbia the same rule was applied in Kinnear v. Marzall, D.C., 95 F.Supp. 55. The Patent Office Solicitor admits that in these cases the courts found it sufficient to examine the specifications and claims but urges us, over several pages of brief, to "give due weight to the `division aspect' of the prosecution history of the patented application * * *." By this he apparently means the following, with which he concludes his brief:

Since the Patent Office has not seen fit to include in the record a single one of the allegedly cancelled claims we do not see how we could, even if we would, determine what appellant may have "conceded away." But this is of no moment inasmuch as the board disposed of this point and put it beyond our reach in its opinion on request for reconsideration, wherein it said:

It would appear, therefore, that appellant has been adjudged by the board never to have made a claim to the subject matter of the appealed claims or of that character. Consequently he never cancelled such a claim. It follows that the solicitor's argument is directly contradicted by the finding of the board, based, moreover, on information to which we have no access.

As for the board's holding on intent, we find it to be contrary to the clear indication of the specification of the original patent, which the board failed to take into consideration, particularly the statement of objects quoted early in this opinion. They clearly point to the subject matter of the appealed claims as part of appellant's invention, especially when read with the detailed description of the machine and its mode of operation. Since we find this to be sufficient to sustain appellant's right to claim the subject matter of the appealed claims, we find it unnecessary to consider his other arguments based on the claims of his original patent.

The decision of the board is reversed.

Reversed.