This is an appeal from the decision of the Patent Office Board of Appeals affirming the rejection of claim 10 of appellants' application for a reissue patent.
The claimed invention is a novel chemical compound formed by the reaction of chloral and betaine. The description of the compound is set forth in the specification as follows:
The sole claim before us on this appeal is product claim 10, process claims having been allowed:
This claim was rejected on the ground that appellants had given up true product claims during prosecution of their original application in order to obtain a patent containing product-by-process claims, and that this abandonment of true product claims created an estoppel which prevents appellants from recapturing a true product claim by reissue.
The pertinent claim which appellants abandoned during prosecution of their original application and upon which the alleged estoppel is based was claim 4, which reads as follows:
Claim 6, as subsequently amended, is as follows:
Appellants' patent subsequently issued containing this product-by-process claim and three process claims. After issuance, appellants concluded that the product-by-process claim is not as broad a claim as they had a right to, and they filed the reissue application now before us in an attempt to obtain a true product claim.
The issue here is whether appellants committed "error" within the meaning of 35 U.S.C. § 251. Determination of that issue requires consideration of the specific question of whether the circumstances shown by the record are such as to establish that the cancellation of claim 4 was such an action as would estop appellants from obtaining, through reissue, the appealed claim. In deciding the question, it will be necessary to compare appealed claim 10 with canceled claim 4.
We think it well to state at the outset that we are guided herein by the language in In re Willingham, 282 F.2d 353, 48 CCPA 727, where this court observed:
In appealing to this court, appellants have noted the case law which holds that an applicant who has abandoned a claim is estopped from recapturing a claim of equal scope in a reissue. Appellants argue that these cases are inapplicable because the claim presented in the reissue application is of much different scope than abandoned claim 4. They argue that claim 4, listing only a melting point and an empirical formula, which is no more than an elemental analysis, does not pinpoint a specific compound because it could describe a plurality of compounds having identical melting points and empirical formulae. They contrast this with claim 10 which they say contains a sufficient recitation of properties to insure that a single compound only is encompassed within the claim. They also argue that claim 4 is clearly different from claim 10 because it is unpatentable under the tests laid down by the Board of Appeals in Ex parte Brian, 118 USPQ 242, whereas claim 10 is patentable.
In view of these arguments, it is appellants' position that:
The solicitor responds to these arguments by pointing out that the specification discloses one and only one compound. Claim 4 is therefore directed to the identical compound as is claim 10. He states that appellants' current position that claim 4 is so broad in scope as to cover other compounds is inconsistent with
It seems to us that the solicitor's argument that the claims are directed to the identical compound fails to take into consideration that section 251 requires that the patent reissue for the invention disclosed in the original patent. We feel that the fact that claim 10 recites more inherent properties of the disclosed compound than does claim 4, so as to more fairly "fingerprint" it, results, under the circumstances shown, in a claim differing in form, as contemplated by the language quoted from In re Willingham, supra, as well as presenting a claim having a different scope of legal protection. While claim 10 may be directed to the same subject matter, that is, the disclosed invention, it does not necessarily follow that the scope of legal protection afforded it is the same as that of claim 4.
Appellants' argument that claim 4 was unpatentable is apparently based upon their conclusion reached after the interview with the examiner. Unfortunately, the record does not reveal what occurred at the interview between appellants' attorney and the examiner. However, appellants' belief then that no true product claim could issue based upon this specification appears to be shared by the examiner in the instant case, as noted in his Answer:
It is significant, moreover, that claim 4 was never rejected for this reason and the board's response to the examiner's treatment of claim 10 was as follows:
The appellants erred in believing that no true product claim could issue based upon this specification. Now they have convinced the Patent Office that product claim 10 is in allowable form. We do not think there are sufficient facts in the record to base a holding that the cancellation of claim 4 was in any sense an admission that claim 10 was not in fact patentable to appellants at the time claim 4 was canceled.
We have assessed the solicitor's arguments and considered the numerous cases on reissue cited in support of the position of the board, but we feel that the substitution, as here, of a claim proper in form for a claim believed to be formally defective under 35 U.S.C. § 112 but not rejected by the examiner for this reason is distinguishable from the fact situation of these prior cases.
We hold specifically that the cancellation of claim 4 in the original application was, under the circumstances of this case, an "error" within the meaning of 35 U.S.C. § 251.
The decision of the board is reversed.