This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 16, 17, and 19 of application serial No. 806,753, filed March 4, 1969, for reissue of patent No. 3,308,069, granted March 7, 1967, for "Catalytic Composition of a Crystalline Zeolite." We reverse.
The invention relates to synthetic zeolites, methods of making them, and hydrocarbon cracking conversion processes using them as catalysts. Appellants' application includes claims drawn to zeolite compositions represented by the following patent claim allowed in this reissue application:
- - | XM(1 + 0.1 - X)H | A10
2YSiO 2WH 2O | - - | | n | - -
The application refers to this composition as "zeolite beta" and so will we.
Appellants' original application for the patent they seek to reissue contained claims drawn to zeolite beta, methods of preparing the zeolite, and, as will later be explained in more detail, catalytic conversion of hydrocarbons utilizing the zeolite compositions. The claims to the zeolite and the methods of making it were allowed in the original application and are reallowed here, appearing as claims 1 through 14 in the reissue application. The issue here involves process claims to the use of zeolite beta as a catalyst for the cracking of hydrocarbons. Claim 19 reads:
Claims 16 and 17 read:
The Relevant Prosecution History of the Original Application
The original application was aptly characterized by the board as containing, in addition to the composition and
The Basis for Reissue
Appellants base their claim for reissue under 35 U.S.C. § 251, as stated in the oath of the reissue application, upon the fact that
Thus, appellants' argument is that, under the law which governed the prosecution of their original application, appellants understood that the patentability of their method-of-use claims was determined by whether appellants could show the existence of unexpected or superior results in the use of the composition; and appellants, being unable to show such superior results, cancelled the claims directed to the use of the zeolite in the original application. Appellants filed the reissue application, however, because of their knowledge of what appeared to them to be unique superior properties of zeolite beta as a catalyst for cracking hydrocarbons, properties which they refer to as "inherent characteristics" of zeolite beta.
As noted by the board, the claims on appeal stand rejected on two grounds:
The Obviousness Issue
Taking the second issue first, the board agreed with the examiner that the method-of-use claims were "directed to an obvious use of the claimed aluminosilicate" in view of two patents to Plank et al.
In Kuehl, where the facts were very similar to those here, we unanimously agreed that 35 U.S.C. § 103 requires that the obviousness of a method-of-use invention is not to be determined by asking, as the board did here, whether "one of ordinary skill in this art would conclude that the crystalline aluminosilicate zeolites described and claimed herein would also be useful as catalysts for hydrocarbon conversion reactions." Utilizing the very language of our opinion in Kuehl, we find the proper application of the statutory test of § 103, as enunciated by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), and the reasons why the examiner and the board erred here, to be as follows (emphasis added):
We hold that the claims directed to the use of zeolite beta as a catalyst for the four hydrocarbon conversion reactions recited therein are unobvious from the two Plank references. While the Plank references describe, as noted by the board, "a considerable variety of known aluminosilicate zeolites and disclose their utility for hydrocarbon conversion reactions," including those reactions recited in the appealed claims, the references nowhere disclose zeolite beta. And, as we said in Kuehl, "the process `invention as a whole' includes the use of the * * * zeolite and one having no knowledge thereof would not find it obvious to crack hydrocarbons using it as a catalyst." Judging the obviousness under § 103 of the method-of-use claims in similar fashion here, we conclude that they define an unobvious contribution to
The Reissue Question
The second basis for the denial of claims to the methods of use of zeolite beta is that they are improper claims for reissue under 35 U.S.C. § 251 because appellants deliberately cancelled claims of similar scope in the prosecution of their original patent, wherefore there is no "error without any deceptive intention," within the meaning of § 251.
The original application contained claims which were directed broadly to "catalytic conversion of hydrocarbons" and also claims which were directed to three specific types of such reactions, including in particular "alkylation," "isomerization," and "polymerization." As previously noted, all such method claims were cancelled from the original application.
The main thrust of the examiner's rejection and the board opinion is to be found in the following quotation from the Examiner's Answer:
Appellants do not quarrel with the legal basis for the rejection of reissue claims under § 251 where claims "similar in scope" have been cancelled in the prosecution of the original application, but contend that the claims which were cancelled in their original application were not similar in scope to the claims on appeal, relying for authority upon three decisions by this court, In re Willingham, 282 F.2d 353, 48 CCPA 727 (1960); In re Wesseler, 367 F.2d 838, 54 CCPA 735 (1966); and In re Petrow, 402 F.2d 485, 56 CCPA 710 (1968), which broadly support the proposition that claims of a scope narrower than claims cancelled from the original application may be obtained by reissue.
The board apparently agreed with the above proposition of law, but distinguished the cases on the ground that here "the rejected claims are of substantially the same scope as those cancelled from the original application." Most of the board's opinion on this point is discussion
As noted earlier, the original application contained claims broadly drawn to the "catalytic conversion of hydrocarbons," which claims the board considered to be "generic to all catalytic conversons with the novel zeolite," including the four conversions claimed in the reissue application, and also contained claims specific to three of the four conversion reactions claimed in the appealed claims, namely, isomerization, polymerization, and alkylation, to which the appealed claims add disproportionation. The board did not feel that these differences in the form of claiming — i.e., specific claims vs. a Markush grouping — mitigated against the claims being held to be of "substantially the same scope" for application of the rule against "recapture" by reissue of previously cancelled claims.
Appellants' second reason why there is a lack of similarity in scope between the cancelled claims and the appealed claims relates to the form of the zeolite which is used in the method of the appealed claims. Appellants' brief explains their argument:
The board's view on appellants' argument relating to a difference in the claimed form of the zeolite was that the appealed claims were still of substantially the same scope as the cancelled claims. The board said:
Appellants respond to the board's argument by noting, correctly we think, that the specification shows that the catalysts of claim 2 already are at least partially in the hydrogen form, and further, that treatment may be by either calcining or ion exchange, whereas the appealed claims specifically recite only the catalyst resulting from treatment of the zeolite with a fluid medium containing hydrogen or ammonium ions. It is
A basic statement of the law was made by us in In re Willingham, supra, 282 F.2d at 357, 48 CCPA at 733 where we said:
The question here, then, is whether the difference is one "in form or substance" which, as a matter of law, will justify the allowance of the appealed claims. We believe that it is, under prior decisions of this court.
In re Petrow, supra, dealt with a very similar argument. The appellants there maintained that "the controlling feature in the present case is the fact that applicants are not attempting to recapture the same or an immaterially different claim from that cancelled * * *." In that case the applicants, during prosecution of their original application, abandoned claim 4 directed to a compound of betaine and chloral and sought through reissue to claim the identical compound in claim 10, which, however, in addition to the limitations of the cancelled claim, described the compound in more detail by reciting more of its inherent properties. Responding to the argument that under Willingham there could be no "error" justifying reissue of the patent under these circumstances, we said, 402 F.2d at 488, 56 CCPA at 713:
We think similar considerations govern the result here. While both the cancelled claims and the appealed claims may be directed to the same process, the scope of the cancelled claims was indeed broader than the scope of the appealed claims which, in more fairly fingerprinting the processes, results in claims which differ from the cancelled claims in the scope of legal protection afforded. Accordingly, we do not agree with the board that there can be no "error" within the meaning of § 251.
It is noted that part of appellants' argument has centered on In re Wesseler, 367 F.2d 838, 54 CCPA 735 (1966), where this court cast considerable doubt on the correctness of its prior statement in In re Byers, 230 F.2d 451, 454, 43 CCPA 803, 805 (1956), which reads:
In addition, in Wesseler we did state that the court in Byers "ignored the fact that the new reissue statute broadened the term `error' by not limiting it to `error' that had arisen through `inadvertence, accident or mistake'."
Appellants' argument has led us to review the legislative history of § 251 and the basis for our statement in Wesseler. We now conclude that in Byers this court was correct in noting that the substitution of "error" in § 251 for "inadvertence, accident, of mistake" did not involve a substantive change. See Federico, "Commentary on the New Patent Act," 35 U.S.C.A. p. 43. We would be hard-pressed to think of examples of situations which would be "error" and not be encompassed by one or the other of "inadvertence, accident, or mistake." "Inadvertence" and "accident" may imply something other than deliberate action, but "mistake" has a broad sweep and is certainly inclusive of actions taken in full consciousness. In Tee-Pak v. St. Regis, cited in note 6, supra, the Court of Appeals said, "a deliberate and intentional amendment to a claim may be error without deceptive intention." The primary definition of "mistake" is "to choose wrongly" (Webster's Seventh New Collegiate Dictionary).
See In re Richman, 409 F.2d 269, 56 CCPA 1083 (1969), holding there was "error without any deceptive intention" under § 251 where the reissue claims differed in scope from cancelled claims and also found, as in Wesseler, that "while appellant acted `deliberately', he did so in error."
Appellants' Unexpected Results
Part of the basis for the board's affirmance of the examiner's rejections under both sections 103 and 251 is an alleged insufficiency of appellants' showing of unexpected results of the use of their zeolite in the four hydrocarbon reactions claimed. The board found that "Even assuming that appellants have established unexpected results for isomerization it is clear that there is no sufficient showing as to disproportionation, polymerization, and alkylation." Since each member of the Markush-type grouping of reactions of the appealed claims "must be allowable individually or the whole group fails," the board, applying the law as it was before our decision in Kuehl, found the invention obvious under § 103 and, in addition, found no "error" under § 251.
As respects § 103, there is no question but that the change in the law brought about by Kuehl, particularly in its overruling of In re Saunders, 154 F.2d 693, 33 CCPA 1001 (1946), means that in applying the standards of § 103 to the appealed claims we need not consider whether appellants have established unexpected superior results in the use of zeolite beta because under Kuehl they need not show such results.
With respect to the question whether there was "error" within § 251, it is not so clear whether the unexpectedness of appellants' results must be examined. Part of the rationale of the board for the rejection under § 251, in addition to the estoppel rationale dealt with earlier, was that appellants committed no "error" by not originally pursuing the method-of-use claims since, in fact, they had no unexpected results and thus were never entitled to method-of-claims in the first place.
The parties' briefs have not dealt with the pertinent question but we have nevertheless felt obliged to deal with the matter and have concluded that since on the § 103 issue appellants would not today, after Kuehl, have to show unexpected properties, there is no basis for requiring such a showing to establish "error" within § 251. It is clear that the patentability of reissue claims is determined by application of the law which exists during the prosecution of the reissue application rather than the law at the date of issuance of the original patent, where there has been a change since then. In Rohm & Haas Co. v. Roberts Chemicals, Inc., 245 F.2d 693 (4th Cir. 1957), the court considered the validity of a reissue patent applied for more than nine years after the original patent issued to add process claims. The court noted two specific provisions of the 1952 Patent Act which were new and that the patentee's belated reissue application was to take advantage of these new provisions when he "made application for the process claims on October 24, 1952, shortly after the passage of the statute." The court said: "The reissued patent was granted on November 24, 1953, after the effective date of the statute, and we think that the validity of the reissue should be construed in light of its provisions."
Similarly in point is Ashley v. Samuel C. Tatum Co., 240 F. 979 (S.D. N.Y.1917), an infringement case upholding the validity of the first design patent ever reissued. The original patent had been obtained when the rules of the Patent Office did not permit a written description of a design in the patent, but only a drawing. The patentee had brought a prior suit on the original patent, which was held valid but not infringed because the alleged infringement, though embodying the patented design, was sufficiently ornamented so as not to resemble the patent drawing. The court noted, however, that the patentee
The decision of the board affirming the rejection of claims 16, 17, and 19 under 35 U.S.C. §§ 103 and 251 is reversed.
MILLER, Judge (concurring).
Although I am in full accord with the result reached by the majority and with most of its opinion, I cannot agree with its oblique criticism of this court's statement in Wesseler that in Byers the court "ignored the fact that the new reissue statute broadened the term `error' by not limiting it to `error' that had arisen through `inadvertence, accident or mistake.'"
In Byers, this court agreed with the board's decision, affirming the rejection of claims in a reissue application. The court said: "It is well settled that the deliberate withdrawal or amendment of a claim in order to obtain a patent does not involve inadvertence, accident or mistake and is not an error of the kind which will justify a reissue of the patent including the matter withdrawn."
In Wesseler, this court found that, while the appellant had acted "deliberately" in cancelling claims, this was "error without any deceptive intention." It reversed the board's decision affirming the rejection of claims in a reissue application.
Now the majority would revert to Byers, saying that the court was correct in its statement that:
It cites the Commentary by Federico which, discussing section 251, says:
However, the Commentary adds:
Far more relevant to the determination of legislative intent are the Committee Reports of the House of Representatives and the Senate. These state that "there are a number of changes in substantive statutory law."
A fundamental principle of statutory interpretation is that a substantial change in language is evidence that a departure from the old law was intended. Johnson v. United States, 225 U.S. 405, 32 S.Ct. 748, 56 L.Ed. 1142 (1912). Here we have a change in the phrase "by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention," to "through error without any deceptive intention." The plain meaning of the new language is that reissue will be allowed for any error, deliberate or not, except where there is "deceptive intention"; whereas, the old language allowed reissue only where there was error consisting of "inadvertence, accident, or mistake," which had been interpreted by "a large body of precedent" not to include deliberate cancellation. In re Byers, supra. It may be, as the court in St. Regis Paper Co. put it, "difficult to imagine an `error' which would not be encompassed by any of the terms "inadvertence, accident, or mistake'." However, "a large body of precedent" indicates that deliberate error (e.g. cancellation) was not encompassed by those terms. Congress is presumed to have had knowledge of the "large body of precedent." See Zemel v. Rusk, 381 U.S. 1, 85 S.Ct. 1271, 14 L. Ed.2d 179 (1965). Thus there is ample basis for the presumption that Congress intended liberalization of the reissue statute. The majority opinion falls far short of rebutting that presumption.
Even assuming, arguendo, that no substantive change was intended, if the language is clear it is conclusive. "There can be no construction when there is nothing to construe." United States v. Hartwell, 73 U.S. (6 Wall.) 385, 396, 18 L.Ed. 830 (1868). Rules of interpretation are resorted to for the purpose of resolving an ambiguity, not for the purpose of creating it. Railroad Comm. of Wisconsin v. Chicago, B & Q R.R. Co., 257 U.S. 563, 589, 42 S.Ct. 232, 66 L.Ed. 371 (1922). This court should follow the plain meaning of the language "through error without any deceptive intention," unless the words are otherwise defined by the statute. If the Congress intended no change but, nevertheless, enacted one, it is for the Congress and not the courts to rectify its "deliberate mistake."
By interpreting "mistake" to include deliberate cancellation, the majority is saying, in effect, that the "well settled" principle referred to in Byers was wrong in the first instance. It overcomes
We have studied the opinion of the board and have concluded that alleged later discovery of the superior performance of zeolite beta was not treated by the board as a reason for finding lack of "error" within the meaning of § 251. Accordingly, we do not deal with it here.