This appeal is from the decision of the Patent and Trademark Office Board of Appeals (board), adhered to on reconsideration, affirming the rejection of claims 5-8 in appellants' application for reissue.
Appellants filed original application serial No. 598,590 on December 2, 1966 (application I). As filed, that application contained the following: (1) claims 1-4 to compounds and a method for their preparation, and (2) dependent claims 5-8 to a color-developable coating composition, an emulsion, and a coated sheet. The coating composition, emulsion, and coated sheet all recited, as an essential component thereof, a compound of generic claim 1. The examiner required restriction between these two sets of claims, pursuant to 35 USC 121.
Upon payment of the final fee, application I matured into U.S. 3,442,908, issued on May 6, 1969.
Appellants filed serial No. 140,287 on May 4, 1971 (application II) for reissue of their patent, presenting therein the three compound claims of their patent and four additional claims substantially identical to the originally non-elected claims. In support of application II, appellants filed a
By way of explanation why patentee is "claiming less than he had a right to claim in the patent," appellants indicated that they had forgotten to timely file a divisional application covering the originally non-elected subject matter.
However, appellants timely filed the present application (application III) as a division of reissue application II, application III containing only claims 5-8, which are substantially identical to the originally non-elected claims. The examiner rejected the claims in application III on the ground that appellants have not established the requisite error to justify granting a reissue patent, 35 USC 251, para. 1.
The board held that, under the circumstances of this case, failure to file a timely divisional application cannot be corrected by reissue. Reviewing the history of application I, the board found that the prosecution thereof was entirely error-free, and the resulting patent was likewise error-free. In the board's view, the error in failing to file a timely divisional application in order to obtain a divisional patent is akin to an error in failing to file an application before a statutory bar arises. Appellants' error, the board found, cannot be related back as an error correctable by reissue. Regarding the pre-1952 cases of In re Cornell, 150 F.2d 702, 32 CCPA 1251, 66 USPQ 320 (1945), and In re Smyser, 135 F.2d 747, 30 CCPA 1093, 57 USPQ 402 (1943), as pertinent, the board held that appellants have not established the requisite error to justify granting a reissue patent.
The issue before us is whether appellants have established the requisite error under 35 USC 251, para. 1, to justify granting a reissue patent containing claims substantially identical to those originally non-elected in application I.
We are in substantial agreement with the board's analysis of this case. Although appellants undoubtedly erred by failing to file a timely divisional application in order to obtain a divisional patent, it does not follow that such error caused the original patent to be "partially inoperative by reason of the patentee claiming less than he had a right to claim in the patent" as appellants aver in their reissue declaration under 37 CFR 1.175. We agree with the board that the prosecution of application I and the patent resulting therefrom were error-free. Patentees claimed exactly what they had a right to claim in the patent, no more nor less, and appellants' failure to timely re-file does not change this fact. As the board stated, "Appellants' error cannot be related back as an error correctable by reissue of the original patent under 35 U.S.C. 251."
We further agree with the board that the pre-1952 Cornell and Smyser cases, cited supra, are pertinent. The basic facts in those two cases and the case at bar are the same. In the two older cases, we held that appellants therein were estopped from obtaining by reissue claims which, because of a requirement for restriction in which they had acquiesced, they could not claim in their patent. Having deliberately cancelled claims to non-elected subject matter, we said, appellants could not successfully contend that their failure to include such claims in their patent was due to "inadvertence, accident, or mistake" as provided in section 64 of former Title 35 (R.S. section 4916; Act of May 24, 1928, ch. 730, 45 Stat. 732).
In the case at bar, as in Cornell and Smyser, appellants acquiesced in the examiner's requirement for restriction.
Finally, granting by reissue claims substantially identical to those non-elected in application I would be ignoring the proper restriction requirement set forth in that application in which appellants acquiesced. Indeed, appellants' misapplication of section
In conclusion, we hold that appellants have not established the requisite error under 35 USC 251, para. 1, to justify granting a reissue patent containing claims substantially identical to those originally non-elected in application I. Accordingly, the decision of the board is affirmed.
§ 120. Benefit of earlier filing date in the United States.
An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States by the same inventor shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application.