BALDWIN, Judge.
This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board) affirming the rejection
Background
1. History at the PTO
The original application, serial No. 273, filed on January 2, 1970, had 25 claims. By amendment on May 21, 1971, claims 26-46 were substituted for claims 1-25, claim 26 corresponding to original claim 1. In a second amendment, dated September 28, 1971, claims 26-46 were cancelled
Reissue application serial No. 393,539 was filed August 31, 1973. It broadened claims 1-3 of the patent, and added claims 4 and 5. In response to a rejection for an insufficient reissue declaration, the first declaration by the attorney then of record, Young, was filed on September 16, 1974, setting forth facts concerning when and how the errors
In order to continue prosecution of claims 4, 9 and 10, continuation application serial No. 572,357 (the present application) was filed August 25, 1975, including claims 1-5 from the parent application. By preliminary amendment, claim 5 was cancelled, and claims 6-10 from the reissue application added. In response to another rejection of claims 4, 9 and 10 for an insufficient reissue declaration, a second declaration of Young was filed on November 21, 1975 containing statements identical to those of the first. Claims 1-3 and 6-8 were then allowed, but claims 4, 9 and 10 were finally rejected under 35 U.S.C. § 251
Appellant argued before the board that: (1) the subject matter of claims 4, 9 and 10 was disclosed in the original patent, and the original specification is clear in its preference for the invention described in those claims; and (2) whether or not the subject matter of claims 4, 9 and 10 is directed to an invention independent and distinct from that claimed in the original patent, applicant had a right to claim the invention of the rejected claims in the original patent.
In a reply brief refused entry by the Commissioner, appellant further argued that the objective intent to make the rejected claims manifested by the original patent could not be determined from Young's after-the-fact declarations.
The board sustained the § 251 rejection in toto, finding, on the basis of Young's second declaration, that "the subject matter of the appealed claims was never intended to be claimed in the original patent but rather in a subsequent application," and therefore, the patent was not inoperative by reason of error. A double-patenting rejection based on Mead patent No. 3,995,733 was withdrawn upon a showing that the claims were not for the same invention.
2. History at this court
On appeal to this court, appellant moved to supplement the record "by insertion of his original patent No. 3,667,590 and its file history, and reissue application serial No. 393,539 (now abandoned) and its filed history * * *," In re Mead, 569 F.2d 1128, 1129, 196 USPQ 811, 812 (Cust. & Pat.App.1978), alleging " `intent to claim' was the dispositive issue before the board * *." Id. at 1130, 196 USPQ at 813. The motion was granted on the basis that those materials "were required to be `carefully studied' by the examiner," and the board, as "an integral element" of the PTO "has before it the `evidence produced before the Patent and Trademark Office.'' Id. at 1129, 196 USPQ at 812.
Appellant now argues that: (1) the original patent and its file history manifested an intent by the patentee to claim the relationship between bristle angle and vibration angle in the vibratory feeder recited in rejected claims 4, 9 and 10, and (2) the objective intent to claim that subject matter, having been manifested by the original patent and file history, is not negated by Young's later subjective declaration.
The PTO responds that: (1) the original patent and its file history, including claim 26, were not called to the attention of the examiner or the board, except in the non-entered reply brief, (2) appellant did not contest below the examiner's or the board's reliance on Young's declaration, (3) appellant's new evidence and arguments are not properly before this court, (4) cancelled claim 26 is substantially identical to claims 4, 9 and 10, and (5) the cancellation of claim 26 must be construed in light of Young's declaration as a voluntary election by appellant of the independent and distinct invention claimed in the original patent.
Issue
The issue is whether patent No. 3,667,590 is partly inoperative: (1) by reason of the patentee claiming less than he had a right to claim in the patent, and (2) through statutory error without deceptive intent.
OPINION
I
The examiner concluded that claims 4, 9, and 10 were directed an an independent and
The entire disclosure, not just the claims, is considered in determining what the patentee intended to claim and what invention the patent discloses. In re Handel, 312 F.2d 943, 948, 50 CCPA 918, 924, 136 USPQ 460, 464 (1963). A review of the record shows that the original and the appealed claims are directed to different embodiments of the invention as disclosed in the specification, not to patentably distinct inventions.
The examiner also concluded that the Young declaration negated the possibility that appellant intended to secure protection of the appealed subject matter by the original patent. Such a subjective test, based on "intent to claim," is not relevant to the determination whether appellant claimed less than he had a right to claim. The proper test is that set forth in In re Rowand, 526 F.2d 558, 560, 187 USPQ 487, 489 (Cust. & Pat.App.1975), requiring "an essentially factual inquiry confined to the objective intent manifested by the original patent." (Emphasis in original.)
The concept of "intent to claim" originated in Parker and Whipple Co. v. Yale Clock Co., 123 U.S. 87, 8 S.Ct. 38, 31 L.Ed. 100 (1887). The governing statute in that case, an infringement suit based on a reissue patent, was § 53 of the Act of July 8, 1870, c. 230, 16 Stat. 205, Rev.Stat. § 4916, which provided:
Citing Seymour v. Osborne, 78 U.S. 516 (11 Wall.), 20 L.Ed. 33 (1870), the Court stated at 123 U.S. 98-99, 8 S.Ct. 44:
Parker was cited by the Supreme Court in United States Industrial Chemicals, Inc. v. Carbide and Carbon Chemicals Corp., 315 U.S. 668, 676, 62 S.Ct. 839, 843, 86 L.Ed. 1105, 53 USPQ 6, 9-10 (1942) for the proposition that:
Thus, "intent to claim" arose from the requirement that the reissue be for the "same invention" as the original, i. e., that it cover what was "intended to have been covered" by the original. In Handel, supra, this court held that, although Parker and Carbide were decided prior to the Patent Act of 1952, which changed the wording of the reissue provision, the rule respecting consideration of the entire disclosure of the original patent remained unchanged. 312 F.2d at 948, 50 CCPA at 924, 136 USPQ at 464.
The broad premise of Carbide was cited by this court in Rowand, supra, in which appellant attempted to obtain by reissue claims to a method of making tubing, the tubing itself being the subject of the original claims. The only description of the method in the patent was one stated to be "in accordance with known practices," as "appreciated by those skilled in the art." Id. 526 F.2d at 560, 187 USPQ at 489. We stated there:
Id. at 560, 187 USPQ at 489. Thus, in Rowand and similar cases, "intent to claim" has little to do with "intent" per se, but rather is analogous to the requirement of § 112, first paragraph that the specification contain "a written description of the invention, and of the manner and process of making and using it." It is, as appellant urges, synonymous with "right to claim." The Young declaration, and appellant's arguments relating thereto, are therefore irrelevant to appellant's "right to claim."
II
The board affirmed the examiner's rejection based on Young's declaration of appellant's intent to claim the appealed subject matter in some unspecified subsequent application. Similarly, the PTO's allegations of lack of error are based on Young's declaration, which, it is argued, proves that the subject matter of the appealed claims was never intended to be claimed in the original application, and therefore there was no error within the meaning of § 251.
Appellant's attempt on appeal to discredit the Young declaration is futile. The second Young declaration was submitted to specify the facts concerning when and how the errors alleged occurred and were discovered, and was accepted for that purpose by both the examiner and the board. Appellant now cannot complain because the declaration is being used for its intended purpose.
As is clear from the record, appellant's first attorney made a conscious choice not to file a continuing application claiming the appealed subject matter of claims 4, 9, and 10 during copendency with the application that matured into patent No. 3,667,590. Had there been copendency, appellant would not be faced with the present predicament. Apparently, the later application was planned to be filed within the one year
AFFIRMED.
FootNotes
§ 251. Reissue of defective patents
Fig. 1 is a fragmentary and partially
schematic perspective view of a feeder
according to the invention * * *.
As shown in Fig. 1, a simplified,
schematic feeder 10 includes an element
SR 68-69 11 extending in the direction of feed
* * * and a vibrator or motor 12 for
vibrating element 11. * * *
* * * *
The motion applied to element 11 by
vibrator 12 can be in many different
planes * * *. Vibration in a vertical
plane works quite well, and the
plane of vibration can be satisfactorily
inclined anywhere from vertical to
horizontal, preferably in the quadrant
including or similar to the inclination
of bristles 14. [Emphasis added.]
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