Ex Parte Dinsmore et alDownload PDFPatent Trial and Appeal BoardJun 3, 201312137662 (P.T.A.B. Jun. 3, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARK T. DINSMORE and DAVID J. CARUSO ____________ Appeal 2013-006879 Application 12/137,662 Patent US 7,236,568 B2 Technology Center 2800 ____________ Before ALLEN R. MACDONALD, ROBERT E. NAPPI, and LINDA E. HORNER, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Mark T. Dinsmore and David J. Caruso (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 26-461, 1 Appellants’ argument section of the brief lists claims 26-42 as being on appeal, but the claims appendix and the table of contents also include claims Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 2 which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants’ claimed invention relates to miniature X-ray sources. US 7,236, 568 B2 (“the ‘568 patent”), col. 1, l. 15. Claims 26, 27, 40, 42, 43, and 46 are independent. Claim 26, reproduced below, is illustrative of the subject matter on appeal.2 26. An x-ray source comprising: an insulating tube having a cylindrical inside surface defining a cylindrical vacuum cavity; a cathode located near a first end of said insulating tube and adapted to be optically heated for emitting electrons; the cathode being configured to limit heat loss from the center thereof; an anode adapted for a voltage bias with respect to said cathode for accelerating electrons emitted from said cathode; an x-ray emitter target located near a second end of said insulating tube for impact by accelerated electrons; and a secondary emission reduction layer covering at least a portion of said inside surface and adapted to minimize charge build-up on said inside surface; 43-46. We understand Appellants to be appealing from the final rejection of all the pending reissue claims 26-46. 2 Appellants argue all the claims on appeal as a group. App. Br. 5-10. We select claim 26 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 3 said insulating tube being adapted to be weakly conductive by having a lower resistance layer located between said insulating tube and said secondary emission reduction layer; said insulating tube being adapted to be weakly conductive to support a uniform voltage gradient along said insulating tube and across said voltage bias between said cathode and said anode; wherein said insulating tube has a conductivity adapted to allow current flow along said insulating tube of approximately ten percent of electron current flow between said cathode and anode under a maximum voltage bias there between. THE REJECTION Appellants seek review of the Examiner’s rejection of claims 26-46 under 35 U.S.C. § 251 based on a defective oath as setting forth an error that is not correctable by reissue. ISSUE In the reissue application on appeal Appellants canceled the original patent claims and presented new reissue claims 26-46, which contain an additional limitation not present in the original claims. App. Br. 3. Appellants assert that this additional limitation is “based on claims that were not rejected on the ground of non-statutory obviousness-type double patenting” during prosecution of the original patent. Id. As such, Appellants identify the error upon which the reissue is based as being that some of the original claims were allowed based on an ineffective, invalid terminal disclaimer, which renders the patent unenforceable. Id. at 5-6. Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 4 Appellants seek to replace the terminal disclaimer that was filed in the original patent prosecution to overcome a double patenting rejection with a substitute terminal disclaimer that disclaims the same term as in the original patent but removes the requirement of common ownership. Id. at 7. The Examiner determined that “[t]he voluntary filing of the terminal disclaimer to overcome the obvious double patenting rejection is evidence that the error is not correctible by reissue . . . .” Ans. 4. The issue presented by this appeal is whether Appellants’ voluntary and intentional filing of a terminal disclaimer to overcome a non-statutory obviousness-type double patenting rejection during prosecution of the original patent is an “error” correctable by reissue under 35 U.S.C. § 251.3 FINDINGS OF FACT We find that the following enumerated findings are supported by at least a preponderance of the evidence. Prosecution History of Original Application 11/087,271 1. During prosecution of Application 11/087,271 (“the ‘271 Appl.”), which subsequently issued as the ‘568 patent, the Examiner rejected original application claims 1 and 18-20 on the ground of non-statutory obviousness-type double patenting 3 This issue is similar to the issue decided by the Office in three petition decisions in the reissue application on appeal. See infra Facts 10-15. Because the Final Office Action from which this appeal is taken includes a rejection of the pending reissue claims under 35 U.S.C. § 251, a rejection from which appeal to the Board is proper, see 35 U.S.C. § 134, we decide in this appeal the propriety of this rejection. Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 5 as being unpatentable over claims 21-23 of US 6,658,086 B2 to Dinsmore (“Dinsmore”). ‘271 Appl., Non-Final Office Action dated Sept. 13, 2006, at pp. 3-4. 2. In response, Appellants filed a terminal disclaimer and argued that “[t]he enclosed terminal disclaimer in compliance with 37 CFR 1.321(c)[4] overcomes the obviousness-type double patenting rejection.” ‘271 Appl., Amendment and Response Under 37 CFR 1.111 dated Jan. 11, 2007, at p. 9. 3. The terminal disclaimer stated that the owner disclaims the terminal part of the statutory term of any patent granted on the ‘271 Appl. which would extend beyond the expiration date of the full statutory term of Dinsmore and further stated that “[t]he owner hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and [Dinsmore] are commonly owned.” Terminal Disclaimer To Obviate A Double Patenting Rejection Over A “Prior” Patent dated Jan. 11, 2007. 4. The Examiner then issued a Notice of Allowability in the ‘271 Appl., stating that the terminal disclaimer is accepted and 4 37 C.F.R. § 1.321(c) provides that a terminal disclaimer, when filed to obviate judicially created double patenting in a patent application, must include a provision that any patent granted on that application shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the judicially created double patenting. Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 6 recorded. ‘271 Appl., Notice of Allowability dated Mar. 6, 2007. 5. The ‘568 Patent issued on June 26, 2007 and included a notice that the patent “is subject to a terminal disclaimer.” ‘568 Patent, cover page. Prosecution History of Reissue Application 12/137,662 6. Appellants filed the reissue application that is the subject of this appeal (Appl. 12/137,662) on June 12, 2008 without amendment to the ‘568 patent but accompanied by a reissue declaration that identified the error on which the reissue is based as follows: Applicants inadvertently and without deceptive intent filed a Terminal Disclaimer over Patent No. 6,658,086, which patent was not commonly owned by the owners of Patent No. 7,236,568 currently at issue. ‘662 Appl., Reissue Declaration dated June 12, 2008 at p. 2 (emphasis added). 7. The Examiner rejected claims 1-21 under 35 U.S.C. § 251 as being based on a defective reissue declaration as stating an error not correctable by reissue because reissue is not available to remove a terminal disclaimer. ‘662 Appl., Non-Final Office Action dated July 27, 2009, at p. 2. 8. In response, Appellants canceled the claims that were the subject of the non-statutory obviousness-type double patenting Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 7 rejection in the prosecution of the original ‘271 Appl. (original application claims 1 and 18-20, which issued as claims 1, 16, 17, and 21). Amendment and Response Under 37 CFR 1.111 dated October 27, 2009. 9. Appellants also filed a supplemental reissue declaration that stated the original patent “to be wholly or partly inoperative or invalid . . . by reason of the patentee claiming more or less than he had the right to claim in the patent” and identified the error on which the reissue is based as follows: Original [application] claims 1 and 18-20 were rejected on the ground of non-statutory obviousness-type double patenting and allowed based on an ineffective, invalid terminal disclaimer. The allowance of issued claims 1 and 18-20 [sic, 1, 16, 17, and 21] based on the original [application] claims 1 and 18-20 was in error. ‘662 Appl., Reissue Application Declaration by the Assignee dated Oct. 27, 2009. 10. A week prior to filing the Amendment and Response, Appellants had filed a Petition “to substitute the incorrect terminal disclaimer with a correct terminal disclaimer.” ‘662 Appl., Petition Under 37 CFR 1.175(a)(1) and Section 1490 VII.(b) of the MPEP dated Oct. 20, 2009 (“First Petition”). 11. The Petition was accompanied by an Exhibit consisting of an unsigned Terminal Disclaimer proposing to disclaim the Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 8 terminal part of the statutory term of any patent granted on the ‘662 Appl. which would extend beyond the expiration date of the full statutory term of Dinsmore, but omitting the statement agreeing that any patent so granted on the instant application shall be enforceable only for and during such period that it and Dinsmore are commonly owned. First Petition, Exhibit. 12. The Office dismissed Appellants’ Petition stating that “[n]o authority exists for withdrawal of [the co-ownership] provision which the public is justified in relying upon.” ‘662 Appl., Decision on Petition dated Mar. 10, 2011, at p. 2. 13. The Examiner thereafter issued a second non-final Office Action rejecting all of the pending claims under 35 U.S.C. § 251 as being based upon a defective reissue declaration. ‘662 Appl., Second Office Action dated Apr. 4, 2011. 14. Appellants filed a response to the Office Action accompanied by a renewed Petition for acceptance of the substitute terminal disclaimer, which the Office again dismissed. Amendment and Response Under 37 CFR 1.111 and Request for Reconsideration of Dismissal of Petition Under 37 CFR 1.182 dated May 10, 2011 and Decision on Petition dated June 15, 2011. 15. Appellants then filed another request for reconsideration of the petition which the Office denied. Second Request for Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 9 Reconsideration of Dismissal of Petition Under 37 CFR 1.182 dated July 15, 2011 and Decision on Petition dated Sept. 7, 2011.5 16. The Examiner then issued a Final Office Action rejecting all of the pending claims under 35 U.S.C. § 251 as being based upon a defective reissue declaration. ‘662 Appl., Third Office Action dated Sept. 29, 2011. 17. Appellants filed a Request for Continued Examination accompanied by an amendment canceling all the pending claims and adding claims 26-46 and a substitute reissue declaration. Request for Continued Examination dated Jan. 30, 2012. 18. The substitute reissue declaration stated the original patent “to be wholly or partly inoperative or invalid . . . by reason of the patentee claiming more or less than he had the right to claim in the patent” and identified the error on which the reissue is based as follows: Original [application] claims 1 and 18-20 were rejected on the ground of non-statutory obviousness-type double patenting and allowed 5 This Decision on Petition stated that “[t]his decision may be viewed as a final agency action within the meaning of 5 U.S.C. § 704 for purposes of seeking judicial review.” Decision on Petition dated Sept. 7, 2011 at p. 7. To our knowledge, Appellants did not seek review of this final Decision of the Office. Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 10 based on an ineffective, invalid terminal disclaimer. The invalid terminal disclaimer renders the patent unenforceable. The patentee presents narrower claims based on claims that were not rejected on that basis. ‘662 Appl., Reissue Application Declaration by the Assignee, dated Jan. 30, 2012. 19. The Examiner rejected claims 26-46 under 35 U.S.C. § 251 as based upon a defective reissue declaration because (1) the error relied upon to support the reissue application is not an error upon which a reissue can be based and (2) the declaration does not identify which claims are in error and why and does not identify the error in the claims by identifying the narrowing limitations. Fourth Office Action dated Feb. 14, 2012, at pp. 2-4. 20. Appellants responded to the Office Action by filing a signed copy of the substitute Terminal Disclaimer previously presented for review with Appellants’ Petition. Amendment and Response dated May 14, 2012. 21. The Examiner entered a Final Office Action again rejecting claims 26-46 on the same grounds as in the Fourth Office Action and refusing to enter the substitute terminal disclaimer. Fifth Office Action dated May 30, 2012. 22. Appellants responded with an Amendment After Final seeking to have entered a substitute Reissue Application Declaration. Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 11 Amendment and Response to Final Office Action dated Sept. 19, 2012. 23. The Examiner refused to enter the After-Final Amendment or consider the substitute Reissue Declaration. Advisory Action dated Oct. 4, 2012. 24. Appellants subsequently filed another substitute Reissue Application Declaration, which the Examiner refused to enter or consider. Reissue Application Declaration by the Assignee dated Oct. 11, 2012 and Advisory Action dated Jan. 10, 2013. 25. Appellants appealed to the Board from the Final (Fifth) Office Action. Notice of Appeal dated Sept. 25, 2012. 26. As such, the rejection before us for review is the Examiner’s final rejection dated May 30, 2012 of claims 26-46 under 35 U.S.C. § 251 as being based upon a defective reissue declaration (i.e., the Reissue Application Declaration dated January 30, 2012). PRINCIPLES OF LAW Section 251 of title 35, United States Code, first paragraph, provides that: Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 12 for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue. 35 U.S.C. § 251 (2006).6 While § 251 is “based on fundamental principles of equity and fairness, and should be construed liberally,” In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986), the remedial function of the statute is not without limits. MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323 (Fed. Cir. 2007). Indeed, “[t]he reissue statute was not enacted as a panacea for all patent prosecution problems, nor as a grant to the patentee of a second opportunity to prosecute de novo his original application.” Weiler, 790 F.2d at 1582. Thus, “not every event or circumstance that might be labeled ‘error’ is correctable by reissue.” Id. at 1579. “[The Federal Circuit’s] case law holds that the deliberate action of an inventor or attorney during prosecution generally fails to qualify as a correctable error under § 251.” In re Serenkin, 479 F.3d 1359, 1362 (Fed. Cir. 2007) (holding that Serenkin cannot rely on the reissue statute, in light 6 In a recent decision, the Federal Circuit held that 35 U.S.C. § 251 cannot be used to withdraw a terminal disclaimer from an issued patent. In re Yamazaki, 702 F.3d 1327, 1333 (Fed. Cir. 2012). In Yamazaki, the Patentee attempted to extend the term of the original patent by removing the terminal disclaimer that the Patentee inadvertently failed to have withdrawn prior to issuance of the patent. Id. The court in Yamazaki held that the “term of the original patent” is set at the time of issuance so that the Office is not permitted under 35 U.S.C. § 251 to reissue a patent for a longer term. Id. Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 13 of a belated decision that he should have retained the original filing date, in order to undo the consequences of his attorney’s deliberate choice of selecting the drawings over the original international filing date in response to the PCT examiner’s requirement). The court in Serenkin explained: Our predecessor court, the Court of Customs and Patent Appeals, so held in In re Mead, 581 F.2d 251 (CCPA 1978). In that case, the inventor’s attorney made the deliberate choice of not filing a continuing application during the pendency of the parent application in order to cover subject matter that was disclosed, but not claimed, in the original application. Although he may have had the intention of filing a subsequent application to cover that subject matter within the applicable one-year statutory bar period, in the interim he discovered intervening prior art that was capable of defeating patentability of that subject matter unless he was able to claim priority from the parent application. The court held that the inventor could not rely on § 251 to correct that purported error. Notably, the court stated: When his attorney made the conscious choice of breaking appellant’s chain of copendency by letting the application issue, with the plan to claim in the subsequent application, he knew, or should have known, that there could exist intervening references ... which could defeat patentability of the disclosed but unclaimed subject matter in the original patent. That intentional omission of the appealed subject matter from the original application combined with the plan to claim it in the subsequent application, does not constitute “error” under § 251 because to permit appellant to use the reissue statute in this manner would defeat Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 14 the purpose behind the copendency requirement of § 120 of the statute. Id. at 257 (emphasis added). Similarly, in In re Orita, 550 F.2d 1277 (CCPA 1977), the Court of Customs and Patent Appeals found that the reissue applicant failed to establish error under § 251. The Orita inventor filed two sets of claims-the first involving compound and process claims, the second involving coating and emulsion claims-in one application. The examiner required restriction between the two sets of claims. The inventor's counsel elected the first set, and authorized the cancellation of the non-elected claims. The attorney, however, failed to subsequently file a timely divisional application covering the non-elected claims. The inventor then filed a reissue application, arguing that the failure to file a divisional application was a correctable error under § 251. The court disagreed, holding that the error did not cause “the original patent to be ‘partially inoperative by reason of the patentee claiming less that he had a right to claim in the patent.’ ” Id. at 1280. The court noted that the inventor “acquiesced in the examiner's requirement for restriction,” and therefore failed to establish a correctable error. Id. Moreover, the court reasoned that if the inventor prevailed, the copendency requirement would be rendered meaningless. Id. at 1280-81. In re Serenkin, 479 F.3d at 1362-63.7 The court in Serenkin noted “the distinction [in the law on errors correctable by reissue] between a genuine 7 See also In re Watkinson, 900 F.2d 230, 231 (Fed. Cir. 1990) (holding that applicant’s acquiescence in restriction requirement in the original patent application and failure to file a divisional application directed to the non- elected claims was not an error correctable by reissue under 35 U.S.C. § 251); In re Weiler, 790 F.2d 1576, 1582 (Fed. Cir. 1986) (holding that applicant’s acquiescence in restriction requirement in the original patent application and failure to file a divisional application directed to the non- Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 15 error, or mistake, and a deliberate, but subsequently found to be disadvantageous, choice.” Id. at 1364. ANALYSIS The deliberate action of Appellants’ attorney during prosecution to file a terminal disclaimer to overcome the non-statutory obviousness-type double patenting rejection fails to qualify as a correctable error under § 251. Appellants’ counsel did not mistakenly file the terminal disclaimer. Rather, Appellants’ counsel acquiesced in the Examiner’s double patenting rejection and intentionally filed the terminal disclaimer to overcome the rejection (Facts 2, 3). The fact that Appellants now find this choice to be disadvantageous to the enforceability of the patent does not constitute “error” under § 251. In re Serenkin, 479 F.3d at 1364. Appellants assert in their reissue declaration that original application claims 1 and 18-20 were “allowed based on an ineffective, invalid terminal disclaimer” (Fact 18). We disagree with Appellants’ characterization of the allowance of original application claims 1 and 18-20. Appellants agreed in the terminal disclaimer “that any patent so granted on the instant application shall be enforceable only for and during such period that it and [Dinsmore] are commonly owned” (Fact 3). The terminal disclaimer is akin to a contract in which Appellants agreed that the ‘568 patent is unenforceable unless commonly owned with Dinsmore. The Office allowed original elected claims foreclosed applicant’s right to claim that subject matter because applicant’s actions were not errors under 35 U.S.C. § 251). Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 16 application claims 1 and 18-20 based on the promise made by Appellants in the terminal disclaimer not to enforce the ‘568 patent unless it is commonly owned with Dinsmore. The fact that the ‘568 patent and Dinsmore are not now, nor have they ever been commonly owned, does not somehow render the promise made by that terminal disclaimer ineffective or invalid. On the contrary, the promise made by Appellants in the terminal disclaimer serves the exact purpose for which terminal disclaimers were intended, viz., to prevent multiple infringement suits by different assignees asserting essentially the same patented invention. In re Hubbell, 709 F.3d 1140, 1145 (Fed. Cir. 2013) (citing In re Fallaux, 564 F.3d 1313, 1319 (Fed. Cir. 2009)). Appellants argue that they are permitted, under the Federal Circuit’s recent decision in In re Tanaka, 640 F.3d 1246 (Fed. Cir. 2011), to file narrower claims “as a hedge against unenforceability.” App. Br. 6. We find the facts and holding of Tanaka inapplicable to the appeal now before us. In Tanaka, the Patentee sought to reissue a patent to include all of the original patent claims and to add a single narrower dependent claim as a hedge against invalidity of the broader patent claims. The Board held that such a reissue application did not present the type of error correctable by reissue within the meaning of 35 U.S.C. § 251 because the reissue application proposed to retain all of the original patent claims, and thus the Patentee had not properly averred that the original patent was “wholly or partly inoperative or invalid.” Id. at 1248. The Federal Circuit disagreed with the Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 17 Board’s reading of 35 U.S.C. § 251, holding that it was bound by the doctrine of stare decisis because in its view “the narrow rule relating to the additional of dependent claims as a hedge against possible invalidity has been embraced as a reasonable interpretation of the reissue statute by this court and its predecessor for nearly fifty years without any obvious adverse consequences.” Id. at 1252-53. The facts before us differ from the facts in Tanaka in two important aspects. First, Appellants in the reissue application on appeal have canceled the original patent claims and presented what they assert to be narrower claims. Thus, the issue before the Board is not the same as the issue before the court in Tanaka. To be clear, the Board is not interpreting 35 U.S.C. § 251 to disallow the substitution of narrower claims in place of broader patent claims in a reissue. We recognize that substitution of narrower claims in place of broader claims is generally allowed in a reissue application. The substitution of the broader claims with narrower claims does not, however, vacate or otherwise nullify the voluntary terminal disclaimer filed by Appellants in the original patent. As such, any reissue patent issuing from the present application would be subject to the original terminal disclaimer, and thus, absent co-ownership with Dinsmore, would render any such reissue patent unenforceable. Second, the patentee in Tanaka sought to add a narrower claim as a hedge against invalidity of the broader claims. We disagree with Appellants’ characterization of the court’s holding in Tanaka as authorizing Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 18 the addition of narrower claims in order to vacate a voluntarily filed terminal disclaimer as a hedge against unenforceability. Appellants’ extension of the holding in Tanaka to permit the use of a reissue proceeding to cure unenforceability of a patent finds no support in Tanaka. Further, in other instances, the Federal Circuit has held that reissue proceedings are not available to cure unenforceability of a patent. See, e.g., Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276, 1288 (Fed. Cir. 2011) (en banc) (“Unlike other deficiencies, inequitable conduct cannot be cured by reissue . . . or reexamination. . . .”) (internal citations omitted). Because Appellants’ voluntarily and intentionally filed a terminal disclaimer to overcome the non-statutory obviousness-type double patenting rejection during prosecution of the original patent application, the filing of such terminal disclaimer is not an error correctable by reissue. Accordingly, we sustain the Examiner’s rejection of claims 26-46 under 35 U.S.C. § 251 as being based on a defective reissue declaration as failing to state an error correctable by reissue. CONCLUSION Appellants’ voluntary and intentional filing of a terminal disclaimer to overcome a non-statutory obviousness-type double patenting rejection during prosecution of the original patent is not an “error” correctible by reissue under 35 U.S.C. § 251. DECISION We AFFIRM the decision of the Examiner to reject claims 26-46. Appeal 2013-006879 Patent US 7,236,568 B2 Application 12/137,662 19 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh Copy with citationCopy as parenthetical citation