Ex parte ELSON

Board of Patent Appeals and Interferences

Feb 18, 1998

07996382 (B.P.A.I. Feb. 18, 1998)

Application for patent filed December 23, 1992. 1
According to appellant, this application is a continuation of
Application 07/824,069 filed January 23, 1992, now Reissue
Patent No. 34,297, issued June 29, 1993, which is a reissue of
U.S. Patent No. 4,895,496, issued January 23, 1990, based on
Application 07/204,091 filed June 8, 1988.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN P. ELSON
__________
Appeal No. 98-0532
Application 07/996,3821
__________
HEARD: February 3, 1998
__________
Before ABRAMS, FRANKFORT and McQUADE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 98-0532
Application 07/996,382
2
This is an appeal from the decision of the examiner
finally rejecting claims 37 through 56 of this reissue
continuation application. These constitute all of the claims
remaining of record.
The appellant's invention is directed to a refrigeration
compressor. The claims before us on appeal can be found in an
appendix to the appellant’s Brief.
BACKGROUND
The appellant filed a patent application on June 8, 1988,
which issued as U.S. Patent No. 4,895,496 on January 23, 1990.
Exactly two years later, on January 23, 1992, the appellant
filed a reissue application which contained broadened claims.
Notice of allowance of this reissue application was mailed on
September 24, 1992, and it issued on June 29, 1993 as RE
34,297. According to the appellant, on December 14, 1992, it
was discovered that an additional error existed which would
not be cured by the reissue patent. As a result, on December
23, 1992, a second reissue application was filed, and it is
this application which now is before us.
OPINION
Appeal No. 98-0532
Application 07/996,382
"Only” does not appear in the statute; it is a product of2
the examiner’s interpretation thereof.
3
Our understanding of the issue in this case is that
claims 37 through 56 stand rejected as not being in compliance
with 35 U.S.C. § 251 because they are not directed to an
invention that is separate and distinct from that which is set
forth in the reissue patent (Answer, pages 2 and 3). The
appellant argues in rebuttal that the examiner has
misconstrued the language and the intent of Section 251, and
urges that a second reissue patent based upon an application
that is a continuation of the first reissue application is not
prohibited.
It is the examiner’s position that although the second
paragraph of 35 U.S.C. § 251 grants the Commissioner of
Patents and Trademarks the discretion to issue several reissue
patents under certain circumstances, this is limited in that
multiple reissue patents can only be issued on2
“separate and distinct parts of the thing patented”
(Answer, page 6, underlining added).
That is, additional reissue applications are permitted only in
the case of what normally would be the subject of divisional
applications.
Appeal No. 98-0532
Application 07/996,382
The Board’s decision on the propriety of the continuation3
reissue was, however, affirmed on the basis that it contained
broadened claims which were filed more than two years after
the date of the original patent.
4
We agree with the examiner that the granting of
additional reissue patents for the purpose of covering
separate and distinct inventions has specifically been
addressed in Section 251. However, the examiner’s conclusion
that multiple reissue patents can be issued only for “separate
and distinct parts of the thing patented” has specifically
been repudiated by the Court of Appeals for the Federal
Circuit. In In re Graff, 111 F.3d 874, 876, 42 USPQ2d 1471,
1473 (Fed. Cir. 1997), when considering the Board’s affirmance
of a final rejection of claims in a continuation reissue
application for essentially the same reason as the instant
case , our reviewing court stated that 3
§251 does not bar multiple reissue patents in
appropriate circumstances. Section 251[3] provides
that the general rules for patent applications apply
also to reissue applications, and §251[2] expressly
recognizes that there may be more than one reissue
patent for distinct and separate parts of the thing
patented. The statute does not prohibit divisional
or continuation reissue applications, and does not
place stricter limitations on such applications when
they are presented by reissue, provided of course
that the statutory requirements specific to reissue
Appeal No. 98-0532
Application 07/996,382
5
applications are met. See §251[3]. (42 USPQ2d at
1473, emphasis added).
The court continued that the second paragraph of Section 251
was intended as enabling, and not as limiting, and “places no
greater burden on Mr. Graff’s continuation reissue application
than upon a continuation of an original application.”
This, in our view, is dispositive of the issue before us.
There is no dispute that the appellant’s reissue patent was
properly filed as a broadening reissue, and the reissue
application now before us was properly filed as a continuation
of the first, which at that time was a pending reissue
application. As such, the continuation reissue application
is entitled to the same treatment as a continuation
application based upon an original application.
The rejection is not sustained.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge)
Appeal No. 98-0532
Application 07/996,382
6
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge)
Appeal No. 98-0532
Application 07/996,382
7
Harness, Dickey & Pierce
P.O. Box 828
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