Ex parte Fogle

Board of Patent Appeals and Interferences

Aug 16, 1999

08573460 (B.P.A.I. Aug. 16, 1999)

Application filed December 15, 1995 for the reissue of 1
U.S. Patent No. 5,463,815, granted November 7, 1995, based on
Application 08/304,155, filed September 12, 1994.
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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journal and (2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JOHN R. FOGLE
________________
Appeal No. 98-0377
Application 08/573,4601
________________
ON BRIEF
________________
Before McQUADE, NASE and GONZALES, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
John R. Fogle appeals from the final rejection of claims
1 through 17, all of the claims pending in the application.
Appeal No. 98-0377
Application 08/573,460
The examiner entered this rejection in a final rejection2
dated July 1, 1998 (Paper No. 15) in response to a remand from
this Board (see Paper No. 14) for reconsideration of the
application in light of the amendments made to 37 CFR § 1.175
effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg.
53131, 53197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. Office 63,
122 (Oct. 21, 1997).
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We reverse and remand the application for further
consideration.
The invention relates to a flexible cutting line for use
in a weed and grass trimmer. A copy of the appealed claims
appears in the appendix to the appellant’s brief (Paper No.
21).
Claims 1 through 17 stand rejected under 35 U.S.C. § 251
on the basis of the examiner’s determination that “error
‘without any deceptive intention’ has not been established”
(answer, Paper No. 22, page 2).2
Before discussing this rejection, we note that the
appellant has raised as an issue on appeal (see page 9 in the
brief) the propriety of the examiner’s refusal to enter the
amendment (Paper No. 7) filed subsequent to the final
Appeal No. 98-0377
Application 08/573,460
The examiner effectively withdrew the finality of this3
particular rejection by issuing the final rejection dated July
1, 1998 (see note 2, supra). It is the latter rejection from
which the current appeal is taken.
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rejection dated November 8, 1996 (Paper No. 6). It is well3
settled that the refusal of an examiner to enter such an
amendment is a matter of discretion which is reviewable by
petition to the Commissioner rather than by appeal to this
Board. In re Mindick, 371 F.d. 892, 894, 152 USPQ 566, 568
(CCPA 1967). Accordingly, we shall not further discuss this
matter.
Turning now to the merits of the examiner’s rejection,
the record includes two reissue declarations (an original and
a supplemental) which indicate that:
a) the patentee (the appellant) filed the instant
application for the reissue of U.S. Patent No. 5,463,815 on
the belief that the patent was partly inoperative or invalid
“because independent Claims 1 and 17 claim more than patentee
had a right to claim in the patent by failing to include the
limitations presented originally in dependent claim 10"
(original reissue declaration, page 4);
b) the patentee came to this belief upon becoming aware,
Appeal No. 98-0377
Application 08/573,460
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subsequent to the payment of the issue fee on May 13, 1995 and
a short time prior to the issuance of the patent on November
7, 1995, of a flexible cutting line distributed by Arnold
Corporation under the trademark “MAXIEDGE” (see the original
reissue declaration at page 4);
c) the patentee became aware of the dimensional
characteristics of the “MAXIEDGE” line on September 4, 1995
(see the supplemental reissue declaration at page 1);
d) the patentee, determining that the limitations in
dependent patent claim 10 were not encompassed by the
“MAXIEDGE” line, presented claims 1 and 17 in the reissue
application “amended to substantially incorporate the subject
matter of original dependent Claim 10" (original reissue
declaration, page 5); and
e) the patentee chose to correct the errors forthwith by
way of reissue because issuance of the patent was considered
to be imminent (see the supplemental reissue declaration and
page 5 in the original reissue declaration);
In addition, the original reissue declaration includes
plural statements by the patentee that the errors in question
Appeal No. 98-0377
Application 08/573,460
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arose without any deceptive intent or intention (see pages 3,
4 and 5).
Notwithstanding the appellant’s express disavowal of any
deceptive intention, the examiner entered and maintained the
§ 251 rejection on appeal because
Appellant [had] sufficient time (i.e. two
months) to correct the error by either submitting
[an] Information Disclosure Statement, Amendment
under 37 CFR § 1.312(b) or by petition to [withdraw]
the application from issue. However, Appellant
chose not to do so, instead, he intentionally
permitted the letters patent to issue with a known
defect. Therefore, no “error without deceptive
intent”, a condition precedent to reissue, has been
established [answer, page 5].
The examiner’s position here is unsound for at least two
reasons.
To begin with, in rejecting a claim an examiner bears the
initial burden of presenting a factual basis establishing a
prima facie case of unpatentability. In re Oetiker, 977 F.2d
1443, 1445-46, 24 USPQ2d 1443, 1444-45 (Fed. Cir. 1990);
In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed.
Cir. 1984). Thus, with regard to the rejection on appeal the
examiner had the initial burden of presenting a factual basis
establishing a prima facie case that the errors at issue did
not arise without any deceptive intention. The facts relied
Appeal No. 98-0377
Application 08/573,460
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upon by the examiner to meet this burden, i.e., that the
appellant chose to correct the errors via the instant reissue
application rather than by attempting to amend the application
before it matured into the patent, are not, in and of
themselves, indicative of any deceptive intention.
Moreover, under the current PTO practice an applicant for
reissue is not required to “establish” that the errors sought
to be corrected by reissue arose without any deceptive
intention. In this regard, an applicant’s statement in the
reissue oath or declaration of a lack of any deceptive
intention is to be accepted as being dispositive in the
absence of special circumstances such as an admission or a
judicial determination to the contrary (see MPEP §§ 1448 and
2012; and also MPEP §§ 1414 and 2022.05). The record does not
reflect the presence of any such special circumstances in this
case.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 251 rejection of claims 1 through 17.
Finally, we remand the application to the examiner to
consider whether the subject matter currently set forth in
independent claims 1 and 17, and in claims 2 through 16 which
Appeal No. 98-0377
Application 08/573,460
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depend from claim 1, raises issues with respect to the written
description requirement of 35 U.S.C. § 112, first paragraph,
and/or the new matter prohibition of 35 U.S.C. § 251. More
particularly, the recitation in claims 1 and 17 that the main
body portion of the flexible cutting element is located
relative to a straight line extending from one cutting edge to
an adjacent cutting edge a distance which does not extend
inwardly “more than 10 percent” of the length of the straight
line does not appear to have original support in the
appellant’s disclosure. In this regard, claim 10, from whence
this limitation allegedly came, actually recites that the
straight line extends from one cutting edge to an adjacent
cutting edge a distance which is “less than 10 percent” of the
length of the straight line.
In summary:
a) the decision of the examiner to reject claims 1
through 17 under 35 U.S.C. § 251 is reversed; and
b) the application is remanded to the examiner for
further consideration.
REVERSED AND REMANDED
Appeal No. 98-0377
Application 08/573,460
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JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
JEFFREY V. NASE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
Appeal No. 98-0377
Application 08/573,460
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Lavalle D. Ptak
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