Ex parte Matthews

Board of Patent Appeals and Interferences

Feb 19, 1998

08723355 (B.P.A.I. Feb. 19, 1998)

Reissue Application filed September 30, 1996, for1
Patent No. 5,435,388, filed August 17, 1994, which according
to the appellant is a divisional application of Application
08/051,854, filed April 26, 1993, now Patent No. 5,361,840.
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(2) is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BRUCE MATTHEWS
_____________
Appeal No. 98-0673
Application 08/723,3551
______________
ON BRIEF
_______________
Before HAIRSTON, KRASS and LEE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner's final rejection of claims 6-11 in the involved
reissue application. The original patent contains claims 1-5.
The Rejection on Appeal
Appeal No. 98-0673
Application 08/723,355
2
Claims 6-11 are claims added during the reissue
proceeding. They stand finally rejected by the examiner under
35 U.S.C. § 251 as not being drawn to the same invention as
that claimed in the original patent.
The Invention
The claimed invention is directed to a ball valve
assembly. Representative claim 6 is reproduced below:
6. A ball valve assembly comprising:
a valve case having first and second axial ports defined
therein;
a ball rotatably positioned within the valve case, the
ball having an axial central opening therein;
a first cable having a first end attached to the ball to
rotate selectively the ball to one of a first position and a
second position, the first position having the axial central
opening of the ball aligned with the axial ports of the valve
case and the second position not having the axial central
opening of the ball aligned with the axial ports of the valve
case, a second end of the first cable being remotely
positioned with respect to the valve case.
Opinion
Section 251, United States Code, does not require that
claims added by reissue must be drawn to subject matter
"claimed" in the original patent. Rather, the reissue
Appeal No. 98-0673
Application 08/723,355
3
application must be for the same invention as that "disclosed"
in the original patent. 35 U.S.C. § 251.
On the issue of the "same invention" rejection under
35 U.S.C. § 251, the controlling authority is the Federal
Circuit’s decision in In re Amos, 953 F.2d 613, 21 USPQ2d 1271
(Fed. Cir. 1991). The mere absence of an objective "intent to
claim" is not dispositive on the "same invention" question
under 35 U.S.C. § 251, and lack of an intent to claim is not
an independent basis for denying a reissue application under
35 U.S.C. § 251. In re Amos, 953 F.2d at 618-19, 21 USPQ2d at
1275-1276. The key is whether the disclosure of the original
patent is sufficient such that the applicant could have
claimed the subject matter now claimed, in the original
application for patent. In re Amos, 953 F.2d at 618, 21
USPQ2d at 1275. As is stated in In re Amos, 953 F.2d at 618,
21 USPQ2d at 1274:
Hence, the purpose of the rubric "intent to
claim" is to ask the same question as to whether
"new matter" has been "introduced into the
application for reissue" thus, perforce, indicating
that the new claims are not drawn to the same
invention that was originally disclosed.
The examiner has failed to demonstrate any reason or
basis to find that claims 6-11 add new matter to or are
Appeal No. 98-0673
Application 08/723,355
4
otherwise not supported by the original patent disclosure.
Note that no rejection for inadequate written description
under 35 U.S.C.
§ 112, first paragraph, has been made. The examiner argues
that a restriction requirement would have been made in the
original patent application had these new claims been
presented there. Even assuming that to be true, it does not
demonstrate that claims 6-11 add new matter to the original
disclosure or otherwise would have been rejectable under any
section of the patent statute. Moreover, note that a
restriction is not based on any deficiency in the content of
the appellant’s disclosure.
If the examiner desires to make a restriction
requirement, then it is a restriction requirement which should
be asserted, not a rejection of the claims for lack of an
"intent to claim" under 35 U.S.C. § 251. The appellant can
respond to such a requirement in the same way that he could
have responded to a restriction requirement made in the
original application.
For the foregoing reasons, the rejection of claims 6-11
under 35 U.S.C. § 251 cannot be sustained.
Appeal No. 98-0673
Application 08/723,355
5
Conclusion
The rejection of reissue application claims 6-11 under
35 U.S.C. § 251 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMESON LEE )
Administrative Patent Judge )
H. Warren Burnam, Jr.
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