Ex parte PY

Board of Patent Appeals and Interferences

Jan 26, 1999

08567510 (B.P.A.I. Jan. 26, 1999)

Application filed December 5, 1995, for reissue of U.S.1
Patent No. 5,267,986 (Application No. 07/863,943, filed April
6, 1992).
It appears to us that claims 2 and 3 should be made to2
be dependent on claim 6 to provide antecedent basis for "the
finger."
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for publication in a law journal and (2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DANIEL PY
____________
Appeal No. 99-0184
Application No. 08/567,5101
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 9 through 15. Claims 1 through 8, the
other claims pending in this application, have been allowed.2
Appeal No. 99-0184
Application No. 08/567,510
We REVERSE.
Appeal No. 99-0184 Page 3
Application No. 08/567,510
Claims 9 through 15 were presented in a preliminary3
amendment filed on December 5, 1995. We note that this
amendment has not been clerically entered and that the format
thereof (e.g., lack of underlining) is not appropriate (see
current rule 37 CFR § 1.121(b)).
BACKGROUND
The appellant's invention relates to a cartridge for
applying medicament to an eye from a dispenser. A copy of
claims 9 through 15 is attached as Exhibit A to the
appellant's brief.3
No prior art is relied upon by the examiner in the
rejection of the claims under appeal.
Claim 15 stands rejected under 35 U.S.C. § 251.
Claims 9 through 14 stand rejected under 35 U.S.C. § 251.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the second Office action
(Paper No. 7, mailed January 30, 1997) and the examiner's
answer (Paper No. 14, mailed February 12, 1998) for the
Appeal No. 99-0184 Page 4
Application No. 08/567,510
examiner's complete reasoning in support of the rejections,
and to the appellant's brief (Paper No. 13, filed November 25,
1997) and reply brief (Paper No. 15, filed April 7, 1998) for
the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the respective positions articulated
by the appellant and the examiner. As a consequence of our
review, we will not sustain the examiner's rejection of claims
9 through 15 under 35 U.S.C. § 251 for the following reasons.
Claim 15
We will not sustain the rejection of claim 15 under
35 U.S.C. § 251.
The issue presented by the examiner and the appellant is
whether the "divisional doctrine" is applicable in this
application. We agree with the appellant's arguments (brief,
pp. 10-14, reply brief, pp. 8-12) that the "divisional
doctrine" is not applicable in this application. The
Appeal No. 99-0184 Page 5
Application No. 08/567,510
"divisional doctrine" as set forth in In re Orita, 550 F.2d
1277, 193 USPQ 145 (CCPA 1977) declares that where the PTO
issues a restriction requirement and the applicant responds by
canceling claims to the nonelected invention, and then the
applicant fails to file a divisional application with the
canceled claims, the applicant is deemed to have acquiesced in
the restriction and is estopped from obtaining by reissue the
subject matter of the canceled claims. Orita, 550 F.2d at
1280, 193 USPQ at 148. This "divisional doctrine" has been
strictly construed against reissue applicants claiming "error"
in failing to file a divisional application after a
restriction requirement. Even if the applicant's
representative misunderstood the applicant's instructions,
this does not constitute "error" within the meaning of 35
U.S.C. § 251. See In re Weiler, 790 F.2d 1576, 1582, 229 USPQ
673, 677 (Fed. Cir. 1986). "Section 251 is not a panacea
designed to cure every mistake which might be committed by an
applicant or his attorney." Orita, 550 F.2d at 1281, 193
USPQ at 149. On the other hand, Section 251 is a remedial
statute that is to be interpreted liberally. Weiler, 790 F.2d
at 1579, 229 USPQ at 675. "Although attorney error is not an
Appeal No. 99-0184 Page 6
Application No. 08/567,510
In addition, we direct the examiner's attention to the4
public record set forth in the unpublished decision of the
U.S. Court of Appeals for the Federal Circuit reproduced at 36
USPQ2d 1510 (In re Swartzel).
open invitation to reissue every case in which it may appear .
. . the purpose of the reissue statute is to avoid forfeiture
of substantive rights due to error made without intent to
deceive." Scripps Clinic & Research Found. v. Genentech,
Inc., 927 F.2d 1565, 1575, 18 USPQ2d 1001, 1009 (Fed. Cir.
1991).
The "divisional doctrine" set forth in Orita clearly does
not apply to the facts of this case. In that regard, we note
that method claim 15 was never subject to a restriction
requirement. Thus, there never was a determination by the PTO
that the subject matter of claim 15 was restrictable from the
subject matter of claims 1 through 8 (i.e., that the subject
matter of claim 15 defines an independent and distinct
invention from the subject matter of claims 1 through 8).
Furthermore, it is our opinion that it is inappropriate to
extend the "divisional doctrine" set forth in Orita to cover
the facts of this case.4
Appeal No. 99-0184 Page 7
Application No. 08/567,510
For the reasons stated above, the decision of the
examiner to reject claim 15 under 35 U.S.C. § 251 is reversed.
Claims 9 through 14
We will not sustain the rejection of claims 9 through 14
under 35 U.S.C. § 251.
The issue presented by the examiner and the appellant is
whether the "recapture doctrine" is applicable in this
application. We agree with the appellant's arguments (brief,
pp. 16-25, reply brief, pp. 13-18) that the "recapture
doctrine" is not applicable in this application.
An attorney's failure to appreciate the full scope of the
invention qualifies as an error under 35 U.S.C. § 251 and is
correctable by reissue. In re Wilder, 736 F.2d 1516, 1519,
222 USPQ 369, 370-71 (Fed. Cir. 1984). Nevertheless,
"deliberate withdrawal or amendment . . . cannot be said to
involve the inadvertence or mistake contemplated by 35 U.S.C.
Section 251." Haliczer v. United States, 356 F.2d 541, 545,
148 USPQ 565, 569 (Ct. Cl. 1966). The recapture rule,
Appeal No. 99-0184 Page 8
Application No. 08/567,510
therefore, prevents a patentee from regaining through reissue
the subject matter that he surrendered in an effort to obtain
allowance of the original claims. See Mentor Corp. v.
Coloplast, Inc., 998 F.2d 992, 995, 27 USPQ2d 1521, 1524 (Fed.
Cir. 1993). Under this rule, claims that are "broader than
the original patent claims in a manner directly pertinent to
the subject matter surrendered during prosecution" are
impermissible. Id. at 996, 27 USPQ2d at 1525. In addition,
to determine whether an applicant surrendered particular
subject matter, we look to the prosecution history for
arguments and changes to the claims made in an effort to
overcome a prior art rejection. See Mentor, 998 F.2d at
995-96, 27 USPQ2d at 1524-25; Ball Corp. v. United States, 729
F.2d 1429, 1436, 221 USPQ 289, 294-95 (Fed. Cir. 1984).
The "recapture doctrine" clearly does not apply to the
facts of this case. In that regard, we note that the
appellant never amended the claims in an effort to overcome a
prior art rejection. Thus, the appellant never surrendered
any particular subject matter that would be subject to the
"recapture doctrine." Furthermore, while original patent
Appeal No. 99-0184 Page 9
Application No. 08/567,510
claims 1 through 6 were drawn to the cartridge per se,
original patent claims 7 and 8 were drawn to the combination
of a cartridge with a dispenser. Accordingly, it is clear to
us the examiner's rejection of claims 9 through 14 is in
error.
For the reasons stated above, the decision of the
examiner to reject claims 9 through 14 under 35 U.S.C. § 251
is reversed.
Appeal No. 99-0184 Page 10
Application No. 08/567,510
CONCLUSION
To summarize, the decision of the examiner to reject
claims 9 through 15 under 35 U.S.C. § 251 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 99-0184 Page 11
Application No. 08/567,510
KENYON & KENYON
ONE BROADWAY
NEW YORK, NY 10004
APPEAL NO. 99-0184 - JUDGE NASE
APPLICATION NO. 08/567,510
APJ NASE
APJ FRANKFORT
APJ COHEN
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 20 Jan 99
FINAL TYPED: