Ex parte Wilson

Board of Patent Appeals and Interferences

Sep 17, 1998

08409137 (B.P.A.I. Sep. 17, 1998)

Application filed March 23, 1995, seeking to reissue U.S. Patent 5,259,444,1
granted November 9, 1993, based on application 07/609,362, filed November 5, 1990. We
are told that the real party in interest is the Massachusetts Institute of Technology.
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journal and (2) is not binding precedent of the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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID G. WILSON
_______________
Appeal No. 98-0541
Application No. 08/409,1371
_______________
HEARD: April 7, 1998
_______________
Before STONER, Chief Administrative Patent Judge, CALVERT,
Administrative Patent Judge, and McKELVEY, Senior
Administrative
Patent Judge.
PER CURIAM
Decision on appeal under 35 U.S.C. 134
Appeal No. 98-0541
Application 08/409,137
- 2 -
This appeal is from the Primary Examiner's rejection of
claims 13-14, 21-23, 26, 28, 46 and 48 as lacking a statutory
basis for reissue. All remaining claims have been indicated
as being allowable.
A. Background
The application involved in this appeal seeks to reissue
U.S. patent 5,259,444. The reissue application was filed
within two years from the grant of the patent. See n.1,
supra.
The application which matured into the patent sought to
be reissued described and claimed at least two species of
regenerative heat exchangers. No generic claim was presented
which covered both species. One of the described species was
a "rotary" heat exchanger; the other was a "modular" heat
exchanger.
During prosecution of the application which matured into
the patent, the examiner made a restriction requirement
thereby causing appellant to elect to prosecute claims to the
rotary heat exchanger or claims to the modular heat exchanger.
Appellant elected to prosecute claims to the modular heat
Appeal No. 98-0541
Application 08/409,137
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exchanger without traverse and the patent subsequently issued
claiming only a modular heat exchanger. A divisional
application was not filed to prosecute claims directed to the
rotary heat exchanger.
In this reissue application on appeal, appellant
presented claims 1-58. Claims 1-12, 15-20, 24-25, 27, 29-45,
47 and 49-58 have been allowed by the examiner (examiner's
answer, page 3, lines 1-2). Allowed claim 12 is generic to
rotary and the modular heat exchangers. Claims 13-14, 21-23,
26, 28, 46 and 48 depend from claim 12 and are limited to
rotary heat exchangers. The examiner has rejected claims
13-14, 21-23, 26, 28, 46 and 48 on the basis that appellant is
attempting to recapture by reissue the non-elected invention
said to have been "surrendered" in the application which
matured into the patent, namely, the rotary heat exchanger.
B. Discussion
In support of his recapture rejection, the examiner
relies on In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed.
Cir. 1990). However, the facts here differ from those in
Watkinson and other similar cases, such as In re Orita, 550
F.2d 1277, 193 USPQ 145 (CCPA 1977). A generic claim was not
Appeal No. 98-0541
Application 08/409,137
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presented in the application which matured into the Watkinson
patent. Instead, in seeking reissue, Watkinson filed claims
corresponding solely to the non-elected invention which had
not been prosecuted in the application which matured into the
Watkinson patent. In the present reissue application,
appellant--unlike Watkinson and Orita--has presented a generic
claim which the examiner has found to be supported by the
specification and subsequently allowed. In presenting generic
claim 12 in the reissue application on appeal, appellant took
a step which he could have taken during prosecution of the
application which matured into the patent. On the record
before us, the examiner has not questioned that appellant
erred, within the meaning of the reissue statute, when he
failed to present claim 12 in the application which matured
into the patent.
Following oral hearing in this appeal, we became
concerned as to whether the subject matter of claim 12 was
described in the specification of the patent in the manner
required by the first paragraph of 35 U.S.C. § 112. We asked
appellant to address our concern and he has done so in a
timely fashion. Upon consideration of appellant's response,
Appeal No. 98-0541
Application 08/409,137
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we--like the examiner--are persuaded that claim 12 complies
with the description requirement of the first paragraph of
35 U.S.C. § 112.
It is true that the claims on appeal cover a rotary heat
exchanger and that appellant elected to prosecute only a
modular heat exchanger following a restriction requirement in
the application which matured into the patent. Had appellant
presented claim 12 in the application which matured into the
patent, he also would have been able to present the rejected
claims on appeal. Appellant is not here attempting to claim
something he could not have claimed in the application which
matured into the patent. Rather, through error, he failed to
present claim 12 during prosecution of the application which
matured into the patent sought to be reissued. Since claim 12
is generic to both rotary and modular heat exchangers, and has
been found to be allowable, we perceive no reason why
appellant should not also be able to present claims limited to
rotary heat exchangers.
C. Decision
Appeal No. 98-0541
Application 08/409,137
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The decision of the examiner rejecting claims 13-14, 21-
23, 26, 28, 46 and 48 as lacking statutory basis for reissue
is reversed.
REVERSED
______________________________
BRUCE H. STONER, Jr., Chief )
Administrative Patent Judge )
)
)
______________________________)
IAN A. CALVERT, ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS
AND
)
INTERFERENCES
)
______________________________)
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
Appeal No. 98-0541
Application 08/409,137
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