Ex Parte Arthun

Patent Trial and Appeal Board

Oct 18, 2016

14064279 (P.T.A.B. Oct. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/064,279 10/28/2013
21005 7590 10/20/2016
HAMILTON, BROOK, SMITH & REYNOLDS, P,C
530 VIRGINIA ROAD
P.O. BOX 9133
CONCORD, MA 01742-9133
Nils Arthun
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
MCA-731-10 9890
EXAMINER
KOCH, GEORGE R
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
10/20/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing.department@hbsr.com
helpdesk@hbsr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NILS ARTHUN
Appeal2016-006176
Application 14/064,279
Technology Center 1700
Before CHUNG K. PAK, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant, Merck Chemicals and Life Science AB, 2 appeals under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-14. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 We cite to the Specification ("Spec.") as filed and amended on Oct. 28,
2013; Final Office Action ("Final Act."); Examiner's Answer ("Ans."); and
Appellant's Appeal Brief ("App. Br.") and Reply Brief ("Reply Br.").
2 Appellant's predecessor-in-interest, Millipore AB, identified the sole
inventor as deceased and filed this application pursuant to 37 C.F.R. § 1.64.
Substitute Statement in Lieu of an Oath or Declaration for Reissue Patent
Application, filed Oct. 28, 2013. Ownership purportedly transferred to
Appellant prior to institution of this Appeal. App. Br. 3.
Appeal2016-006176
Application 14/064,279
BACKGROUND
Appellant filed this application seeking Reissuance of U.S. Patent No.
7,959,754. 3 Particularly, Appellant seeks to correct a purported error in the
'754 patent specification by changing the priority claim from "a divisional"
to "a divisional reissue" of Reissue Application Ser. No. 11/305,813 ("the
'813 application"). 4 The sole issue in dispute is whether that error is
correctable under 35 U.S.C. § 251.
REJECTIONS
The Examiner maintained the following grounds of rejection: 5
I. Claims 1-14 stand rejected under 35 U.S.C. § 251 as being
based upon a defective reissue declaration.
II. Claims 1-14 also stand rejected under 35 U.S.C. § 102(b) as
unpatentable over US 6,779,575 ("the '575 patent"), issued
on August 24, 2004.
III. Claims 1-14 stand provisionally rejected on the ground of
non-statutory obviousness-type double patenting over each of
US Application No. 13/613,669, 13/536, 199, and 13/613,658.
3 We refer to US 7,959,754 as "the '754 patent" and the application from
which it issued, Serial No. 12/422,835, as "the '835 application."
4 The '813 application issued as RE41169 and is a broadening Reissue of the
'575 patent.
5 Ans. 2-11; Final Act. 7-9, 17-21. Additional grounds of rejection under
35 U.S.C. § 103(a) were withdrawn. Ans. 11-12.
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Application 14/064,279
DISCUSSION
I
With regard to Rejection I, the Examiner found that the specified error
in Appellant's Reissue Declaration-that the '835 application claimed
priority as a divisional application rather than a divisional reissue
application-is not an error "upon which a reissue can be based." Final Act.
7. In support of that finding, the Examiner relied on the fact that the '83 5
application filing papers included a "utility application transmittal form
PTO/SB/05 instead of a reissue transmittal form, PTO/SB/50." Id. at 8. The
Examiner additionally relied on the lack of a "notice of multiple reissue
applications" which would have been required under 37 C.F.R. 1.77(a) had
the '835 application been intended as a Reissue Application. Id. Finally, the
Examiner referred to a series of events arising during prosecution which
should have alerted the Applicant to the fact that the application was being
handled as a divisional application and not a divisional reissue application. 6
Id. In light of these facts, the Examiner found that the original choice to file
the '83 5 application as a regular divisional, rather than as a divisional
reissue, was deliberate and therefore not correctable under 35 U.S.C. § 251.
Id. at 7-9; Ans. 13 ("[T]he facts indicate that applicant's intent was to file
the 12/422,835 application as a Baumann [sic] application and therefore no
error is present."). 7
6 Particularly, the Examiner referenced the official filing receipt, Notice to
File Corrected Application Papers, and Notice of Publication of Application
as indicators that the application was not being processed as a reissue
application. Final Act. 8.
7 The Examiner's reference to a Bauman application refers to a non-reissue
application which claims benefit of an earlier-filed, co-pending Reissue
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Application 14/064,279
Appellant counters that the '835 application filing papers included
indicia consistent with the filing of a Reissue Application-namely, a
reissue oath/ declaration pursuant to 3 7 C.F .R. 1.17 5 and a specification
consisting of a copy of the '575 patent in double-column format. 8 App. Br.
6-7.
Part (a) of the reissue statute provides:
Whenever any patent is, through error, deemed wholly or
partly inoperative or invalid, by reason of a defective
specification or drawing, or by reason of the patentee claiming
more or less than he had a right to claim in the patent, the Director
shall, on the surrender of such patent and the payment of the fee
required by law, reissue the patent for the invention disclosed in
the original patent, and in accordance with a new and amended
application, for the unexpired part of the term of the original
patent. No new matter shall be introduced into the application for
reissue.
35 U.S.C. § 251(a) (2011). "The statute is remedial in nature; based on
fundamental principles of equity and fairness, and should be construed
liberally." In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986). But, the
statute's reach is not without limits. Id. ("[N]ot every even or circumstance
that might be labeled 'error' is correctable by reissue."); In re Serenkin, 479
F.3d 1359, 1362 (Fed. Cir. 2007) (explaining that "the deliberate action of
an inventor or attorney during prosecution generally fails to qualify as a
correctable error under§ 251 ").
application, as is permitted in certain circumstances pursuant to In re
Bauman, 683 F.2d 405 (CCPA 1982).
8 Appellant's argument that the Examiner's initial omission of a rejection
under 35 U.S.C. § 102(b) over the '575 patent demonstrates that the Office
treated the '813 application a Reissue Application, App. Br. 4, is meritless.
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Application 14/064,279
Here, we find that the reissue oath/ declaration which accompanied the
'835 application filing papers is sufficient to support Appellant's claim that
the '83 5 application was intended to be filed as a reissue application, and,
correspondingly, that the priority claim as a divisional application rather
than a divisional reissue application was made in error. The filing of the
'835 application in double-column format is consistent with that finding.
Our decision also is informed by the fact that the '835 application was filed
more than one year after issuance of the '575 patent, such that any claim in a
non-reissue divisional application necessarily would be barred as
unpatentable under 35 U.S.C. § 102(b) over the '575 patent. 9 In other
words, the filing of the '835 application as a regular divisional application in
this instance would have been pointless. Because a preponderance of the
evidence of record supports that the priority claim in the '835 application
was made in error, and such error renders the resulting '754 patent wholly or
partly inoperative or invalid, we find that the error specified in this Reissue
Application is correctable pursuant to § 251.
For that reason, we do not sustain Rejection I.
However, we do not agree that the error which Appellant seeks to
correct by reissue merely "is an error appearing in the priority claim in the
specification of the '754 Patent." App. Br. 5. As the Examiner correctly
noted, the consequence of correcting the erroneous priority claim also
changes the status of the '754 patent from one originating from a regular
utility application to one originating from a reissue application. Final Act. 9;
9 See Bauman, 683 F.2d at 410 ("[A] regular application continuing from a
reissue application is not entitled to the filing date of the patent.").
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Application 14/064,279
Ans. 14. As such, the '754 patent claims sought to be reissued in this case
must be examined for compliance with all of the provisions relating to a
reissue application, including: the contents of any Inventor's oath or
declaration for a reissue application (37 C.F.R. § 1.175); the proper
presentation of the specification, including the claims, and any amendments
particular to reissue applications (37 C.F.R. § 1.173); the sufficiency of any
notice that more than one reissue application has been filed (3 7 C.F .R.
1.177); and the omission of new matter (35 U.S.C. § 251(a)). Moreover, the
reissuance of method claims relative to the device claims issued in the
original '575 patent requires consideration of whether the reissue application
satisfies the written description requirement of 35 U.S.C. § 112. See Antares
Pharma, Inc. v. Medac Pharma Inc., 771F.3d1354, 1362 (Fed. Cir. 2014)
("[F]or § 251, it is not enough that an invention might have been claimed in
the original patent because it was suggested or indicated in the specification.
Rather, the specification must clearly and unequivocally disclose the newly
claimed invention as a separate invention.") (internal quotations and citation
omitted). Because the '754 patent was seemingly issued following
examination under non-reissue provisions, compliance with these reissue-
specific provisions were not addressed and are not before us in this appeal.
II
Because Appellant's correction through this Reissue Application
results in this application being a divisional reissue of the '575 patent, the
'575 patent is not prior art within the meaning of 35 U.S.C. § 102(b).
Accordingly, we also do not sustain Rejection II.
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Application 14/064,279
III
Appellant does not contest the Examiner's three separate provisional
rejections, except to state that terminal disclaimers will be filed and an
application upon which one of the provisional rejections was based has been
abandoned. See App. Br. 4--18; Reply Br. 9. Thus, Appellant does not
identify error in these provisional rejections, and we summarily sustain
them.
CONCLUSION
Rejections I and II of claims 1-14 are not sustained.
Rejection III of claims 1-14 is sustained.
DECISION
The Examiner's decision rejecting claims 1-14 is affirmed.
AFFIRMED
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