Ex Parte Wellerdieck et al

Board of Patent Appeals and Interferences

May 4, 2007

10200207 (B.P.A.I. May. 4, 2007)

The opinion in support of the decision being entered is not binding precedent
of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KLAUS WELLERDIECK,
URS WEGMANN, and KARL HOEFLER
____________

Appeal 2007-1119
Application 10/200,2071
(Reissue application of U.S. Patent No. 6,248,219 B1)
Technology Center 1700
____________

Decided: May 4, 2007
____________

Before: RICHARD E. SCHAFER, RICHARD TORCZON, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed 23 July 2002. The real party in interest is identified as
Unaxis Balzers AG of Fuerstentum, Lichtenstein.
Appeal 2007-1119
Application 10/200,207

A. Introduction
Applicants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1–25, all the claims of their application for reissue of U.S. Patent
6,248,219 B1 ("219 patent"). We have jurisdiction under 35 U.S.C. § 6.
Oral argument was heard on 2 May 2007 before a court reporter.
This appears to be a case of first impression, in which Applicants seek
to expand the term of their patent, but not to change the scope of the
patented subject matter. Specifically, Applicants argue that had they filed
continuing applications under 37 C.F.R. § 1.53(b) rather than erroneously
under § 1.53(d), they would have been granted a patent having a term of
17 years from the date of issue, that being greater than the term of 20 years
from the earliest application specifically referenced in their application, as
provided for by 35 U.S.C. § 154(c).
We hold that Applicants are not entitled, under 35 U.S.C. § 251, to the
relief they seek. In particular, Applicants are precluded by the statute from
expanding the term of their originally issued patent. Moreover, we hold that
§ 154(c) would not have applied to continuing applications filed under
Rule 53(b), so the specific correction they seek would not yield the
expanded term they believe they are entitled to. Finally, even if the relief
they seek were available under the statute and would yield the expanded
term they want, Applicants have failed to show that the choices they made to
file continuing applications under Rule 53(d) were actually inadvertent
errors correctable by reissue.
Accordingly, the Examiner's rejection is AFFIRMED.
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B. Background and Findings of Fact
The following findings of fact and those set out in the opinion are
supported by a preponderance of the evidence of record. Any conclusions of
law should be treated as such.
The Reissue Application
1. The invention relates to a process and an apparatus for sputtering the
surface of an object. However, because no aspect of the technology is
necessary to understand the issues on appeal, we shall not describe the
invention further.
2. According to Applicants, the real party in interest is Unaxis Balzers
AG of Fuerstentum, Lichtenstein. (Supplemental Appeal Brief ("Br."), filed
7 September 2006, at 1.)
3. Applicants seek reissue of U.S. Patent 6,248,219 B1 ("219 patent").
Prosecution History of the 219 Patent
4. The 219 patent issued from application 08/418,256
("256 application"), filed on 4 April 1995.
5. The first sentence of the specification of the 219 patent reads:
This is a continuation of application Ser. No.
08/250,093, filed May 26, 1994 now abandoned, which is
a continuation of Ser. No.
08/033,142, filed Mar. 16, 1993 now abandoned, which
is a continuation-in-part of Ser. No.
07/829,739, filed Jan. 31, 1992, now abandoned, which is
a continuation of Ser. No.
07/579,068, filed Sep. 6, 1990, now abandoned, which is
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Application 10/200,207

a continuation of Ser. No.
07/047,896, filed 7 May 1987, now abandoned.
(219 patent at 1:4–11; indentation and line-breaks added.)2
6. According to the USPTO Patent Application Location and Monitoring
("PALM") database, a final rejection was entered in the 256 application on
16 May 1996.
7. The PALM database indicates that a "Request under Rule 129 to
Reopen Prosecution" was filed and granted on 21 November 1996.
8. "Rule 129" refers to 37 C.F.R. § 1.129 (1995).
9. According to the PALM database, in due course a final rejection was
entered on 21 May 1998.
10. The PALM database records the filing of a "Continuing Prosecution
Application Continuation" ("CPA") on 21 January 1999.
11. The PALM database indicates a final rejection was entered 4 February
1999.
12. According to the PALM database, a second CPA was filed on
6 December 1999.
13. In due course, the 219 patent issued on 19 June 2001.
14. The face of the 219 patent displays the following notice:
This patent issued on a continued prosecution application filed
under 37 C.F.R. 1.53(d), and is subject to the twenty year patent
term provisions of 35 U.S.C. § 154(a)(2).

2 The 219 patent also claims the benefit of priority under 35 U.S.C. § 119 of
a Swiss application filed 23 June 1986.
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Application 10/200,207

Prosecution History of the 207 Reissue Application
15. Applicants, in their Reissue Application Declaration ("Reissue
Declaration"), filed 23 July 2003, state:
We verily believe the original patent to be wholly or
partly inoperative or invalid, by reason of the patentees
claiming less than they had the right to claim in the patent.
Applicants seek to claim the benefit of the full term of the
original patent, which term was abridged by the erroneous
filing of a Continued Prosecution Application under
37 C.F.R. § 1.53(d) instead of a continuing application under
37 C.F.R. § 1.53(b), thereby subject[ing] the original patent to
the twenty-year patent term under 35 U.S.C. § 154(a)(2).
All errors corrected in this reissue application arose
without any deceptive intention on the part of the applicants.
(Reissue Declaration at 2.)
16. No other statement or explanation of how the error occurred appears
to be in the record before us.
17. The record of the prosecution history does not appear to be
remarkable, and Applicants have not raised any procedural complaints by
petition.
18. The Examiner appears to have acted with exceptional promptness
whenever the reissue application was placed in the Examiner's docket.
The Examiner's Rejection
19. The Examiner, relying on the guidance provided by the Manual of
Examining Procedure ("MPEP") § 1405 (8th Ed., apparently Revision 2,
published May 2004) rejected the claims on the basis that the error alleged in
the Reissue Application Declaration was not an error correctable by reissue.
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(Examiner's Answer, mailed 29 September 2006, at 3; Final Rejection
mailed 3 September 2004, at 2.)
20. MPEP § 1405 reads in relevant part:
The maximum term of the original patent is fixed at the time
the patent is granted. While the term may be subsequently
shortened, e.g., through the filing of a terminal disclaimer, it
cannot be extended through the filing of a reissue.
Accordingly, a deletion in a reissue application of an earlier-
obtained benefit claim under 35 U.S.C. 120 will not operate to
lengthen the term of the patent to be reissued.
(MPEP, 8th Ed., Rev. 5 (August 2006)3 (emphasis original).)
Applicants' Argument
21. Applicants argue that the purpose of the reissue statute is remedial,
and errors without deceptive intent are correctable. (Br. at 8.)
22. More specifically, Applicants argue that their error was to file CPAs
under 37 C.F.R. § 1.53(d), instead of continuing applications under
37 C.F.R. § 1.53(b). (Br. at 9.)
23. Appellants argue that had they filed under Rule 53(b), they would
have been entitled to a term of 17 years from the date of issue under the
terms of 35 U.S.C. § 154(c). (Br. at 2 and 9; clarified at oral argument.)
24. Applicants urge that the examiner and the MPEP fail to explain why
Applicants' error "is not an 'error without any deceptive intent' unequivocally
falling within in patent statute [35 U.S.C. § 251]." (Br. at 7.)

3 MPEP § 1405 has not been amended since Rev. 2, the version used by the
Examiner at the time of the rejection.
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25. Applicants complain that "[t]his approach makes it impossible for the
applicant to respond as it provides no real explication of the Office's
reasoning." (Br. at 8.)
26. More specifically, Applicants argue that they should have been
permitted to correct their filing error by treating the CPAs as having been
filed under 37 C.F.R. § 1.53(b). (Br. at 9.)
27. Applicants argue further that the "sole basis for denying the reissue
request . . . is based solely on an interpretation of 35 U.S.C. § 154(c), (which
interpretation itself is highly questionable subject at the appropriate time and
manner to challenge as to correctness) found, as best be determined . . . in
the Official Gazette notice of February 24, 1988." (Br. at 9–10.)
C. DISCUSSION
The section of the patent statute providing for correction of errors in a
patent by reissue of the patent reads, in relevant part:
Whenever any patent is, through error without any deceptive
intention, deemed wholly or partly inoperative or invalid . . . 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.
35 U.S.C. § 251, first paragraph (emphasis added).
Applicants, in their words:
seek to claim the benefit of the full term of the original patent,
which term was abridged by the erroneous filing of a Continued
Prosecution Application under 37 C.F.R. § 1.53(d) instead of a
continuing application under 37 C.F.R. § 1.53(b), thereby
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subject[ing] the original patent to the twenty-year patent term
under 35 U.S.C. § 154(a)(2).
(Reissue Declaration at 2.) The practical effect of having filed Continued
Prosecution Applications is that the term of the 219 patent expires 20 years
from 7 May 1987, i.e., on 7 May 2007, which is five days after the date on
which oral argument was held. See 37 C.F.R. § 1.53(d) (1998)4. In
contrast, Applicants assert that they are entitled to "the full term of the
original patent," which they argue should have been 17 years from the date
of issue.

4 37 C.F.R. § 1.53(d) reads in most relevant part:
(7) A request for an application under this paragraph is the
specific reference required by 35 U.S.C. 120 to every
application assigned the application number identified in such
request. No amendment in an application under this paragraph
may delete this specific reference to any prior application.
37 C.F.R. § 1.53(d)(7) (1998) (emphasis added).
This provision was explained in the Notice of Final Rule Making
issued in 1997 in the following words:
an application under § 1.53(d) cannot be amended to delete the
specific reference to the prior application, as well as the specific
reference to any application to which the prior application
contains a specific reference under 35 U.S.C. 120, 121,
and 365(c). As an application under § 1.53(d) will also contain
a specific reference to at least one other application under
35 U.S.C. 120, 121, and 365(c), the expiration date under
35 U.S.C. 154(b)(2) of any patent issuing from the application
under § 1.53(d) will be based upon the filing date of the prior
application (or the earliest application to which the prior
application contains a specific reference under 35 U.S.C. 120,
121, and 365(c)).
62 Fed. Reg. 53145 (10 October 1997) (emphasis added).
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We begin our consideration of the merits of this appeal by inspecting
the language of the statute for its plain meaning. Medrad, Inc. v. Tyco
Healthcare Group LPC, 466 F.3d 1047, 1051, 80 USPQ2d 1526, 1528 (Fed
Cir. 2006) (reh'g and reh'g en banc denied) ("If the words [of the statute] are
unambiguous, no further inquiry is usually required." (citation omitted)).
Section 251 states that if the Director reissues the patent, it shall be reissued
"for the unexpired part of the term of the original patent." These words are
plain, direct, and unambiguous. The term of the original patent is set upon
issuance, and, by the terms of the statute, reissue cannot operate to extend
that term. As the MPEP puts it, "[t]he maximum term of the original patent
is fixed at the time the patent is granted." MPEP § 1405, 8th Ed., Rev. 5.
While circumstances can be imagined under which patent term is shortened
by requirements to disclaim term, e.g., to remove a rejection for
obviousness-type double patenting, the expansion of patent term by reissue
is foreclosed by the plain language of the statute.
Based on our review of the record, we find that the Examiner,
following the MPEP, simply applied the plain language of the statute in
holding that the error asserted by Applicants was not an error correctable by
reissue. Accordingly, we reject Applicants' argument that they have not
been accorded adequate notice of the basis of the Office's position.
We therefore AFFIRM the Examiner's rejection on the same basis as
the Examiner: section 251 expressly forbids reissue expanding the term of a
reissued patent.5

5 We also note that the reissue application was filed 23 July 2003, more than
two years after the 19 June 2001 issue date of the 219 patent. It is arguable,
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Even if the expanded patent term sought by Applicants were not
barred by the plain language of § 251, the specific remedy Applicants seek,
namely, correcting their filings under Rule 53(d) to filings under Rule 53(b),
would not afford them the relief they seek. Their interpretation of 35 U.S.C.
§ 154(c) is incorrect.
Section 154(c) reads in relevant part:
The term of a patent that is in force on or that results from an
application filed before the date that is 6 months after the date
of the enactment of the Uruguay Round Agreements Act shall
be the greater of the 20-year term as provided in subsection (a),
or 17 years from grant, subject to any terminal disclaimers.
35 U.S.C. § 154(c)(1). The Uruguay Round Agreements Act was enacted on
8 December 1994. Thus § 154(c) applies to patents that result from
applications filed before 8 May 1995. The original 256 application is such
an application because it was filed on 4 April 1995. Had a patent issued
from the 256 application, its term would have been 17 years from the date of
issue, because that term is greater than 20 years from the date of the earliest
application specifically referenced under section 120, 121, or 365(c) of
title 35, United States Code, as provided in subsection (a) of § 154.
Patent term is set in 35 U.S.C. § 154(a)(2), which reads:
Subject to the payment of fees under this title, such grant shall
be for a term beginning of the date on which the patent issues
and ending 20 years from the date on which the application for
the patent was filed in the United States or, if the application
contains a specific reference to an earlier filed application or
applications under section 120, 121 or 365(c) of this title, from
the date on which the earliest such application was filed.
but not clear, that Applicants are seeking a broadening Reissue. We do not
base our decision on this point.
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Pursuant to § 534 of Pub. L. 103-465, the effective date of § 154(a)(2) is
8 June 1995.
A continuing application is a distinct application having a filing date
that is different from the filing date of the parent application. A continuing
application is entitled to the benefit of a previously filed, copending
application if it contains a specific reference to the previously filed
application and satisfies the other requirements of 35 U.S.C. § 120. Thus,
the CPAs filed by Applicants in this case, if filed under Rule 53(b) as
continuations of the 256 application, would have been granted filing dates of
21 January 1999 and 6 December 1999. Because these dates are not before
8 May 1995, the provisions of 35 U.S.C. § 154(c)(1) would not have applied
to patents issuing from the hypothetical applications filed under Rule 53(b).
This interpretation of § 154(c)(1) is a straight reading of what is a "patent
. . . that results from an application filed before . . . ". We have considered
the Official Gazette notice referred to by Applicants (1207 Off. Gaz. Pat.
Office 83 (24 February 1988)), which is a reprint of the notice of "Interim
rule with request for comments," 63 Fed. Reg. 5732 (4 February 1988),
although Applicants have not explained what interpretation they think is
expressed there. The only interpretation we have found is consistent with
the one set out supra: "[a]s the continued prosecution application practice
was not in effect prior to June 8, 1995, no patent issuing from a continued
prosecution application is entitled to the provisions of 35 U.S.C. § 154(c)."
Id. at 5733, quoting 62 Fed. Reg. 53144 (1997), 1203 Off. Gaz. Pat. Office
at 74 (response to comment 25) (1977).
Accordingly, the specific correction sought by Applicants would not
result in a reissued patent having a term of 17 years from the most recent
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filing date. In fact, the term of such a patent would have been identical to
the term they now have, unless Applicants chose to forgo the benefit of
§ 120 to one or more of the parent applications. That course of action,
however, would subject them to prior art dating from 23 June 1986 (the
filing date of their Swiss application) until whatever benefit date they chose.
At oral argument, Applicants indicated that they had always intended to
keep their § 120 benefit dates.
Finally, even if the requested relief were statutory and the requested
corrections would have yielded the result Applicants seek, Applicants have
not shown that their error was one that is correctable by reissue. As the
Federal Circuit has explained, "[t]he reissue statute was not enacted as a
panacea for all patent prosecution problems, nor as a grant to the patentee of
a second opportunity to prosecute de novo his original application." In re
Weiler, 790 F.2d 1576, 1582, 229 USPQ 673, 677 (Fed. Cir. 1986). Thus,
"not every event or circumstance that might be labeled 'error' is correctable
by reissue." Id. at 1579, 229 USPQ at 677. As emphasized in a recent
decision, "Our case law holds that the deliberate action of an inventor or
attorney during prosecution generally fails to qualify as correctable error
under § 251." In re Serenkin, 479 F.3d 1359, 1362, 81 USPQ2d 2011, 2014.
In Serenkin, the court found that the applicant "intentionally and knowingly
surrendered his right to a claim of priority, in exchange for a benefit, and is
now unhappy with his choice." 479 F.3d at 1364, 81 USPQ2d at 2014. The
court distinguished a number of cases, including several cited by Applicants
to us, as being based on errors that "were the result of inadvertence,
accident, or mistake, which are clearly appropriate bases for reissue. . . . The
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distinction is between a genuine error, or mistake, and a deliberate, but
subsequently found to be disadvantageous, choice." Id.
Filing an application, including filing a continuing application,
requires a number of positive steps, including determining what sort of
continuing application is to be filed, whether any preliminary amendments
are appropriate, whether the inventorship remains correct, whether
copendency is maintained, et cetera. While some cases, including certain
cases cited by Applicants, indicate that errors correctable by reissue can
arise during the filing of a continuing application, those cases also indicate
that the error was determined on the basis of a record that permitted the
finder of fact to weigh evidence for and against the alleged inadvertence of
the error.
In the present case, the only "evidence" of the nature and manner of
the alleged error is Applicants' Reissue Declaration. Although "sworn," this
amounts to mere pleading, as no facts are alleged that support the
inadvertence of the alleged error. Applicants argue:
[a]ll that occurred here was an erroneous use of a PTO
procedure (namely, the Continued Prosecution Application
Procedure), instead of a regular continuing application under
37 C.F.R. § 1.53(b), without awareness of a virtually secret
PTO policy that is in violation of the Administrative Procedure
Act because that policy is tantamount to a rule that affects
rights without proper statutory promulgation.
(Supplementary Reply Brief under 37 C.F.R. § 41.41 at 2, filed
29 November 2006.) We have already addressed the substance of
Applicants' rhetorical flourishes; the difficulty with the remainder of this
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argument is that there is no evidence that could potentially enable us to
conclude that what had happened was the result of a "trivial clerical error."
Rather, Applicants chose a course of ex parte prosecution, namely, to
file CPAs under Rule 53(d), and now they regret the consequences. Notice
of those consequences was published in the Federal Register on
promulgation of the final rule. See , e.g,. 62 Fed. Reg. at 53144 and 53245
(10 October 1997). Moreover, by choosing that course, they gained the
benefit of avoiding challenges to their claimed subject matter from all art
published after 23 June 1986, their Swiss foreign priority date, and as late as
6 December 1999. Granting Applicants' request for a full examination of
their claimed subject matter based on a more recent priority date would be
granting them the "second opportunity to prosecute de novo" their original
application that the court precluded in Weiler. As our reviewing court has
held, such "errors" are not correctable under § 251. Accordingly, Applicants
have failed to show error by the Examiner.
We have reviewed the cases Applicants cited to the Examiner, but we
conclude that they are not persuasive because the facts on which those cases
rest are not sufficiently similar to the facts of this case that their holdings
apply here.
D. ORDER
In view of the foregoing considerations, it is:
ORDERED that the Examiner's rejection is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.(a).
AFFIRMED
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lp
James F. McKeown
Crowell & Moring, LLP, Intellectual Property
Group
P.O. Box 14300
Washington, DC 20044-4300
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