Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE THE SUCCESSOR IN INTEREST OF ROBERT S. MCGAUGHEY
Appeal No. 87-3396
March 4, 1988
Request for Reexamination filed March 10, 1986, Control No. 90/000,965, for the reexamination of Patent No. 3,646,651, issued March 7, 1972, based on Application Serial No. 505,692, filed October 29, 1965. Abrasion And Corrosion Resistant Composite Structural Materials And The Like.
Walter J. Blenko, Jr. et al. for appellants [FN1]
Primary Examiner--Mark Rosenbaum
Henon, Torchin, Stahl, Craig, Steiner, Pendegrass, Lynch and W. Smith
This is an appeal from the holding of the examiner that claims 1 to 26 are unpatentable under 35 USC § 103. There are no other claims pending in this reexamination. The panel considering this appeal has been expanded in view of the importance of the legal issues involved. A definitive ruling on these issues is necessary for the orderly administration of reexamination cases within the PTO.
The patent upon which this reexamination proceeding is conducted is directed to a corrosion resistant structure and, in particular, to a corrosion resistant roll such as used in a steel mill. A resin containing a mat or cloth of fibers is applied to a metal roll and then an elastomer cover is bonded to the resin. The choice of materials to be used as the resin and mat are set forth in the patent in column 2, lines 22-39. The materials for the elastomer are set forth in column 2, lines 61-76.
The request for reexamination was directed solely to claims 12, 22 and 26. That is, the requestor, S.W. Industries, Inc. (Stowe Woodward), cited prior art patents and printed publications that raised a new question of patentability with regard to claims 12, 22 and 26. However, all claims now stand rejected. Important legal issues have arisen due to the nature of that rejection. During prosecution of this reexamination application, claims 12 and 22 were amended. All other claims, including claim 26, remain unchanged from the corresponding patent claims.
12. A composite abrasion and corrosion resistant structure comprising a base member, a relatively hard acid-resistant resin layer selected from the group consisting of polyester, phenolic and epoxy resins adhered to said base member, a substantially coextensive mat of fibrous material adhered to and embedded in said layer selected from the group consisting of fiber glass and fibers of polyvinyl chloride copolymer, polyacrylonitrile, polyester, polyamide, asbestos, and crocidilite, and an erosion-resistant elastomeric material covering adhered to said resin layer.
22. A composite abrasion and corrosion resistant structure comprising a base member, a relatively hard acid-resistant resin layer adhered to said base member, a coextensive reinforcing mat of fibrous material adhered to and partially embedded in said resin layer, a second resin layer bonded to said reinforcing mat and to said first-mentioned resin layer, and an erosion-resistant elastomeric material bonded to said second resin layer.
*2 26. A polyurethane rubber covered roll, comprising a metal roll core, a fiber layer impregnated with a thermosetting resin and wrapped on and united to the periphery of said core, and a polyurethane rubber layer encircling and united to said fiber layer.
We note that claims 24 and 25 are claims copied from U.S. Patent No. 3,451,112, issuing June 24, 1969, to Karmell et al. and appellant was awarded priority in interference proceedings (Interference No. 97,088). Claim 26, copied from U.S. Patent No. 3,490,119, issuing January 20, 1970, to Fukuyama et al. was the count of another interference proceeding in which appellant was awarded priority (Interference No. 97,504). [FN2]
The patent involved herein is also involved in litigation in the United States District Court for the District of Massachusetts (Civil Action No. 85- 3750-S) and in the United States District Court for the Western District of Virginia (Civil Action No. 85-0149-H). Reference is made to pages 6 and 7 of the brief for further details regarding those litigations. [FN3] The United States District Court for the Western District of Virginia has granted a stay of three months, beginning October 8, 1987, in order that this Board may render a decision on the examiner's final rejection.
The references of record relied on by the examiner are:
Pigott et al. (Pigott) 3,352,955 November 14, 1967
Dunn, "Epoxy Resins In Anti-Corrosive Applications," Corrosion Technology, August, 1959, pages 223 to 226.
The examiner further relies on an admission of prior art [FN4] set forth in the patent under reexamination. The examiner refers to column 1, line 37 through column 2, line 13 of the patent as setting forth the admission of prior art.
Additional evidence of record:
The affidavit of Borge Wahlstrom, submitted under 37 CFR 1.132 on December 22, 1986.
The affidavit of Brendan W. Kelly, submitted under 37 CFR 1.132 on December 22, 1986.
Birkin 3,042,995 July 10, 1962
(cited during the original prosecution of the McGaughey patent)
Claims 1 to 26 stand rejected as being unpatentable under 35 USC § 103 in view of prior art. With respect to all of the claims, the examiner cites the admitted prior art in view of Dunn as evidence of obviousness. Alternatively, with respect to claim 26 only, the examiner cites the admitted prior art in view of Dunn and further in view of Pigott as evidence of obviousness.
The legal questions which have arisen in this appeal are: (1) What materials can be relied upon in rejecting claims once a reexamination proceeding has been ordered? (2) With specific regard to this appeal, can an admission established in the record (such as the description of the prior art given in appellant's patent at column 1, line 37 to column 2, line 13), be relied upon by the examiner?
*3 The dissent argues that a fair reading of the reexamination statute, 35 USC §§ 301-307, clearly limits the evidence which may be considered in the rejection of claims in a reexamination proceeding only to prior patents and printed publications. The dissent further implies that 37 CFR 1.106(c), 1.550(a) and 1.552(a) as well as M.P.E.P. §§ 2209, 2254 and 2258 are confusing and may be in conflict with the statute. Finally, the dissent maintains that the legal issues in this case have already been decided in the previous expanded panel decision in Ex parte Horton, 226 USPQ 697 (BPAI 1985).
Initially we point out that we are not reviewing a request for reexamination. We are reviewing a rejection which has arisen in a reexamination proceeding after a request for reexamination was ordered based on prior patents and printed publications. It appears that the decision in Ex parte Horton, supra, and the dissent have confused the requirements followed when a request for reexamination is under consideration with the requirements to be followed after the request has been made and granted. [FN5]
The reexamination statute is remedial in nature since its function is to correct long-standing problems in the existing statute. [FN6] A basic purpose of the statute is to provide a more efficient resolution of validity issues without recourse to the expensive and time consuming patent litigation which was often necessary under the existing provisions of the patent statute. [FN7] A further purpose was to provide an aid to the courts and to the public by providing the examiner's input as to patentability in light of new information on preexisting technology which has arisen since the particular patent under reexamination issued. [FN8] It is axiomatic that statutes which are remedial in nature are to be construed liberally. Tcherepnin v. Knight, 389 U.S. 332 (1967); Rettig v. Pension Benefit Guaranty Corp., 744 F.2d 133 (D.C.Cir.1984); and International Union, U.A.W. v. Marshall, 584 F.2d 390 (D.C.Cir.1978). Consequently, a narrow interpretation of the reexamination statute which would frustrate the basic purposes of the statute is to be avoided.
A. The Reexamination Request
Turning to the specific provisions of the statute, we note that section 302 states that a request for reexamination may be filed on the basis of any prior art cited under section 301 of Title 35. Section 301 states that the prior art "--consist[s] of [FN9] patents or printed publications--." Thus it is clear, on the basis of section 302, that a consideration of a request for reexamination is limited to prior patents and printed publications which are then construed in light of the record [FN10] to determine whether a substantial new question of patentability has been raised. This is consistent with the further intent of the statute that a reexamination proceeding is to be ordered under prescribed conditions to prevent the undue expense and harassment experienced with similar foreign reexamination and protest proceedings. [FN11]
B. The Reexamination Proceeding
*4 After the Commissioner has determined that a substantial new question of patentability has been established by the requestor under section 303(a) and a reexamination order has been issued pursuant to section 304, the actual conduct of the reexamination proceedings is dictated by section 305 of the statute. Section 305 specifically provides that "--reexamination will be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133 of this title." Section 305 does not narrowly limit the Commissioner to the same restrictions recited in sections 301 and 302. Contrary to the position taken by the dissent, section 132 of Title 35 is not wholly procedural. [FN12] This section provides that "[w]henever--any claim--is rejected--the Commissioner shall notify the applicant thereof, stating the reasons for such rejection--together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application--." We hold that it would be contrary to sections 132 and 305 and that it would frustrate the intent of the reexamination statute if we were to rule that the examiner cannot state valid reasons for a rejection based upon information established in the record together with other references as may be useful to the reexamination patentee in determining how to proceed further.
This is not to say that the Office has been willing to open reexamination to any type of evidence that is available to the examiner during initial examination. The Commissioner has construed section 305 conservatively. Facts, including admissions which have already been established in the record, have been authorized for use in reexamination proceedings. See 37 CFR 1.106(c) and M.P.E.P. § 2258. [FN13] The PTO has not authorized other types of evidence such as on-sale bars, public use issues or issues relating to fraud. Thus, the implication by the dissent that this decision will result in such issues being authorized is unfounded. For purposes of this appeal, we need not and do not consider whether other facts besides admissions established in the record are authorized under section 305.
In the initial examination of patent applications, admissions by the applicant are considered for any purpose including evidence of obviousness under section 103. See In re Nomiya, 549 F.2d 566, 184 USPQ 607 (CCPA 1975); In re Hellsund, 474 F.2d 1307, 177 USPQ 170 (CCPA 1973); and In re Garfinkel, 437 F.2d 1000, 168 USPQ 659 (CCPA 1971). Those holdings are clearly in accord with sections 132 and 133 and we hold that they are incorporated into section 305. Moreover, in at least one prior decision admissions in the specification of the patent being reexamined were considered as part of the prior art under section 305. See Ex parte Seiko Koko Kabushiki Kaisha Co., 225 USPQ 1260, 1262 (Bd.App.1984).
*5 An admission is defined as an acknowledged, declared, conceded or recognized fact or truth. [FN14] Thus, admissions are simply facts. In this case the admission is an uncontroverted fact. Moreover, as pointed out in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), "the scope and content of the prior art are to be determined" as a preliminary factual finding prior to deciding a question of patentability under 35 USC § 103. We hold that an admission relating to prior art is a fact which is part of the scope and content of the prior art which every examiner is required to consider whether in an initial examination or in a reexamination proceeding. To ignore such admitted facts would constitute an unwarranted restriction on the scope and content of the prior art. Rejections based on such a standard would be meaningless. However, as stated in Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538, 218 USPQ 871, 879 (Fed.Cir.1983), "[i]t is jurisprudentially inappropriate to disregard any relevant evidence on any issue in any case, patent cases included." Thus to ignore prior art admissions would handicap any patentability determinations rendering them practically useless. How would such determinations aid the courts or the public by providing a meaningful input as to patentability? Congress certainly did not intend a useless procedure.
Moreover, admissions take different forms. For instance, the preamble of a Jepson claim [FN15] is an admission usable under 35 USC § 103 when that admission relates to the prior art of another. Reading & Bates Const. Co. v. Baker Energy, 748 F.2d 645, 223 USPQ 1168 (Fed.Cir.1984); In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982); In re Ehrreich, 590 F.2d 902, 200 USPQ 504 (CCPA 1979). Certainly, the preamble of a Jepson claim which relates to prior art of another should not be ignored in a reexamination. As we read section 305 of the statute, any unequivocal admission which would be considered in initial examination under sections 132 and 133 should be considered in a reexamination proceeding. [FN16] To construe section 305 otherwise would be to construe it in such a narrow fashion as to change the plain wording of the statute. Such a narrow interpretation finds no basis in the legislative history (note 6, supra), defies common sense and frustrates the purpose of the statute. Thus, we hold that prior art admissions established in the record are to be considered in reexamination proceedings. Insofar as Ex parte Horton, supra, may conflict with the views expressed herein, it is hereby overruled.
With respect to any possible conflict between 37 CFR 1.552(a) and 37 CFR 1.106(c), we note that 1.106(c) was adopted subsequent to 1.552(a) and that the Commissioner has already interpreted section 1.106(c) as not constituting a change in practice but simply as more closely reflecting current practice. In the notice concerning the adoption of the rule published at 47 Fed.Reg. 21,748 (May 19, 1982), 1019 O.G. 39 (1982), the following stated:
*6 "Five comments were submitted relating to new paragraph (c) of § 1.106. Two of the comments favored the paragraph as written and three recommended modification or clarification of the paragraph of ensure that it is not inconsistent with In re Ruff, et al., 45 CCPA 1037, 118 USPQ 340 (CCPA 1958), and subsequent decisions. No modification or clarification of the paragraph is considered necessary since the intent of the paragraph was not to change current practice, but was merely to emphasize the importance placed on admissions and to make § 1.106 more closely reflect current practice, which includes practice following In re Ruff, et al., and subsequent decisions. The amendments to 1.106 are adopted as proposed.
Section 1.106 is amended to include a new paragraph (c) which emphasizes the importance placed on admissions by the applicant or the patent owner in a reexamination proceeding insofar as matters affecting patentability are concerned. Paragraph (c) includes a reference to the use of rejections based upon facts within the knowledge of the examiner as provided in § 1.107. Paragraph (c) does not constitute a change in practice, but does result in § 1.106 more closely reflecting current practice" (underlining added).
In this case, the examiner has consistently asserted the admission as part of the rejection of claims 1 to 26. Appellant has never denied that admission, he has never attempted to rebut that admission, nor has he argued that consideration of the admission is incorrect. Thus, the admission stands in this case as an uncontroverted fact.
Finally, we note that the admission forms a substantial portion of appellant's patent specification. The dissent would apparently have the examiner ignore this portion of appellant's specification simply because there is no prior patent or printed publication in the record which conforms with the admission. We hold that to ignore this portion of appellant's specification is simply not warranted. Accordingly, we hold that the examiner has properly included patentee's admission in his rejection of claims 1 to 26.
C. The Merits
In Figure 1 of the patent at issue is disclosed a cutaway isometric view of one embodiment of the invention. A steel shaft (12) is provided as the axis about which a corrosion resistant roller is formed. Welded to the shaft (12) are steel annular disks (18) and welded to the disks (18) is a steel tubular member (16) (col. 3, lines 46-58).
The steel roller surface (16) is then cleaned and roughened to provide a good surface upon which the corrosion resistant coating is applied (col. 3, line 63 to col. 4, line 8). Thereafter, a plurality of resin saturated reinforcement layers forming a laminated structure are applied. The resin is either polyester, phenolic or epoxy (col. 4, lines 12-14), and the reinforcement materials are either fiber glass (col. 4, line 33), Dynel cloth or crocidilite fiber (col. 5, lines 29-35). The reinforcement takes the form of cloth, fiber, chopped fiber or a mat of fibers (col. 4, line 30 through col. 5, line 54). The reinforcement used may differ from layer to layer (col. 4, line 32 through col. 5, line 54), and the number of layers employed may be varied (col. 5, lines 12- 16).
*7 The composite surface is then roughened by sanding and is machined to ensure symmetry and to expose some of the reinforcing fiber (40) for good adhesion to the cover. The elastomeric resilient cover (44) is then applied (cols. 5-6, bridging par.). Depending on the elastomer used, different treatment of the resin surface is required (col. 6, line 3 et seq.). Neoprene is mentioned as one of the elastomers used for the covering (col. 6, lines 8- 14).
Figure 3 discloses an embodiment where the composite corrosion resistant materials are placed on other steel structures such as tanks, ducts, conveyors, weirs, fan blades or ventilating systems (col. 1, lines 13-30).
Many of the claims, such as claims 1 to 10, 16 to 18, and 24 to 26, are specific to the roller structure. However, claims 11 to 15 and 19 to 23 are not specific to rollers, and thus, read on any structure layered with such laminated corrosion resistant materials.
The admission appears in the patent beginning at column 1, line 37. The examiner maintains that the admission continues from line 37 through column 2, line 13. From our review of this subject matter, it is clear that the portion in column 2, lines 6 to 13 does not form part of the admission. Furthermore, we question whether the material from column 1, line 73 through column 2, line 6 relates to the admission or is a lead in to appellant's invention. Even though appellant does not question the admission, in an abundance of caution, we construe the admission as being limited to the material beginning at column 1, line 37 through column 1, line 72.
Patentee admits that roll bodies are usually fabricated from a hollow steel shell covered with an acid resistant cover such as Neoprene or other elastomeric material (col. 1, lines 50 to 56). Small ruptures in the Neoprene, which are not initially noticed and apparently do not affect the structural integrity of the roller, allow the corrosive liquids to seep into the steel core and to destroy it before excessive Neoprene damage is noted (col. 1, lines 58 to 66). Thus, the patentee acknowledges that the problem with the prior art rollers is that the steel core structure is destroyed by the seepage of corrosive material through the elastomeric cover prior to wearing out of the cover.
The Dunn article is a general purpose reference which discloses a variety of uses for epoxy resins especially in anti-corrosive and strengthening applications. The Dunn reference was not before the examiner when the original patent was under consideration. Dunn states (page 223, center col.) that epoxy resins adhere well to most materials, provide excellent electrical and mechanical properties and are resistant to chemical attack. Dunn further states that when epoxy resins are used for surface coatings (page 223, right-hand col.), they are abrasion resistant (page 224, right-hand col.), they have excellent anti-corrosion properties (page 224, center column) and they provide a hard, tough, corrosion-resistant surface. Dunn further states (pages 225-226, bridging par.) that chemical engineers use epoxy casting resins for components which must possess mechanical toughness combined with chemical resistance.
*8 With respect to chemical reaction vessels, Dunn states that in the past the metal sheeting protecting such vessels is often penetrated by the chemicals which attack the lagging [FN17] behind the protective outer surface so that it had to be replaced often (page 225, left-hand col.). By applying an epoxy resin-calico [FN18] coating such problems are prevented. Thus, Dunn addresses and solves the same essential problem recited in the prior art admission, supra.
Dunn also states that epoxy resins are excellent in laminated structures because interlaminar adhesion is strong and since epoxy resins adhere strongly to glass fibers. Thus, he continues, their strong adhesive properties enable composite assemblies incorporating metal, rubber or other plastic components (page 225 left & center cols.). The surface qualities of such laminates are excellent with an absence of cracking or crazing (page 225, center col.). Dunn states that laminating with glass fiber is a most appropriate method for making tanks, hoppers, ducting and other chemical plant (page 225, right-hand col.). As an adhesive, epoxy resins are widely used for bonding metal, glass, porcelain, rubber, concrete and plastics (page 226, left-hand col.).
Dunn further states that epoxy resins are often blended with inert mineral or fibrous fillers (page 226, left-hand col.). Epoxy resins are often reinforced with glass or other fabrics [FN19] to provide increased mechanical strength (page 224, right-hand col.). Other fillers include asbestos, glass and synthetic fibers (page 223, right-hand col.).
Turning now to the claims at issue, we note initially that claims pending before the Office in a reexamination proceeding are given their broadest reasonable interpretation consistent with the disclosure, in the same manner as claims undergoing initial examination or claims being examined in a reissue application, since such claims can be amended to define over the prior art. In re Queener, 796 F.2d 461, 230 USPQ 438 (Fed.Cir.1986), In re Etter, supra and In re Yamamoto, 740 F.2d 1569, 22 USPQ 934 (Fed.Cir.1984).
Appellant directs a substantial portion of his argument to claims 12, 22 and 26, with little argument directed to the remaining claims (Brief pages 26 and 30). Accordingly, we will address claims 12, 22 and 26 first.
CLAIMS 12, 22 AND 26
Claim 12 is not directed to a roller structure. It simply recites a composite abrasion and corrosion resistant structure comprising a base member, a hard acid-resistant resin layer selected from a group consisting of epoxy resins and other resins, a coextensive mat [FN20] of fibrous material adhered to and embedded in the resin layer with the fiber selected from a group consisting of fiber glass and other natural or man-made fibers, and an erosion-resistant elastomeric covering adhered to the resin layer.
*9 Since Dunn suggests a composite abrasion and corrosion resistant epoxy layer for a base member which can be reinforced with a fiber glass cloth and since Dunn also suggests the bonding of metal to rubber with such an epoxy layer, Dunn alone teaches every limitation of claim 12. Thus, Dunn is an anticipation of claim 12 as broadly as it is recited. [FN21] The only possible distinction over Dunn is the recitation that the elastomeric material is a "covering" adhered to the resin layer. While Dunn suggests such a laminated composite structure he does not specifically teach that the elastomeric material acts as a covering material. However, the admitted prior art in appellant's patent clearly suggests an elastomeric material as a covering material. Since Dunn is directed toward solving the same corrosion problem stated by the admission, one of ordinary skill in the art would have been clearly motivated to apply the teachings of Dunn to solve the problem of the admitted prior art. Accordingly, when Dunn is considered in combination with the admitted prior art, the subject matter of claim 12 would have been obviously suggested. The rejection of claim 12 is sustained.
Claim 22 is quite similar to claim 12 except that a second resin layer is recited as being bonded to the first layer and the elastomeric material is recited as being bonded to the second resin layer. However, Dunn also suggests a laminated resin composite structure of several layers. Therefore, for the reasons stated above, the structure of claim 22 would have been obviously suggested when Dunn and the admitted prior art are considered in combination. Accordingly, the rejection of claim 22 is also sustained.
In his main brief, appellant has not argued the merits of claim 13, which is dependent on claim 12, apart from claim 12, or the merits of claim 23, which is dependent on claim 22, apart from claim 22. Accordingly, these claims fall with independent claims 12 and 22 respectively. In re Sernaker, 702 F.2d 989, 217 USPQ 1 (Fed.Cir.1983). [FN22]
Claim 26 stands rejected over the admitted prior art in view of Dunn and, alternatively, over the admitted prior art in view of Dunn and Pigott, supra. We reverse the first rejection of claim 26 over the admitted prior art in view of Dunn since there is nothing in the admission or in Dunn, alone or in combination, which specifically suggests the use of polyurethane rubber as the covering for the roll. We, however, affirm the alternative rejection of claim 26 over the admitted prior art in view of Dunn and Pigott.
The Pigott reference was not before the examiner when the original patent was under consideration. Pigott states (col. 1, lines 16 to 19) that it is known that polyurethane exhibits unusually good properties with respect to shock absorption, abrasion resistance, tensile strength, elongation and other physical properties. [FN23] Pigott also suggests the desirability of bonding polyurethane elastomers to metal by means of epoxy or polyester resins (column 1, lines 18 to 37). Pigott acknowledges a problem with such bonding (col. 1, lines 32-37), but by raising the temperature of the metal and the resin layer to a temperature from about 80<<degrees>> C to 150<<degrees>> C (col. 1, lines 48-64 and column 7, line 74 through column 8, lines 24) before contacting the molten polyurethane, an outstanding bond strength is obtained.
*10 We hold that it would have been obvious in view of Pigott to one of ordinary skill in the art to bond a polyurethane rubber cover in place of the Neoprene or other acid resistant rubber cover suggested by the admitted prior art, to achieve the tough, abrasion resistant and acid resistant properties that polyurethane rubber coatings were known to provide. The rejection of claim 26 is also sustained.
Accordingly, with respect to claims 12, 22 and 26, we hold that the examiner has established an adequate prima facie case of obviousness. Against this prima facie case, appellant proffers the affidavits of Wahlstrom and Kelly, supra, and argument with respect to the applied prior art. We hold that appellant has failed to rebut the prima facie case of obviousness.
For example, the affidavit of Wahlstrom is entitled to little, if any, weight since it is largely irrelevant to the issues in this appeal. In the first place, Wahlstrom admits that the patent at issue is directed to a roll for use in a steel mill and that he is not an expert in the steel handling art (aff'd. page 5). Secondly, his comments with respect to problems in the paper roller art--specifically the articles and patents of the Stowe Woodward organization (aff'd. pages 6 and 10-11); the patents to Mirsky, Freedlander, Brown, Hill or Gartrell (aff'd. pages 11-18); or the commercialization of paper rollers by the Yamauchi Rubber Industry Co. Ltd. (aff'd page 7)--are not related to the problem of the admitted prior art. As noted above, the problem of the admitted prior art is that corrosive fluids seep through minute cracks in the rubber cover and attack the inner steel structure before the cover is worn out. Moreover, there are no longer any outstanding rejections on the basis of any of these references which remain at issue in this appeal. Thirdly, affiant's extensive discussion of what is meant by the "base member" (aff'd, pages 8-9) is essentially irrelevant since it is directed to an issue raised by the requestor to the effect that claim 12 is indefinite under 35 USC § 112, second paragraph, because of the manner in which the term base member was interpreted by the requestor. However, no rejection of claim 12 under § 112 is at issue in this appeal.
Wahlstrom states (aff'd page 8) that "--I think those skilled in the art would read the McGaughey patent, as teaching protecting and reinforcing a metallic support structure." Wahlstrom further states (aff'd pages 13-14) that there is no indication that Dunn recognized the problem of the admitted prior art which is to prevent corrosive fluids from seeping through minute cracks in the cover to attack the underlying structure. We agree that Dunn is not specific to roller structure but, as pointed out above, a number of the claims at issue (especially claims 12 and 22) are not specific to rollers either. Moreover, as pointed out above, Dunn does address the same problem and solves it in the same way that appellant does. Certainly one of ordinary skill in the art, when reading the suggestion of Dunn in conjunction with the stated problem of the admitted prior art, would have been motivated to use such a protective epoxy layer to prevent the inner structure from attack through leaks in the rubber covering of the admitted prior art. Thus, Wahlstrom's opinion (aff'd, pages 13-14) that he would not have concluded from Dunn that a structural base member could be protected by a layer of reinforced epoxy resin simply does not square with the teachings of Dunn. Accordingly, the Wahlstrom affidavit merely represents an unsupported opinion which is entitled to little weight. In re Lindell, 385 F.2d 453, 155 USPQ 521 (CCPA 1967).
*11 The affidavit of Kelly is directed to the commercial success of the product. Kelly outlines the very complex corporate licensing scheme which ultimately allowed the Kern Rubber Company (KRC) to become a producer of rubber covered and polyurethane covered rolls for use in industrial processes. However, Kelly's allegations of commercial success only relate to polyurethane covered rolls such as recited in claim 26, supra. Accordingly, we hold that the Kelly affidavit is likewise entitled to little weight with respect to claims 12 and 22. Compare with In re Tiffin, 448 F.2d 791, 171 USPQ 294 (CCPA 1971).
Kelly lists five patents which are involved in the licensing scheme. Two of the patents listed (aff'd, page 2) are U.S. Patent Nos. 3,646,651 and 3,420,747 which Kelly describes as the "McCreary patents" since they can be traced back to the McCreary Tire and Rubber Company of Indiana, Pennsylvania. The other three patents are U.S. Patent Nos. 3,453,692, 3,490,119 and 3,673,025 (aff'd, page 2) which Kelly describes as the "Yamauchi patents" since they can be traced back to the Yamauchi Rubber Industry Co., Ltd. of Osaka, Japan.
Of all these patents, only Patent No. 3,646,651 is relevant herein since this is the only patent under reexamination. However, Kelly makes no attempt to establish how the net sales for polyurethane covered rollers or the accrued royalties (aff'd, page 4) are attributed to Patent No. 3,646,651. Moreover, the listing of royalties is apparently directed to the Yamauchi patents since it is the Yamauchi Co. to which the royalties are paid.
With respect to the net sales figures (Aff'd, page 4), we note that table provides no indication of the percentage of the market these figures represent. Moreover, while Kelly states (Aff'd, page 4) that KRC had two competitors during the period in question, there is no comparative data which might have provided the necessary information to establish how the patented device enhanced KRC's percentage of the market with respect to those competitors. Thus, even if a nexus had been established, the data is insufficient to establish the commercial success alleged. Accordingly, even with respect to claim 26, Kelly has failed to establish that the evidence offered to support the commercial success is commensurate in scope with the claimed subject matter. See In re Tiffin, supra.
As noted above, neither the Dunn nor the Pigott references were before the examiner when the original patent was pending before the Office. Also, as indicated by the Kelly affidavit, the patent at issue was apparently the subject of a complex licensing scheme along with several other patents. Thus, the factual situation herein appears to be analogous to the factual situation before the Court in EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898, 225 USPQ 20 (Fed.Cir.1985) wherein the Court stated:
When as happened here, the PTO issues a patent because the examiner did not consider prior art teaching the very technique essential to the claimed invention--crimping of wire which is to be stretched later--it is not unusual to see astute businessmen capitalize on it by erecting a temporarily successful licensing program thereon. Such programs are not infallible guides to patentability. They sometimes succeed because they are mutually beneficial to the licensed group or because of business judgments that it is cheaper to take licenses than to defend infringement suits, or for other reasons unrelated to the unobviousness of the licensed subject matter. Such a "secondary consideration" must be carefully appraised as to its evidentiary value.... (225 USPQ at 26).
*12 For the reasons stated above, we hold that neither the Wahlstrom nor the Kelly affidavits rebut the prima facie case of obviousness made out by the examiner.
A substantial portion of appellant's further argument against these rejections simply amounts to an attack on the references individually rather than a consideration of the references in combination. We hold that when the references are considered in combination, claims 12, 22 and 26 are clearly suggested as fully explained above. See In re Keller, 642 F.2d 414, 208 USPQ 871 (CCPA 1981). Nevertheless, certain of appellant's arguments bear comment as follows.
Appellant argues (Brief, page 12 and pages 15-18 and Reply Brief, page 8) that the examiner has failed to correctly interpret and give weight to certain claim limitations. Apparently appellant is trying to read his roll structure into the broad limitations of claims 12 and 22. However, as pointed out above, claims pending in a reexamination proceeding normally are given their broadest reasonable interpretation consistent with the specification. See Ex parte Papst-Motoren, 1 USPQ 2d 1655 (BPAI 1986).
Appellant argues (Brief, pages 12, 20 and 21 and the Reply Brief, page 4) that Pigott contradicts the Dunn reference and thus the examiner has failed to consider the scope and content of the prior art as a whole. Rather than contradicting Dunn, Pigott simply supplements the teachings of Dunn. Moreover, when Pigott, Dunn and the admitted prior art are considered in combination, claim 26 is clearly suggested as fully explained above.
Appellant argues (Brief, pages 19, 28, 29 and 32 and the Reply Brief, pages 1-4) that there is no motivation to combine Dunn and the admitted prior art since Dunn does not suggest a solution to the problem set forth in the admitted prior art. However, as fully explained above, Dunn does address the same problem and suggests the same solution. Appellant is reminded that a reference is good for all that it fairly discloses.
Appellant argues (Brief, pages 24-25) that the Wahlstrom affidavit establishes that McGaughey solved the problem of bonding polyurethane to metal. We do not agree. McGaughey employs a roughened epoxy layer for bonding the elastomer which merely provides a mechanical bond (col. 5, line 75 et seq.). McGaughey then simply lists polyurethane as one of the possible elastomers that could be used for the covering material (col. 6, lines 3 to 8). However, mechanical bonding of polyurethane does not work as pointed out by Pigott (col. 1, line 18 et seq.). Thus, it was Pigott, not McGaughey, who solved the problem of bonding polyurethane to metal, as fully explained above.
In this regard appellant further argues (Brief, 34-35) that the Walstrom affidavit establishes a long felt but unsolved need to solve the problem of bonding the elastomeric cover to the metal core. Appellant alleges that McGaughey solves the bonding problems. However, Dunn teaches the bonding of rubber to metal by epoxy and Pigott teaches the specific technique required for bonding polyurethane rubber to metal by means of epoxy. Thus, at the time this invention was made, the bonding problems were already solved by the prior art. Thus, the long felt need was satisfied by the prior art. Moreover, we see no limitation in any of the claims at issue which defines appellant's bonding technique over the prior art. It is axiomatic that it is claim limitations, not argument, which must define over the prior art.
THE REMAINING CLAIMS
*13 As noted above, appellant has not made more than passing argument with respect to the remaining claims. For instance, with respect to independent claims 1, 4, 8 and 9, appellant makes the unconvincing argument (Brief, pages 26 and 30) that these claims differ from the prior art by the recitation that the fibrous material is one of the group of crocidilite, asbestos or polyvinylchloride-acrylonitride fibers, and thus, the structure is resistant to hydrofluoric acid environments. We do not agree with such argument.
In the first place, there are no recitations in any of these claims which recite the use of appellant's roller in a hydrofluoric acid environment. Secondly, both the admission and the reference to Dunn indicate usage in acid environments. Moreover, Dunn clearly suggests use of asbestos (one of the recited group of fibers) as an alternative to the use of glass fiber or other natural fibers. Therefore, since the prior art references suggest the same combination of materials, they would be resistant to a hydrofluoric acid environment in the same manner as appellant's structure. Thus, appellant's argument with respect to these claims is unconvincing.
Since appellant has not argued the merits of dependent claims 2, 3, 5 to 7 and 10 apart from the claims from which they depend, they fall with claims 1, 4, 8 and 9. In re Sernaker, supra Accordingly, the rejection of claims 1 to 10 is sustained. [FN24]
With respect to claims 11, 14, [FN25] 15, 19, 20 and 21, appellant simply argues (Brief, pages 26 and 30) that these claims distinguish over the admitted prior art by reciting a fibrous reinforcement and a specific elastomeric covering. We do not agree.
As fully set forth above, the admitted prior art in combination with Dunn clearly suggests a fibrous reinforced resin coating between the base member and the elastomeric covering, Therefore, we see no basis for this argument. Moreover, since appellant has not argued the other differences in these claims, we see no basis for considering such differences either. Accordingly, the rejection of claims 11, 14, 15, 19, 20 and 21 is also sustained.
Appellant argues (Brief, page 26) that claim 16 is patentable since the prior art does not suggest the covering of the end portions of the roller with corrosive resistant material. We find that it would have been inconceivable, in view of the suggestion of Dunn, that one skilled in the art would cover the metal shell with epoxy but not cover the metal ends. [FN26]
Finally, with respect to claim 24, appellant makes the incongruous argument (Brief, page 26) that the prior art does not suggest a hard, crack-resistant reinforced plastic as a protective layer between the roller and the rubber cover. However, the epoxy layer of Dunn is clearly a hard plastic which provides excellent surface qualities with an absence of cracking or crazing (page 222, center col.). Appellant's argument with respect to claim 24 is manifestly without merit. The rejection of claim 24 is accordingly sustained. Moreover, since appellant does not argue the merits of claim 25 apart from claim 24, the rejection of claim 25 is also sustained.
*14 We have carefully reviewed all the evidence in this application and have considered all the arguments advanced by appellant. We hold that the difference between the subject matter of claims 1 to 26 and that disclosed in the applied references are such that the subject matter as a whole would have been obvious to a person having ordinary skill in the art within the meaning of 35 USC § 103. Accordingly, the decision of the examiner is affirmed.
Commissioner of Patents and Trademarks
Donald W. Peterson
Deputy Commissioner of Patents and Trademarks
Rene D. Tegtmeyer
Assistant Commissioner for Patents
Saul I. Serota
Ian A. Calvert
Norman G. Torchin
Arthur J. Steiner
Thomas E. Lynch
William F. Smith
FN1. Hereafter appellant.
FN2. The issue of patentability now before us could not have been raised at final hearing in either of these interference proceedings because, prior to the amendment of 35 USC § 135 (Pub.L. 98-6222, § 202, effective February 8, 1985), the question of patentability was not "ancillary to priority." Glass v. DeRoo, 239 F.2d 402, 112 USPQ 62 (CCPA 1956).
FN3. Other litigations in the United States District Court for the District of South Carolina (Civil Action Nos. 84-1379-6 & 83-1735-6) have been settled.
FN4. The examiner refers to the admitted prior art by the acronym APA.
FN5. To the extent Horton held an admission is not prior art which can be used in a reexamination, the holding is dicta. In point of fact, the panel held that the examiner failed to establish that the photographic evidence relied upon was prior art at all! See 226 USPQ at 700.
FN6. As Commissioner Diamond testified--
Reexamination is a long-overdue improvement for a patent system struggling to promote innovation and entrepreneurship in a nation facing economic problems that technology must help solve.
Under the present law, only the patent owner can obtain a reevaluation of patent validity by the PTO on the basis of newly discovered prior art. The PTO has a special reissue procedure for this purpose, but it cannot be initiated by a member of the public or even by the PTO itself.
Members of the public today have only two ways of contesting patent validity, no matter how affected or concerned they may be about the validity of a particular patent. A person may either wait to be sued for patent infringement and then raise the defense of invalidity or, if a business interest is directly threatened, bring a declaratory judgment suit.
Both of these remedies must be sought in a Federal court, and they are almost always expensive, protracted, and uncertain as to outcome. They place special hardships on small businesses and individual inventors, those least able to finance and await the outcome of litigation. Reexamination would provide a simpler, far less expensive, and prompter administrative procedure for evaluating the effect of newly discovered patents and publications on patent validity.
It would allow patent claims to be tested in the same way they were originally tested for patentability; that is, through examination by an expert patent examiner. All of the Office's procedures available to patent applicants would be available in reexamination cases.
Industrial Innovation and Patent and Copyright Law Amendments: Hearings Before The Subcommittee On Courts, Civil Liberties, And The Administration Of Justice Of The House Comm. On The Judiciary, 96 Cong., 2nd Sess., pages 590- 606, at pages 591-593 (1980) (Statement of the Honorable Sidney A. Diamond, Commissioner of Patents and Trademarks).
FN7. Legislative History, P.L. 96-517, 1980 U.S. Code Congressional & Administrative News, pages 6460-6467, at 6462-6463.
FN8. Id. at page 6462.
FN9. The question of whether the language "consist[s] of" constitutes a closed term, as such language is construed in the patent sense, is irrelevant to the issues involved in this appeal, since section 301 limits the requestor's submission, not the reexamination proceeding, which is controlled by section 305 as will be explained below.
FN10. This is not to say that a requestor can effectively ask the PTO to relitigate issues already decided by a court. See In re Pearne, 212 USPQ 466 (Comm'r PTO 1981); In re Hunter, 213 USPQ 211 (Comm'r. PTO 1982); and In re Wechterle, 213 USPQ 868 (Comm'r PTO 1982). Thus, the PTO should also be made aware of prior litigation along with prior patents and printed publications so that the full record may be accurately considered.
FN11. Commissioner's statement, supra, note 5, at page 594.
FN12. The dissent relies on certain dicta in In re Etter, 765 F.2d 852, 225 USPQ 1 (Fed.Cir.1985) in support of its position that section 305 is procedural. No issue as to section 305 arose in that case. The evidence in that case was restricted solely to prior patents. The issue in that case was whether the presumption of validity of 35 USC § 282 was applicable to a reexamination proceeding. Therefore, the Court's comments regarding reexamination, as quoted by the dissent, merely represent a generalized summary of what the reexamination process is, and do not address the issue of what evidence the examiner may consider under section 305.
The dissent's reliance on In re Lanham, 1 USPQ 2d 1877 (Comm'r. PTO 1986) is also misplaced. Much of the commentary in Lanham is merely dicta which is irrelevant to the issue therein, and again appears to confuse the requirements followed when a request for reexamination is under consideration with that to be followed after the request has been granted. The real issue of Lanham was simply whether the PTO may consider further submissions by a requestor after the patentee's reply to the request for reexamination has been filed.
FN13. Ex parte Horton, supra, has taken an unduly narrow interpretation of the reexamination statute which we find is incompatible with section 305. Curiously the Horton opinion never even mentions section 305. As noted above, it appears that the opinion confused the requirements for a request for reexamination with the requirements necessary after a reexamination proceeding has been instituted. Thus, the opinion relies solely on a narrow interpretation of the rules and the M.P.E.P. rather than considering section 305 to support a holding that admissions cannot be utilized in a reexamination proceeding. For example, the opinion states:
While the examiner did not cite this rule [37 CFR 1.106(c) ] in support of his position, we raise the point here because it appears to open reexamination proceedings to any and all issues affecting patentability so long as there is a related admission. However, we are compelled to construe the rule in light of the statute and other implementing rules which, as we discussed hereinabove, specifically restrict reexamination to a consideration of patents and printed publications. Thus, for an admission to form some or all of the basis for a prior art rejection in reexamination proceedings, such admission must necessarily relate to patents or printed publications. Otherwise, patentees or patent owners would be able to circumvent the restrictive nature of the statute by making admissions relating to prior public use, sale, abandonment, etc. issues which, as we have seen were never intended to be resolved by way of reexamination. (226 USPQ at 702)
We do not agree. 37 CFR 1.106(c) is fully supported by section 305 of the statute. There is no basis in the reexamination statute for the narrow interpretation of 37 CFR 1.106(c) given in Horton.
FN14. 2 C.J.S. 411.
FN15. Ex parte Jepson, 1917 C.D. 62, 243 O.G. 525 (Comm'r. Pats. 1917) and 37 CFR 1.75(e).
FN16. For instance, why should a Figure labelled "Prior Art," as in In re Nomiya, supra, be ignored in a reexamination?
FN17. A lag is defined, among other things, as "1: a barrel stave 2a: a wooden stave or slat forming part of a covering for a cylindrical object b: a strip of any of various materials ... used in making a covering or casing ... 3: a bearing strip in an arch or vault--" WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY, 1981, page 1264.
FN18. Calico is defined among other things as "cotton cloth--," "any of various cotton stuffs of European make," "--a plain white cotton fabric which is heavier than muslin." WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY, 1981, page 316.
FN19. A fabric is defined, among other things, as "cloth," "cloth of a particular kind," "a material--that in some respects resembles cloth." WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY, 1981, page 811.
FN20. Appellant's specification (col. 2, lines 29-31) states ' "[a]s used herein the term 'mat' when employed alone is inclusive of 'cloth.' "
FN21. Anticipation is the ultimate or epitome of obviousness. In re Pearson, 494 F.2d 1399, 181 USPQ 641 (CCPA 1974).
FN22. In his Reply Brief (page 5), while not specifically arguing the merits of claim 13, appellant states that the examiner is trying to force appellant to demonstrate that each of the cover materials, such as those listed in claim 13, are prima facie unobvious. We hold that this is not necessary since one of the elastomers listed in the Markush group of claim 13 is polychloroprene which is the generic name for Neoprene. However, since Neoprene covers are admittedly old, the Markush group of claim 13 is met.
FN23. We take notice, for instance, that it was known as early as 1963 that polyurethane (or urethan) was often cast as an elastomer or rubber of high wear resistance and was also used as a coating. MATERIALS HANDBOOK, Brady editor, 9th ed., McGraw-Hill Book Co., Inc., New York, 1963, pages 795-796 (copy attached). Moreover, we take further notice that as early as 1955, urethans were reputed to have a greater resistance to acids than the other polyamides, that as a rubber urethans showed remarkable abrasion resistance and excellent resistance to oil, ozone and aging and that as a coating urethans showed excellent strength, toughness and chemical resistance. ENCYCLOPEDIA OF CHEMICAL TECHNOLOGY, Kirk and Othmer editors, The Interscience Encyclopedia, Inc., New York, New York, first edition, 1955, vol. 14, pages 476-479 (copy attached). These standard works are cited only to substantiate facts in the evidentiary showing made by the examiner. See In re Boon, 439 F.2d 724, 169 USPQ 231 (CCPA 1970).
FN24. Claims 4 to 7 also appear to have problems under 35 USC § 112, second paragraph (appellant's brief, page 26, note 4). These claims have not been rejected under § 112, second paragraph, since they are unamended patent claims. See 37 CFR 1.552(b).
FN25. Claim 14 also contains problems under 35 USC § 112, second paragraph. Line 4 of this claim makes reference to "said resin" when the resin has not been identified.
FN26. In this regard, we note that the reference to Birkin, supra, which was cited during the original prosecution of this application, discloses the use of a corrosion resistant covering for the sides of the roller as well as the shell.
*15 P.J. Henon, R.F. Stahl, J.D. Craig and V.R. Pendegrass
Congress in 1980 granted to the Patent and Trademark Office limited jurisdiction to review the patentability of claims in an issued patent by enacting the reexamination statutes, 35 U.S.C. 301-307. The reexamination statutes clearly limit the jurisdiction of the Office to determine patentability based on prior art consisting of patents or printed publications. Jurisdiction with respect to other issues of patentability based on prior public use, on sale, fraud, indefiniteness, nonstatutory subject matter, etc., remains with the federal courts or under the reissue statutes.
For the reasons clearly and cogently expressed in Ex parte Horton, 226 USPQ 697, the Office and specifically this Board does not have jurisdiction over a rejection in a reexamination case based on "admitted prior art." Moreover, jurisdiction cannot be presumed because of appellant's failure to challenge the basis for the rejection. There is no logical or cogent reason for reversing the decision in Horton. Indeed, Horton is distinguishable on its face because in Horton, the admission was not an "uncontroverted admission."
The legislative history and testimony of Commissioner Diamond does not support the conclusion that the reexamination statutes are "remedial in nature" and therefore are to be construed liberally. A review of the testimony of Commissioner Diamond, accompanied by Rene D. Tegtmeyer, Assistant Commissioner, and Michael Kirk, Director, Office of Legislation and Internal Affairs, shows otherwise:
Under the present law, only the patent owner can obtain a reevaluation of patent validity by the PTO on the basis of newly discovered prior art.
The sought after remedy was to allow members of the public and the Commissioner to challenge patents considered to be invalid. The authority requested was very limited--
By limiting reexamination to a consideration of prior patents and printed publications, the PTO would be given a task that it can perform effectively at a reasonable cost to the requester.
In the light and aftermath of the PTO's unsuccessful venture into determining the patentability of patented claims in protested reissue proceedings, it is understandable why the jurisdiction requested was to be very limited. Note also In re Dien, 680 F.2d 151, 214 USPQ 10 (CCPA 1982). As can be ascertained by reviewing the rules developed for reexaminations (37 CFR 1.501-1.570), the proceedings are limited, the scope of reexamination is limited (37 CFR 1.552) and the requestor's participation in reexamination proceedings is severely limited (37 CFR 1.550(e)). To here broaden the scope of the inquiry is to circumvent the clear intent of the statutes to grant the Office only limited jurisdiction.
*16 The language of the reexamination statutes (35 U.S.C. 301) explicitly culling out "prior art consisting of patents or printed publications" from all the other prior art bases in Section 102 of the statute and otherwise, clearly indicates that the prior art considered is to be limited. The reexamination statutes were drafted by patent practitioners and quite obviously used the term "consisting of" in the narrow manner commonly used in the patent field, i.e., to exclude other bases. As so well stated by Assistant Commissioner for Patents Tegtmeyer in In re Lanham, 1 USPQ 2d 1877,
Congress, when enacting the reexamination statute was aware that "prior art" encompasses more than patents or printed publications. During the hearings on 35 U.S.C. 301 et seq. (dealing with reexamination), the meaning of the term "prior art" was discussed as follows:
Mr. Railsback. What is "prior art"? ...
Mr. Dunner. ... Prior art is a generic term. Prior art includes printed publications, it includes patents, prior uses in the United States, and so forth. Printed publication is a species of prior art provided it is earlier in time. Patents are a species of prior art; anything which came prior, which can be used to invalidate something, is considered prior art.
Now, these bills focus on printed publications and patents only because it is easy to examine them; it is practical to examine them; it is cost effective to examine them.
However, when drafting the statute Congress clearly indicated an intent to have reexamination on the basis of patents and printed publications as evidenced by the language of Section 301 of the statute which explicitly states "prior art" consisting of patent or printed publications." Had Congress intended other prior art or other grounds to be considered, it would presumably not have included in the statute such limited language, or alternatively, it would have specifically listed other types of prior art or other grounds along with patents and printed publications.
The clear intent of Congress to have reexamination on the basis of patents and printed publications is further supported by the legislative history. This intent is evidenced by the Commissioner of Patents and Trademarks in his statement before a Congressional Subcommittee concerning the bill containing the reexamination provisions. He explained:
"By limiting reexamination to a consideration of prior patents and printed publications, the PTO would be given a task that it can perform effectively at a reasonable cost to the requester."
Hearings, supra page 4, at 584 (statement of Sidney A. Diamond, Commissioner of Patents and Trademarks). Thus the legislative history substantiates that the Congressional intent was to limit the type of prior art to be considered in the interest of economy and in recognition of the difficulty involved in treating the excluded types of prior art as well as other validity issues such as fraud, prior public use or sale.@2 In addition, while there is no case law directly on point, the limitations on the scope of reexamination have been addressed by the Courts in a manner which the Commissioner views as supportive of the position stated herein.3
*17 In view of the explicit language of the statute and its legislative history, the rules were drafted to follow the statute to have reexamination on the basis of patents and printed publications. [Footnotes omitted]
As stated in the majority opinion in In re Etter, 765 F.2d 852, 225 USPQ 1 (Fed.Cir.1985), authored by Chief Judge Markey,
The actual reexamination is conducted ex parte. 37 CFR 1.550(a) (1983). Patent claims are reexamined only in light of patents or printed publications under 35 U.S.C. §§ 102, 103, and only new or amended claims are also examined under 35 U.S.C. §§ 112, and 132, 37 CFR 1.552; MPEP § 2258 4
@4 If a patent owner requests reexamination, but desires consideration of wider issues, e.g., prior public use or sale, he must obtain such consideration by filing a reissue application 37 CFR 1.552; MPEP § 2212, 2258.
There is no basis in Section 305 for broadening the scope of the reexamination. Section 305 is the procedural section of the reexamination statutes stating how the proceedings are to be conducted. The directive in 35 U.S.C. Section 305 to follow "procedures established for initial examination under the provisions of sections 132 [PTO must give notice of rejection with reasons] and 133 [time for response]" patently has no bearing on the substantive issue. (See footnote 1 of concurring opinion in In re Etter, supra.) Manifestly, there is a difference between substantive and procedural matters. The procedure of Section 305, with respect to the prior art, permits amendments "to distinguish the invention as claimed from the prior art cited under the provisions of Section 301."
Under the majority view, Section 305 is interpreted as allowing reexaminations to be conducted under Sections 132 and 133 such as to not limit the Commissioner to the same restrictions recited in Sections 301 and 302, and thereupon base rejections upon information, e.g., admissions, found in the record, but at the same time (in footnote 24) finds that the Commissioner is restricted from entering a rejection under 35 U.S.C. 112, second paragraph, for claims that are indefinite! We agree with the latter contention and further note in passing that the Commissioner has limited jurisdiction on reexamination and cannot consider whether an application contains an enabling disclosure under 35 U.S.C. 112, first paragraph, where the claims are unamended patent claims. See Patlex Corp. v. Quigg, 5 USPQ2d 1539 (1542) (D.DC 1987). Issues of fraud and failure of duty of disclosure give rise to rejections for which the statutory bases include Section 132. But in Lanham, Commissioner Tegtmeyer stated that such issues are not proper for consideration during reexaminations. Thus, Section 132 rejections for fraud and failure of duty to disclose are improper under the reexamination statutes, but the reference to Section 132 in Section 305 provides the basis for using admissions. Manifestly, the majority's interpretation of Section 305 is strained, inconsistent and convoluted.
*18 The rules promulgated by the Commissioner and the Manual of Patent Examining Procedure (M.P.E.P.) Section 2258 have to be construed to be consistent with the statute. An administrative agency cannot legislate. The Commissioner is bound by law. As pointed out in Ex parte Horton, Mr. Tegtmeyer, as Acting Commissioner in implementing the rules pursuant to the reexamination statutes stated
Insofar as the actual reexamination is concerned, the examination as to original patent claims is only on the basis of patents or printed publications.
The following statement is in the M.P.E.P.
Any prior art (e.g., on sale, public use, etc.) established in the prior record or in court may be used by the examiner in combination with patents or printed publications in a reexamination proceeding.
Insofar as this is relied on to provide the jurisdictional basis for a rejection, the reliance is misplaced. It is a well recognized tenet of patent law that where new evidence is introduced to establish the obviousness of a claim, one starts anew with a consideration of all the evidence, not merely at the point where the last inquiry ended. In reexamination proceedings, the evidentiary basis cannot be on sale, public use, etc. In Dresser Industries, Inc. v. Ford Motor Co., 211 USPQ 1114 (D.C. ND.T, Dallas Div. (1981)), Judge Higginbotham indicated that under the reexamination statutes, "patent claims will be reexamined solely on the basis of patents or printed publications." At page 1121 he particularly notes the complaints of an opposer or requestor as to the limits of the ex parte reexamination proceeding.
Ford argues that Dresser has misrepresented both the characteristics of the device disclosed in the Johnson Patent and the significance of the cone angles specified in its own patents, has ignored the angles of operation contemplated by the Converse patent, and has withheld from the examiner certain testimony of the inventor which Ford believes is material to patentability.
With regard to a reexamination, precisely what is the patent owner obliged to admit, with respect to a duty of disclosure to the Office, pertaining to possible on sale bar, prior public use, fraud, etc.? Note, in view of the decision in UMC Electronics Co. v. U.S., 816 F.2d 647, 2 USPQ2d 1465 (Fed.Cir.1987), the evidentiary basis for holding an on sale bar may be significantly different than in the original application.
While admissions may be considered for purposes of determining patentability in an original application, they may not be considered for the purpose of conferring jurisdiction in a reexamination proceeding. Reliance upon In re Nomiya, 509 F.2d 566, 184 USPQ 607 (CCPA 1975), a decision in an original application, is in clear error. The admission in Nomiya was not an "uncontroverted" admission. Moreover, were the Nomiya patent submitted for reexamination or reissue, the admitted prior art may not be prior art in view of the Public Law 98-622 (1984) amendment to Section 103.
*19 In Ex parte Seiko Koko Kabushihi Kaisha Co., 225 USPQ 1260 (Bd.Apps.1984) the panel did not agree that admissions are to be considered in a reexamination proceeding. The Kaisha Co. decision is dated 1984 which is a year prior to the decision by the expanded panel in Ex parte Horton. The bases for the rejection in Kaisha Co. are
1) Leitz, Kitai '223 and Inoue, and
2) Kitai '177 and Inoue
all of which are patents. The admissions pertained to the Kitai '177 patent. Thus, the admissions related to a patent that formed the basis for a rejection, in conformance with the explanation in Ex parte Horton with respect to admissions. That is, 37 CFR 1.106(c) construed in light of the statute, pertains to admissions relating to patents or printed publications.
As explained in In re Ehrreich, 590 F.2d 902, 200 USPQ 504 (CCPA 1979), the preamble of a Jepson claim is impliedly admitted to be prior art. It is not conclusively considered to be prior art and therefore using same as a basis for a rejection in a reexamination potentially gives rise to the problems the restricting of the reexamination statutes sought to avoid.
Here, the Office can easily establish jurisdiction by requiring the appellant to submit in the form of a printed publication or a patent the subject matter allegedly admitted to be in the prior art. If the appellant will not or cannot, then there is no jurisdiction. This is a procedure which would not frustrate the intent of the reexamination statutes but would facilitate the intent of having a proceeding of a limited nature. Moreover, the submission of such a document would certainly clarify exactly what portion of column 1, line 37-- column 2, line 13 of the patent in issue, cited by the examiner, is "uncontroverted" admitted prior art because, manifestly, not all of this material is admitted prior art.
In summary, the Board has no jurisdiction to consider the rejection formulated on appeal under the present statute. That is to say, a statutory modification would be required with respect to admissions serving as a basis for a rejection of patent claims, similar to the proposed amendments to the reexamination statutes (see 1086 TMOG 446, January 5, 1988), which inter alia, allow for the consideration of issues under 35 U.S.C. 112.