BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 EX PARTE HIROSHI MORIMOTO, ISUKE IMADA, MASAZUMI WATANABE AND MITSURA KAWADA Appeal No. 90-1704

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)




Appeal No. 90-1704

October 31, 1990

HEARD: October 4, 1990



 Application for Patent filed July 5, 1988, Serial No. 214,851; a Division of Serial No. 122,482 filed November 12, 1987; a Continuation of Serial No. 711,293 filed March 13, 1985; a Division of Serial No. 497,014 filed May 23, 1983, now Patent No. 4,525,361; a Division of Serial No. 221,613 filed December 31, 1980, now Patent No. 4,407,757; a Division of Serial No. 961,021 filed November 15, 1978, now Patent No. 4,271,083; a Division of Serial No. 573,158 filed April 30, 1975, now Patent No. 4,139,545. Aralkyl Carboxylic Acid Compounds.



Michael R. Davis et al. for appellants



Primary Examiner--Vivian Garner



Before Serota









Vice Chairman



Pellman, Steiner and Meros












 This is an appeal from the examiner's decision finally rejecting claims 48- 52, all the claims pending in this application.



 The subject matter on appeal involves 2, 3-dialkoxy-5-methyl-6-(omega-hydroxyalkyl)-1, 4-benzoquinone or the ester of the hydroxyalkyl moiety. The alkoxy groups contain 1 to 4 carbon atoms and the number of carbons in the hydroxyalkyl group is 3 to 6 (claims 48-51). Additionally, claim 52 is directed to the specific compound 2, 3, 5-trimethyl-6-(6??Illegible Text?? - hydroxyhexyl)-1, 4-benzoquinone.



 The subject matter before us was embraced by the claims in U.S. Patent 4,271,083, issued June 2, 1981 to Morimoto et al. As a result of a request by Takeda Chemical Industries, Ltd., the assignee of the Morimoto et al. patent, a reexamination proceeding, Control No. 90/001006, was instituted on May 7, 1986. During the prosecution of the reexamination application, the compounds designated as claims 5 and 6 in the patent were added to the present application as claims 52 and 50, respectively. Then, claims 5 and 6 were canceled from the patent apparently to obtain allowance of the reexamination application. After the termination of proceedings in the reexamination application, a reexamination certificate was issued declaring that claims 5 and 6 were canceled and that claim 1 was patentable as amended. The amendment excluded from patent claim 1, those compounds in which the hydroxyalkyl group contains 3 to 6 carbon atoms. However, the matter excluded from patent claim 1 by the reexamination certificate is the subject matter to which present claim 48 is directed. To illustrate the subject matter on appeal, claim 48 is reproduced as follows:



 48. A compound of the formula





wherein R is alkoxy of 1 to 4 carbon atoms, and n is an integer of 1 to 4, or its ester.



 In appellants' brief and in the examiner's answer, no prior art is cited.





 All the claims "are rejected on the ground that they correspond to [i.e., encompass] claims 5 and 6 of applicants' patent no. 4,271,083, which were canceled by Reexamination Certificate B1 4,271,083 in Reexamination Control No. 90/001,006"D' (Answer, page 3). During the reexamination proceeding, the examiner explains, claims 5 and 6 were finally rejected for being unpatentable (35 U.S.C. 103) in view of prior art. We are told, on the same page, that "'applicants acquiesced in this ground of rejection by canceling claims 5 and 6 (Supplemental Amendment after Final Rejection, filed December 12, 1987, paper no. 15)."D' The examiner contends that "the present claims which recite what was excluded or canceled in the reexamination proceeding cannot be revived by applicant in a second patent."D' The examiner then cites the following legal authorities as support for her position: Chisum, Patents, Section 11.07[4] [[f] (1987); Altoona Theaters v. Tri-Ergon Corp., 294 U.S. 477, 492-493, 24 USPQ 308 (1935); W.L. Gore & Assoc., Inc. v. Oak Materials Group, Inc., 424 F.Supp. 700, 702, 192 USPQ 687, 689 (D.Del.1976); and M.P.E.P., Section 2271, Revision 12, July 1989, p. 2200-49. (answer, pages 4 and 5).





  *2 Beginning at page 3 of their brief, appellants deny that they acquiesced in the rejection of claims 5 and 6 as evidenced by the language in the amendment that the cancellation of claims 5 and 6 was "without prejudice to the subject matter involved."D' Appellants stress that on the same day that the amendment was filed in the reexamination proceeding, i.e., November 12, 1987, a continuation of Serial No. 711,293 was filed and on the day the continuation was filed, claims were added to the continuation to cover some of the compounds excluded by virtue of the amendment in the reexamination. Thus, appellants conclude, they never acquiesced in the rejection of claims 5 and 6 during the reexamination proceeding. In support of their position, appellants cite the decision in Square Liner 360<<degrees>>, Inc. v. Chisum, 691 F.2d 362, 216 USPQ 666 (8th Cir.1982).





 After considering the opposing arguments of appellants and of the examiner against the background of current patent jurisprudence, we have no doubt that the examiner was and is correct in refusing to allow claims 48 through 52 and we shall sustain the rejection before us. Insofar as the precise legal point herein is involved, it appears to be a case of first impression. Nevertheless, the soundness of her position compels us to agree with the examiner's reasoning. In reaching our decision, we gave weight to each of the following points.






 The reissue and the reexamination sections of the statute are related, the latter even referring to the former. Reissue of defective patents is permitted by 35 U.S.C. 251 when a patent is deemed wholly or partly inoperative or invalid, because, inter alia, the patentee claimed more or less than he had a right to claim in the patent. On the other hand, 35 U.S.C. 302 provides that:

   Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of Section 301 of this title.

The prior art is defined in Section 301 as consisting only of patents or printed publications believed to have a bearing on the patentability of any claim of the particular patent. Thus, the reissue statute enables the patentee to cancel or modify unpatentable claims at his option, while the reexamination statute establishes a procedure for accomplishing essentially the same result, on the basis of more restricted prior art, with, or without, the patentee's consent. Compare Chisum, Patents, Section 11.07[4][f] p. 11-134 (1987).



 The statutory provisions relating to reissue and to reexamination applications set forth specific requirements for the filing of the respective applications. To the extent a reexamination application is concerned, the particular duties of the patentee, as well as the limitations on the PTO in conducting the reexamination proceeding are defined. Also, the approval of the Commissioner, as a precedent to the filing, is required. Thus, a clear statutory distinction is established between filing and prosecution of an application under 35 U.S.C. 101 and that under either 35 U.S.C. 251 or 301. The effect of the reissue proceeding is described in the case of Digital Equipment Corp. v. Parker, Commissioner of Patents, 487 F.Supp. 1104, 206 USPQ 428 (D.Mass.1980) [FN1], where the court, at 206 USPQ 434, explains that:

    *3 'Reissue' does not renew or extend the term of an outstanding patent. It 'repairs' an outstanding patent at the holder's request. When a patent holder suggests that the outstanding patent is because of error inoperative or invalid, and when there is no 'deceptive intention' in the application for reissue, the Commissioner is empowered to correct the volunteered defects in patent and, in effect, to reinstate the patent as corrected 'for the unexpired part of the term of the original patent.' 35 U.S.C. § 251. The Patent Act, 35 U.S.C. §§ 1, et seq., creates no authority for the Commissioner to set aside or annul the outstanding patent. McCormick Harvesting Mach. Co. v. C. Aultman & Co., 169 U.S. 606 (1898). See Iowa State Univ. Research Found. v. Sperry Rand Corp., 444 F.2d 406, 170 USPQ 374 (4th Cir.1971). See also 37 CFR § 1.178 (1979) ('If a reissue be refused, the original patent will be returned to the applicant upon his request.')



 Thus, as implied by Chisum, supra, the reissue statute did not give the Commissioner of Patents authority to cancel a patent. This authority was provided by the reexamination statute, i.e., 35 U.S.C. Section 307(a), which reads:

   In a reexamination proceeding under this chapter, when the time for appeal has expired or any appeal proceeding has terminated, the Commissioner will issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amendment or new claim determined to be patentable.



 From our review of the reissue and reexamination statutes, in conjunction with a consideration of the remainder of 35 U.S.C., we find that only either a reissue or a reexamination application is the proper vehicle for having the validity of patented claims determined by the Patent and Trademark Office. In the present case, by their transfer of the appealed claimed subject matter to an application not filed under 35 U.S.C. 251 or 35 U.S.C. 301 et seq., appellants are attempting to circumvent the provisions of the specific statute under which they originally filed their reexamination application. Appellants have apprised us of no logical or legal authority for their actions and we are aware of none.



 We have not ignored appellants' citation of the decision in Square Liner 360<<degrees>>, Inc. v. Chisum, supra. However, even in the passage quoted at page 4 of appellants' brief, the decision proclaims its lack of relevance to the present circumstances. After the citation of Godfrey v. Eames, 68 U.S. (1 Wall.) 317 (1863), the court concludes that:

    *4 Thus, Chisum cancelled generic claims from the parent application and, before issuance of the '066 patent and as part of what was, as a matter of law, the same transaction, added generic claims to the continuation-in-part application. This action cannot properly be considered relinquishment, disclaimer, or acquiescence in abandonment of the subject matter of the generic claims. (691 F.2d 372, 216 USPQ 673; emphasis added)

In the situation at hand, the action taken with respect to claims 5 and 6 and the related subject matter took place after the issuance of the Morimoto patent U.S. 4,271,083. We view the foregoing difference as a critical distinction between the facts herein, for which the decision is cited, and the actual circumstances of the matter that was before the court and to which the holding applies.



 The preceding represents the first of three reasons why we agree with the examiner in holding that appellants are estopped from urging the patentability of the claims in the present application directed to subject matter previously patented.





 Once a patentee has canceled patented claims, he cannot, as a matter of law, recapture that which he has voluntarily disclaimed. In this connection, attention is invited to the decision in Ex parte Williams, 1917 C.D. 73 (1916) wherein the Assistant Commissioner held that the statute "has certainly never been construed to allow an applicant to disclaim an invention for the purpose of putting claims covering that invention in another application."D' Compare Ex parte Parker, 1966 C.D. 67, 70-71, 833 O.G. 1343 (Bd.App.1966), to the same effect as Ex parte Williams, supra. Also see the decision cited by the examiner at page 4 of the answer, i.e., W.L. Gore & Associates v. Oak Materials Group, Inc., relying upon the decision in Altoona Theaters v. Tri-Ergon Corp., supra.



 Also compare In re Wadlinger, 496 F.2d 1200, 181 USPQ 826 (CCPA1974). In the Wadlinger decision, claims were denied because claims of similar scope had been canceled in the original application, resulting in the applicants attempting to recapture subject matter previously canceled. Appellants in said case before the court did not even quarrel with the legal basis for the described rejection, but merely contended that the claims were not "similar in scope"D' to those canceled from the application. The above is consistent with the statement in the M.P.E.P., Section 2271, that a reexamination proceeding may result in the final cancellation of claims from the patent and that the patent owner does not have a right to renew or continue the proceedings by refiling under 37 C.F.R. 1.60 or 1.62. Our understanding of the noted language is that a patentee may not continue prosecuting patented claims that have been canceled. This constitutes a further reason why we agree with the examiner that the rejection of record is proper.





  *5 The reexamination certificate contains the statement that claims 5 and 6 are canceled and that claim 1, reproduced therein, is patentable "excluding the compounds where A is -CH2 and m is an integer of 1 to 4."D' It is manifest that, as a result of the reexamination proceeding, the claims in the reexamination patent cannot be any broader than the claims in the original patent. The certificate issued under 35 U.S.C. 307 reflects the examiner's finding that claims 5 and 6 and the scope of the compound of claim 1, wherein the alkyl group contains 6 or fewer carbon atoms, constitute unpatentable subject matter. Appellants' continued prosecution of the noted subject matter, outside the reexamination framework and notwithstanding the issuance of the reexamination certificate, is incompatible with the issuance of said certificate. The public must be able to rely upon the published findings in the certificate as representing a final disposition of the patentability of such subject matter by the Patent and Trademark Office. The public has a right to rely upon the reexamination certificate and assume that the canceled subject matter and the limitations held unpatentable represent matter within the public domain. Compare Altoona Theaters v. Tri-Ergon Corp., supra. Since the Square Liner 360<<degrees>>, Inc. v. Chisum decision, supra, upon which appellants rely, is inapposite to the legal question before us and since we are aware of no legal authority or even logical reason to support appellants' contentions, we hold that the reexamination certificate, itself, represents a still further reason for sustaining the examiner's rejection.





 Under the provisions of 37 C.F.R. 1.196(b), we now reject claims 48 through 52 for being unpatentable (35 U.S.C. 101) on the grounds of double patenting in view of the claims in the Morimoto patent. Claims 52 and 50 are identical to patent claims 5 and 6, respectively, while claims 48 and 49 are narrowed versions of patent claim 2 and claim 51 is a limited version of patent claim 10. Claims 48, 49 and 51 are generic to the compound of claim 50.



 With respect to the communication filed October 5, 1990, concerning an offer to file a terminal disclaimer, we observe that no such disclaimer is before us for consideration. Appellants may be interested in the decision in In re Hallman, 655 F.2d 212, 210 USPQ 609 (CCPA1981), which holds that 35 U.S.C. 101 precludes the issuance of two patents claiming the same invention. Also, compare Ex parte Newman, 119 USPQ 391 (Bd.App.1957) and Ex parte Williams, supra, the latter decision holding that double patenting cannot be overcome by canceling the conflicting claims from a patent.



  *6 Insofar as appellants contend that claims 5 and 6 have been canceled from their patent, we invite attention to the decision in Ex parte Crissy, 201 USPQ 689 (Bd.App.1976), wherein a rejection based upon double patenting was considered with respect to the claims in a "lapsed"D' patent. That is, although the reference patent lapsed for failure to pay the final fee after three months, it was held to be a valid reference because of its three month pendency. [FN2]



 In the present circumstances, appellants' patent was in effect for approximately five years prior to the filing of the reexamination request. Since appellants enjoyed protection for their invention during the five years prior to the reexamination proceeding, they cannot extend their patent rights by prosecuting the same claims to obtain additional patent protection.



 The examiner's decision rejecting claims 48 through 52 is affirmed and a new ground of rejection as to the same claims has been set forth under the provisions of 37 C.F.R. 1.196(b).



 Any request for reconsideration or modification of this decision by the Board of Patent Appeals and Interferences based upon the same record must be filed within one month from the date hereof (37 CFR 1.197).



 With respect to the new rejection under 37 CFR 1.196(b), should appellants elect the alternate option under that rule to prosecute further before the Primary Examiner by way of amendment or showing of facts, or both, not previously of record, a shortened statutory period for making such response is hereby set to expire two months from the date of this decision. In the event appellants elect this alternate option, in order to preserve the right to seek review under 35 U.S.C. 141 or 145 with respect to said affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome.



 If appellants elect prosecution before the examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to us for final action on the affirmed rejection, including any timely request for reconsideration thereof.



 No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).



 AFFIRMED 37 C.F.R. 1.196(b)






Saul I. Serota






Ian A. Calvert



Vice Chairman



Irving R. Pellman






Arthur J. Steiner






Edward J. Meros






FN1. Vacated and remanded for other reasons in Digital Equipment Corp. v. Diamond, Commissioner of Patents, 653 F.2d 701, 210 USPQ 521 (1st Cir.1981).



FN2. The double patenting rejection was reversed, but on other grounds.


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