Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE MARTIN KESTEN AND RALPH B. O'CONNOR
Appeal No. 597-05
November 26, 1986
Heard: October 15, 1986
Application filed September 7, 1982, Serial No. 415,452, for the Reissue of Patent No. 3,698,271, granted October 17, 1972, based on application Serial No. 139,395, filed May 3, 1971. This application is a Continuation of Serial No. 287,513, filed July 27, 1981, now Abandoned. Adjustable Air Eject Die-Cutting.
Peter L. Costas et al. for appellants
Primary Examiner--Frank T. Yost
Before Stahl, Besha and Stoner
This is a decision on the appeal from the Primary Examiner's final rejection of claims 1, 2, 3 and 6 as unpatentable over the prior art [FN1], and the Special Program Examiner's rejection of claims 1 through 8, all of the claims present in this reissue application, based on a violation of the duty of disclosure.
Parent reissue application Serial No. 287,513, filed July 27, 1981, was originally filed as a 'no-defect' reissue under 37 CFR 1.175(a)(4) for the purpose of bringing prior art to the attention of the Patent and Trademark Office. In the appealed application, original patent claims 1, 2, 3 and 6 have been substantively amended [FN2], a terminal disclaimer has been filed to obviate an obviousness type double patenting rejection, and a further reissue declaration pointing out errors which the amendments to the claims were meant to overcome has been presented, thereby making the appealed reissue application one under 37 CFR 1.175(a)(5) and conferring jurisdiction on this Board under 35 USC 134 [FN3].
Infringement of the original patent here sought to be reissued was a basis for litigation styled Preston Engravers, Inc. v. Rotoflex International Limited, 79 Civ. 689 in the United States District Court for the Northern District of New York, and for litigation styled Preston Engravers, Inc. v. Kumjian Enterprises, Inc., 80-04622-AAH (Tx) in the United States District Court for the Central District of California. We are told that both cases stand dismissed at dates prior to the filing date of the parent reissue application.
A protest to the grant of a reissue patent on the parent reissue application Serial No. 287,513 was filed by Kumjian Enterprises, Inc. (Kumjian) on October 7, 1981. The Protestor asserted that Appellants had breached their duty of disclosure while the original patent application was pending by failing to bring certain references, most notably a patent to Green (cited below), to the attention of the Examiner. The Protestor also relied on these references to establish unpatentability of the patent claims under both 35 USC 102 and 35 USC 103. The Protesto further asserted that claims 7 and 8 of the original patent were subject to rejection for double patenting and that the reissue oaths were defective.
*2 Although apparently informed of the filing of the continuing reissue application now before us, no further protest was filed by Kumjian. Several of the issues raised in the original protest, however, survive to serve as the basis for the rejections raised in this appeal.
The claimed subject matter relates to a rotary die cutting machine in which cutting waste which may otherwise remain within the confines of a cutting element or die on the periphery of a cutting roll is ejected from the die by a flow of air. The position of the manifold used to supply the air to the inside of the roll is pivotably adjustable to alter the radial direction of air flow. Claim 1 [FN4] is representative and reads as follows:
1. A rotary air eject die-cutting assembly comprising: a die-cutting roll adapted for journaling in a die-cutting press and having a cylindrical cavity extending axially inwardly from one end thereof and a cutting element of closed configuration on its outside surface with at least one aperture extending from sai cavity to a location on said outside surface within the confines of said cutting element, said aperture enabling air flow between said cavity and said cutting element and comprising substantially the only outlet for air from said roll; an air delivery manifold having a core member with a cylindrical portion thereof that is inserted axially into said cavity from said one end of said roll for relative rotation therebetween, said core portion being dimensioned and configured to seat in said cavity with its outer [surface] circumference in close proximity to the inside surface of said roll defining the corresponding portion of said cavity, and having an axially extending passageway therein with an outlet comprising at least one generally radially extending port opening at a point on said outer [surface] circumference thereof in a location for registry with said one aperture of said roll, said manifold having an inlet communicating with said passageway of said core portion and being substantially closed to the flow of air except through said inlet and outlet, and including coupling means adjacent said inlet for engagement with a source of pressurized air for delivery of air to said passageway; and a support member for said manifold adapted for mounting in a stationary position on the press and having means for pivoting said core portion to alter the direction of air flow through said one port therein and to secure it in any of a multiplicity of such pivoted positions, so that rotation of said roll on the press about said core portion causes intermittent registry of said one aperture and said one port, permitting air to flow from the source thereof outwardly through said one port in a radial direction that is controlled by said pivoting means, said roll being essentially free from apertures outwardly of said cutting element to discharge the air from said manifold through said aperture within said cutting element, whereby air being discharged through said one port impacts upon associated web material disposed within said cutting element to effect its discharge therefrom.
*3 The references relied upon by the Primary Examiner are:
Green 642,220 January 30, 1900
Novick 3,106,121 October 8, 1963
Claims 1, 2, 3 and 6 stand rejected under 35 USC 103 as unpatentable over Green in view of Novick.
The Primary Examiner states that:
Green discloses a hollow rotary die cutting roll 40 with cutting elements 43 of closed configuration on it outside surface with at least one aperture 44 extending from the hollow interior of the roll to within the confines of the cutting element; an air delivery manifold having a stationary core member 45 seated in the hollow roll 40 and having at least one radially extending outlet port as shown by the perforations in Fig. 9; the manifold having an inlet 50 and being substantially closed to air except through the inlet and outlet and being mounted for angular adjustment as shown in Fig. 6 and explained on page 2, column 2, lines 118-129; all elements cooperating as recited by appellant. The apertures 44 of Green are situated within and without the die 43 to strip product from the entire roll 40. Novick, in another air-eject system teaches it is old to have air apertures only within the confines of the cutting die, see Fig. 1
(Answer, pages 2 and 3).
From his analysis of Green and Novick, the Primary Examiner concludes that it would have been obvious to the ordinarily skilled worker in this art to have placed Green's air-eject apertures only within the confines of the cutting die in view of the teaching of Novick.
Additionally, based on information brought to the attention of the Patent and Trademark Office during prosecution of both the parent reissue application and the continuing reissue application presently before us, the Special Program Examiner has rejected claims 1 through 8 as follows:
Claims 1-8, all of the claims in this reissue application, are rejected upon examination pursuant to 35 USC 131 and 132 based on a violation of the duty of disclosure as set forth in 37 CFR 1.56(d) through at least gross negligence in connection with the failure of counsel (Ira S. Dorman) to disclose U.S. Patent No. 642,220 to the Patent and Trademark Office during prosecution of applicant's U.S. Patent No. 3,698,271 (herein sought to be reissued)
(Supplemental Answer, page 1).
The Special Program Examiner, relying on the determination of the Primary Examiner, states that the Green patent is highly material to the claims obtained in the original patent and those presently before us. He believes that if the Examiner had been aware of Green during prosecution of the original application, the patent claims would not have issued. Because Appellants' attorney, Ira S. Dorman, was aware of the existence of Green, had reviewed Green prior to filing the original application, and had drafted his claims to define over 'disclosure of the sort contained in the Green patent,' the Special Program Examiner concludes that Attorney Dorman's failure to call attention to Green during the prosecution of the original patent amounted to 'at least gross negligence.'
*4 Appellants advance several lines of argument against the rejection based on prior art which we summarize as follows: (1) Because Green provides a plurality of apertures on his die roll or cylinder 40, some of which do not open within the dies 43, Green's structure does not provide response for (a) the claim language requiring that the 'at least one aperture' opening within the confines of the die comprise 'substantially the only outlet for air' from the die cutting roll or cylinder, or (b) the claim language requiring that the roll be 'essentially free from apertures' outwardly of the die (Brief, pages 18, 20-22). (2) Because of Green's construction, it is evident that Green is neither concerned with, nor could he obtain, a 'blast effect' for removing material from his die-cutting roll. Rather, the 'volume and pressure of the air will be substantially reduced by reason of the continuous discharge' of air through the apertures both inside and outside the dies of Green. Appellants believe that Green would not want a 'blast effect' since Green is dealing with 'unbaked dough rather than a firm web of paper or the like.' Appellant finds Green's use of brush 60 an indication that Green would not rely solely on any 'impact' effect to remove material from his die-cutting roll (Brief, page 20). (3) Appellants' claimed port construction is distinct from that disclosed by Green which includes 'a multiplicity of ports opening in an axially extending groove' (Brief, pages 22-23). (4) Novick 'does not suggest the structure of the present invention or any proper modification of Green' because Novick is 'directed to an art totally distinct from that of Green' and uses a rotary valve mechanism mounted at the end of his roll in contradistinction to Appellants' manifold construction (Brief, page 24). (5) Novick 'is not concerned with using air pressure to blast out scrap' and 'does not intend to use air impact to discharge anything' from his cutting die (Brief, pages 24- 26). (6) Limiting the number of Green's apertures by elimination of those not exiting within the cutting dies, or modifying the structure of Green's core member 'would totally destroy the purpose and operation of Green, which is for the totally nonanalogous operation of cutting unbaked dough which would be torn apart by a blast effect' (Brief, page 27). Appellants do not argue dependent claims 2, 3 and 6 separately from independent claim 1. Accordingly, the dependent claims will stand or fall with the independent claim. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979).
As to the rejection based on the alleged violation of the duty of disclosure, Appellants assert that (1) the factual basis on which the Special Program Examiner rests his conclusion of intent is deficient, and (2) Green was not material to the original Examiner's determination to allow the claims. These matters will be examined at length infra.
THE REJECTION UNDER 35 USC 103
*5 We shall sustain the Examiner's rejection of claims 1, 2, 3 and 6 under 35 USC 103 as unpatentable over Green in view of Novick. We find ourselves in substantial agreement with the Examiner's assessment of the relevant teachings of these references as stated at pages 2 and 3 of his Answer, which we have quoted above, and we concur in his conclusion that Novick would have made it obvious to the ordinarily skilled worker to have located Green's air-eject apertures only within the confines of the cutting elements or die 43. We do not find the Appellants' arguments persuasive of error in this rejection.
Appellants initially argue that Green fails to anticipate claim 1 as it is ncw written, in that Green's roll 40 is not 'essentially free from [air-discharging] apertures outwardly of said cutting element' 43. They further argue that Green did not anticipate claim 1 as it stood prior to the underlined addition introduced by this reissue. Appellants believe that their recitation that the 'at least one aperture' opening within the confines of the cutting element comprises 'substantially the only outlet for air from said roll' in claim 1 should be construed to exclude a roll structure of the type shown by Green. We need not dwell on this argument inasmuch as the rejection before us for review is based on 35 USC 103, not on 35 USC 102. The Examiner relies on the combined teachings of Green and Novick, not solely on those of Green. It is for precisely the concept of limiting the location of the apertures that the Examiner looks to the secondary reference Novick. Arguments directed to individual references are not persuasive where the rejection is based on the combined teachings of the references. In re Young, 403 F.2d 754, 159 USPQ 725 (CCPA 1968).
Appellants' argument that Green neither desires nor produces a 'blast effect' for removing material from his die-cutting roll is undercut by Green's disclosure. Green makes it clear that the air introduced into his air tube 45, corresponding to the core member of Appellants' claimed manifold, is 'compressed air' (page 2, right column, line 106) and that the air passing through those perforations or apertures 44 which come into registry with the groove 51 in tube 45 causes the material (here, dough), to be 'forced away from the die' (page 2, right column, lines 110-111). Moreover, Green provides a light weight roller 62 downstream from the die-cutting roll whose function is to hold the cut material down on the apron or conveyor 9 'against the action of the air-blast through the dies' (page 3, left column, lines 26-31, emphasis supplied). Given this express disclosure and the structural similarities between Appellants' roll and Green's roll, we are unable to agree that Green lacks a 'blast effect' or fails to exert an impact to remove material from his die cutting roll. That Green additionally utilizes a brush for cleaning the die which may 'if necessary, . . . assist in removing' the material from the die (page 3, left column, lines 14-18) does not negate his express 'blast' teaching.
*6 We do not believe that Appellants' claimed port construction is distinct from that disclosed by Green. Claim 1, as amended in the reissue, requires that at least one generally radially extending port open at a point on the outer circumference of the cylindrical portion of the core member for intermittent registry with at least one aperture in the die-cutting roll. The cylindrical portion of the core member is also claimed as dimensioned and configured to seat within the roll with its outer circumference in close proximity to the inside surface of the roll.
We recognize that Green's unnumbered perforations, corresponding to Appellants' 'at least one aperture,' open into a groove 51 extending along the outer surface of the air tube 45 corresponding to Appellants' core member. We observe from figures 4 and 5 that the portion of tube 45 which fits within the roll 40 is cylindrical and that each perforation, together with the groove 51, forms a port leading from the center of the member 45 to a location on the outer circumference. This location is a 'point' within the non-mathematical sense of that word used in Appellants' claim language. The cylindrical portion of Green's air tube 45 is clearly shown as dimensioned and configured to seat within the roll with its outer circumference in close proximity to the inside surface of roll 40; note again figure 5 of Green. We conclude that the claim language in this respect fails to distinguish from the construction shown by Green.
Appellants' arguments concerning the shortcomings of Novick focus initially on the fact that Appellants' form of construction differs from that used in Novick. That Novick uses a rotary valve mechanism rather than a manifold of the type taught by Appellants is of no moment inasmuch as Green has taught the ordinarily skilled worker a manifold construction of the type Appellants have used.
We note that Novick illustrates, in figures 1 through 6, openings, or apertures, 56 located only within the confines of the cutting blade, or die, 46 located on the exterior of the rotatable cylinder, or roll, defined by members 30, 42, 42. Novick also discloses at column 4, lines 6 through 18, that the cut material within the blade 46 is blown outwardly from the knife at a specified stage of the rotation of the cylinder. Novick, therefore, clearly uses air pressure to impact upon and blast cuttings from his cutting die, contrary to what Appellants have argued. That Novick does not use the same type of arrangement as do Appellants to communicate air pressure to his apertures does not negate the teaching that the cutting is blown from the die.
Appellants final line of argument is that one ordinarily skilled in the art would not find any suggestion to modify Green by Novick because of the differences in, or non-analogousness of the materials handled in Green and Novick and because such a modification would destroy the purpose and operation of Green. We do not find this line of argument persuasive.
*7 We note that Appellants' claims are not limited to any particular type of web material operated upon by the die-cutting roll. We also note that both the Green and Novick references, like appellants disclosed and claimed device, relate to the die cutting of web material by cutting elements carried on the periphery of a rotating cylinder or roll and the subsequent removal of the cut material from the roll. We, therefore, believe that both Green and Novick are clearly within the field of the Appellants' endeavor. Even should we agree that the differences in material being cut place Green outside the field of Appellants' endeavor, the similarity between the cutters and the web material would lead us to conclude that Green is reasonably pertinent to Appellants' problem of removing material from a cutting die on a cylinder at an adjustable location.
We do not believe that elimination of the apertures located outside the confines of the cutting elements of Green would destroy his operation, as Appellants contend. At worst, Green would need to rely on the rotary brush 60 to initiate removal of the web material portions between the dies. Following initiation of removal, it is clear from Green's disclosure at page 3, left column, lines 6 through 13, that the material in these locations will leave 'the dies in long continuous strips, which when started upon the scrap apron 21 continues to be removed by it.' We believe that the ordinarily skilled worker would conclude from this that the apertures of Green which do not open within a die could and should be eliminated, as Novick suggests, and that the conveyor apron 21 would operate to remove the remainder of the web once separation was initiated, e.g., by brush 60.
THE REJECTIONS BASED ON ALLEGED VIOLATIONS OF 37 CFR 1.56
A. IN GENERAL
The rejection advanced by the Special Program Examiner for alleged violation of the duty to disclose is based on the theory that Attorney Ira S. Dorman engaged in inequitable conduct in the prosecution of the original application by withholding material prior art from consideration by the Patent and Trademark Office.
Inequitable conduct requires proof by clear and convincing evidence of a threshold of materiality of the nondisclosed information and of the prosecutor's intent. In re Jerabek, 789 F.2d 886, 229 USPQ 530 (Fed.Cir. 1986); J.P. Stevens & Co. v. Lex Tex. Ltd., 747 F.2d 1553, 223 USPQ 1089 (Fed.Cir.), cert. denied, 106 S. Ct. 73 (1984). Materiality and intent are factual issues. American Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 220 USPQ 763 (Fed.Cir.). cert. denied, 105 S. Ct. 95 (1984). Once the thresholds of materiality and intent are established, inequitable conduct may be determined only by a careful balancing of intent in light of materiality. Jerabek, 229 USPQ at 533; American Hoist, 725 F.2d at 1364, 220 USPQ at 774.
*8 The threshold degree of materiality can be established by any of four tests: (1) objective 'but for'; (2) subjective 'but for'; (3) 'but it may have been'; and (4) PTO Rule 1.56(a) (37 CFR 1.56(a)), i.e., whether there is a substantial likelihood that a reasonable examiner would have considered the omitted reference or false information important in deciding whether to allow the application to issue as a patent. J.P. Stevens, 747 F.2d at 1559, 223 USPQ at 1092. 37 CFR 1.56(a) codifies the PTO policy on fraud and inequitable conduct as of the time (1971) the original patent was being prosecuted. Jerabek, 229 USPQ at 533, note 10; Driscoll v. Cebalo, 731 F.2d 878, 221 USPQ 745 (Fed.Cir. 1984).
is established where an actor in an applicant's position would have reasonably known that the reference was material, e.g., that the reference would have been important to a reasonable examiner in deciding whether to allow the claims.
J.P. Stevens, 747 F.2d at 1564, 223 USPQ at 1096 (emphasis added).
Subjective 'good faith' on the part of an attorney who withholds material prior art from the Patent and Trademark Office will not negate inequitable conduct. Argus Chemical Corporation v. Fibre Glass-Evercoat Company, Inc., 759 F.2d 10, 225 USPQ 1100 (Fed.Cir. 1985). The question, instead, is 'whether a reasonable person in the position of . . . [Appellants'] counsel knew or should have known that the information [withheld] was material.' Id., 225 USPQ at 1103.
The standard for disclosure of known prior art is not limited to those references which anticipate the claimed invention. As the Federal Circuit stated in Argus, 225 USPQ at 1102,
We lay to rest any further argument that in the past the standard for disclosure of known prior art only required that a reference which fully anticipated a patent, thereby destroying novelty under 35 USC § 102, was required to be disclosed to the PTO under an applicant's duty of candor.
In Argus, the patent applicant's attorney amended claims, prior to examination, to avoid reading directly on certain products whose sale created a time bar under 35 USC 102(b). The examiner was never informed of the sales. Id., 225 USPQ at 1101. In holding that the attorney had breached his duty of candor to the Patent and Trademark Office, the Argus Court quoted with approval the following language from In re Clark, 522 F.2d 623, 187 USPQ 209 (CCPA 1975):
*9 We do not agree that appellant could, under the state of the law in 1956 or now, amend claims expressly to avoid a § 102 reference unknown to the examiner and justifiably consider there was no duty to bring that reference to the examiner's attention.
B. MATERIALITY OF GREEN
We need not belabor our consideration of the materiality of Green to Appellants' claimed invention. Our affirmance of the Primary Examiner's rejection of claims 1, 2, 3 and 6 demonstrates our belief that the objective 'but for' test is satisfied here by clear and convincing evidence. Further, the manner in which the Primary Examiner rejected the unamended claims during the prosecution of the parent reissue application under 35 USC 102 and 103, as well as the manner in which the Primary Examiner rejected the amended claims during the prosecution of the present application convince us that had the Examiner of the original application been aware of Green, he would have made similar rejections. Accordingly, the 'subjective' but for test is also satisfied. Finally, we are convinced by our analysis of Green and of Appellants' original disclosure and claims that a reasonable Examiner would have considered the omitted reference important in deciding whether to allow the application to issue as a patent.
We note that Green is more material than those references cited by the Examiner during prosecution of the original patent and more material than the prior art discussed generally in Appellants' original disclosure. Neither Hornung [FN5] nor Ehlscheid [FN6], cited in the original patent, teach a manifold disposed within a die-cutting roll, relative to which manifold the roll rotates for the purpose of intermittently communicating apertures opening in the cutting dies with air pressure supplied through the manifold. The prior art discussed in Appellants' original disclosure under the heading 'BACKGROUND OF THE INVENTION' consists simply of die-cutting rolls having a hollow to which air is connected for constant exit through apertures in the cutting dies. No manifold or intermittent connection formed part of this admitted prior art. Accordingly, the Green patent is, in our opinion, more material than any of the prior art made of record in the original patent application. We note in passing that Hornung and the prior art mentioned in the original disclosure limit their apertures to opening within the confines of the cutting element, as does Novick. We conclude, as did the Primary Examiner, that Green is highly material to the subject matter claimed by Appellants in both the original application and in this continuing reissue application.
Appellants have submitted a series of affidavits and declarations by Attorney Dorman during the prosecution of both the parent and the present reissue application which reveal Attorney Dorman's awareness of the Green reference at a time prior to filing the original patent application on May 3, 1971. The various statements made by Attorney Dorman provide the basis for the Special Program Examiner's conclusion that Attorney Dorman's failure to call Green to the Examiner's attention amounts to 'at least gross negligence.' We turn now to an examination of those statements.
*10 In an affidavit filed July 27, 1981 (First Dorman affidavit), Attorney Dorman stated that:
In connection with the invention described and claimed in the Kesten et al patent [sought to be reissued], a prior art search had been conducted in or about February, 1971 in the classified patent files of the United States Patent and Trademark Office prior to filing of the application; the search developed the following United States patents: No. 642,220 to Green . . . [and others].
He [Attorney Dorman] prepared the application from which the aforesaid patent issue, and prosecuted the application in the PTO.
Based on this affidavit and on information concerning the search supplied by Kumjian in the protest filed October 7, 1981, the Special Program Examiner, by Requirement For Information mailed Oct. 26, 1984, asked Attorney Dorman whether he had reviewed the patents developed by the search, and, if so, when the review occurred. Attorney Dorman responded in a declaration filed December 21, 1984 (First Dorman declaration) that:
He did review the patents cited in the patent search. This was done during the period March 9-11, 1971; he believes that he may also have made a subsequent review during the period April 2-12, 1971.
As a part of Appellants' response filed December 21, 1984, to the Requirement of October 26, 1984, Appellants submitted a copy of a letter to the attention of Attorney Dorman dated March 8, 1971, from Frank C. Maley which reads as follows:
In accordance with your letter dated February 26th, I have spent the authorized time in the above matter and direct your attention to the following patents:
I believe the art is quite pertinent except for the air bearing, but I have cited patents 3,160,357 and 3,169,807 from the bearing art.
It is, therefore, clear that Attorney Dorman was aware of the existence of the Green patent 642,220 prior to filing the original application. It is equally clear that he conducted some degree of review of the patents brought to his attention, including the Green patent, prior to filing the original application. It is not clear from the foregoing evidence, however, precisely what Dorman knew of the disclosure of Green.
In an effort to develop evidence concerning Attorney Dorman's knowledge of the contents of Green, the Special Program Examiner posed the following questions to him in the requirement of October 26, 1984:
2. Why were claims 1-3 and 6 of the '271 patent drafted in such a manner so as to be anticipated by the Green patent under 35 USC 102?
3. Did you discuss any of the references appearing in the March 8, 1971 patent search with Mr. Costas or with any [sic] else? Explain fully.
*11 In answering question 2, Attorney Dorman responded (First Dorman declaration, pages 1 and 2) that:
None of the Claims 1-3 and 6 of the application that ultimately issued as Patent No. 3,698,271 was 'drafted in such a manner so as to be anticipated by the Green patent under 35 USC 102'. The language in the original claim, 'comprising substantially the only outlet for air from said roll' (which characterizes the aperture extending from the cavity of the roll to a location on its outside surface within the confines of the cutting element), was employed to define an assembly in which all of the air supplied to the roll (except for some that might leak--and hence the word 'substantially') would discharge within the confines of the cutting elements and to distinguish the structure of the assembly, as most broadly defined in Claim 1, over disclosure of the sort contained in the Green patent
(emphasis supplied). The emphasized language in the preceding indicates an awareness that Green's disclosure was to some extent pertinent to the invention for which Attorney Dorman was preparing the original application. Dorman elaborates on this awareness in his further response to question 2:
Because of the numerous perforations between the cutting elements, Declarant [Dorman] did not believe [at the time of the review in 1971] that Green could properly be construed to disclose or suggest a roll in which the perforations opening within those elements comprised substantially the only outlets for air from the roll. It was also Declarant's belief [in 1971] that the desired impact would not be produced with an assembly of the type described by Green, because of the express disclosure in the patent that some perforations of the die will, at all times, register with the outlet of the air-tube, and that such impact produced by the claimed assembly would be inconsistent with Green's stated purpose of cleaning dough from a die without breaking or disfiguring it
(First Dorman declaration, page 2).
Attorney Dorman's response to question 3 indicates that he has no specific recollection of discussing Green with either Peter Costas, the other attorney of record, or with the inventors during preparation or pendency of the original application. Statements supplied by Attorney Costas and Martin Kesten, one of the inventors, indicate that they do not recall any specific discussion of Green taking place between either of them and Attorney Dorman during the relevant time period.
In responding to a question directed initially to Attorney Costas regarding any use or consideration of the references uncovered in the search during preparation or prosecution of the original application, Attorney Dorman responded in a second declaration filed December 21, 1984 (Second Dorman declaration) that:
In preparing the application, Declarant believes that he considered all of the references uncovered in the noted prior art search, to the extent indicated in . . . [paragraphs 4-6 of the] Affidavit [First Dorman affidavit] and [in paragraphs 4a and 4b of the] Declaration [First Dorman declaration] . . . (see also paragraph 3 of the Declaration); he does not believe that they were 'used' in the preparation, except as indicated in paragraph 5 of the Affidavit, and paragraph 2a-2c, eg, 4b and 4c of the Declaration.
*12 The portions of the noted paragraphs of the First Dorman Affidavit and the First Dorman declaration which are relevant to Attorney Dorman's consideration of the references, particularly Green, have been quoted above (Paragraphs 4b and 4c are reproduced below). Attorney Dorman also mentions 'his appreciation of pertinency of Green U.S. Patent No. 642,220' in his second affidavit, filed December 2, 1985, in a discussion of why he failed to bring that patent to the Examiner's attention (Second Dorman affidavit, page 5).
Attorney Dorman's appreciation of Green's disclosure was apparently not complete. As he stated in his second affidavit:
At the time Affiant [Dorman] drafted the application from which matured the original patent sought to be reissued hereby, he believed not only that the air-impact feature of the assembly constituted a novel and nonobvious feature of the invention, but also that the use of an adjustable manifold, to enable optimal ejection control, was similarly novel and nonobvious. Following receipt of information from the attorney for Kumjian Enterprises, Inc. . . ., in 1981, he reviewed the Green patent and came to realize that it discloses means for adjusting the angular position of the internal air tube
(Second Dorman affidavit, pages 6 and 7).
He reiterated at oral hearing before this Board that he did not realize in 1971 that Green disclosed means for adjusting the angular position of the internal air tube. While we consider this structure to be clearly shown and described in Green, we have no reason to disbelieve Attorney Dorman on this point.
Attorney Dorman has attempted to explain his failure to explicitly bring any of the references, especially Green, to the attention of the Examiner. In his first affidavit, Attorney Dorman stated:
4. At the time that the application was prepared, it was not his practice to cite, as a matter of course, specific patents within the specification of such applications, nor was it his practice to provide a supplemental recitation of specific prior art patents, such as may now be done by way of a Prior Art Statement. It is believed that, until Rule 56 of the PTO Rules of practice was amended in 1977, traditional standard practice frequently did not entail, and did not require, the citation or disclosure of relevant prior art to the Office. Even under the amended rule, the filing of Prior Art Statements is not mandatory, albeit an encouraged practice.
5. It was, at the time, his practice to describe, in the portion of the specification devoted to the background of the invention, the general problem or problems known or described to him as existing in the pertinent art to which the invention in question was directed, and to ensure that the claims distinguish over the art known to him.
6. Consequently, either it did not occur to him to cite to the PTO the patents developed in the prior art search or, pursuant to practice at the time, he found it unnecessary to do so.
*13 In the October 26, 1984, Requirement, the Special Program Examiner addressed the following question to Attorney Dorman:
4. Do you still consider your practice prior to 1977 and, apparently, subsequent to 1977 of not being required to disclose specific patents to the PTO correct in light of the CAFC decision in Driscoll v. Cebalo, 221 USPQ 745, 750 (CAFC, 1984) which stated that 37 CFR 1.56 represented a codification of the clean hands maxim as applied to patent applicants? Note that the issue in the Driscoll case involved the failure to cite a material reference in 1970. If yes, please discuss fully.
Attorney Dorman responded as follows (First Dorman declaration, pages 5 and 6);
4a. Declarant's practice in regard to the disclosure of specific patents to the PTO, in connection with the filing of patent applications, has not been the same subsequent to 1977 as it was prior thereto. At the present time, and for the past several years, it is and was his consistent practice to cite specific patents, located in any prior art search conducted in connection with the subject matter of an application or otherwise known to him, and believed to be material to examination, in the specification and/or in a separate Prior Art or Information Disclosure Statement.
4b. As stated in Declarant's Affidavit of July 24, 1981 (filed in Serial No. 287,513), at the time that the original application (Serial No. 139,395) was prepared it was his practice to describe, in the portion of the specification devoted to the background of the invention, the general problem or problems known or described to him as existing in the pertinent art to which the invention in question was directed, and to ensure that, the claims distinguished over them. Also, Declarant's pre-1977 practice, of not necessarily citing relevant prior art, is believed to be wholly consistent with what Chisum (Patents, Vol. 4, (Para. 19.03[b], 1984) has described as 'traditional standard practice'. Indeed, the court of Appeals for the Federal Circuit has itself acknowledged that '[I]t is regrettable but true that the present standard [of 37 CFR 1.56(a)] was not earlier recognized, promulgated, and enforced.' Connell v. Sears, Roebuck & Co., 722 F.2d 1642, 1551 [sic], 220 USPQ 193, 201 (1983).
4c. Thus, Declarant does consider that his practice prior to 1977 was correct, as being consistent with prevailing practice as he and others knew it, and as also complying with prevailing criteria for satisfying the clean hands mandate by ensuring that the claims drafted distinguished over the art of which he was aware.
Attorney Dorman indicates that at no time during his legal education or preparation for practice before the PTO, nor during his employment as a patent searcher and as an associate of a small law firm up to May 1972 was he made aware of any policy or practice or duty to call attention of the PTO to material or pertinent prior art (Second Dorman affidavit, pages 1 through 4). However, '[s]ince he first began preparing patent applications . . . [he] was aware that the claims had to be drawn to distinguish over the prior art' (Second Dorman affidavit, page 5). Attorney Dorman explains further:
*14 Because of his educational background and actual experience, at the time of filing of the application that resulted in the patent sought to be reissued by the captioned application, and despite his appreciation of pertinency of Green U.S. Patent No. 642,220, it either did not occur to him or he perceived no need to cite that patent, or any others developed in the search that had been conducted with respect to the invention. As far as he was aware, evaluations of pertinency were then made to enable a recommendation to the client as to the filing of an application, and to ensure that the claims of any application prepared would distinguish over the prior art. Such evaluations did not lead to a decision either to cite or not to cite any patent, on a selective basis. If specifically identified in the specification, as he believes may have occurred in isolated cases, it was because he believed that reference to a particular patent would facilitate an understanding of the invention, or of the advantages to be derived from it
(Second Dorman affidavit, page 5).
Attorney Dorman asserts that his actions were undertaken in a good faith belief that they were correct:
In not citing Green and the other prior art patents that were developed in the search, there was no intent whatsoever to mislead or deceive, or to actively withhold any information. Affiant acted in the good faith belief that his conduct was correct, and he had no reason to believe, and did not believe, that the practice was other than proper and entirely in keeping with his ethical and professional responsibilities
(Second Dorman affidavit, page 5).
Based on our analysis of the evidence presented, we are of the opinion that an attorney in Attorney Dorman's position would have reasonably known that the Green reference was material, i.e., that the Green reference would have been important to a reasonable Examiner in deciding whether to allow the claims in the original patent application. We believe that a reasonable person in Attorney Dorman's position should, at the very least, have known that the information withheld was material.
Attorney Dorman admits having had an 'appreciation of [the] pertinency of Green,' although he has made clear that he was not aware until 1981 that Green included a means for adjusting the angular position of the internal air tube. He states that he did not believe in 1971 that Green could properly be construed to suggest the roll structure claimed due to Green's inclusion of perforations located outside the confines of the cutting die. Nevertheless, it is clear from his discussion of Green's air-tube (First Dorman declaration, page 2) that, in 1971, he appreciated Green's use of a stationary manifold, i.e., the air-tube, within a cavity located inside a roll carrying cutting elements on the exterior thereof. This, of course, is the basic feature missing from the prior art which Attorney Dorman discussed in the Background of the Invention of the original application. We are unwilling to believe that a reasonable person in Attorney Dorman's position would not have recognized that Green was material on this basis alone, whether or not that reasonable person knew of the adjustability of Green's air-tube or manifold.
*15 While there has been much controversy over whether or not Green would have anticipated the original patent claims, the propriety of Attorney Dorman's conduct does not hinge on a determination that Green anticipates those claims. Our reviewing Court has made clear in Argus that it is not only known anticipatory prior art which one under a duty of candor must reveal. Attorney Dorman, having the degree of appreciation of Green to which he has admitted, was not at liberty under the state of the law in 1971 to attempt to draft his claims around a reference of the high level of materiality of Green and justifiably consider there was no duty to bring that reference to the Examiner's attention.
Appellants contend that Attorney Dorman's conduct was not unreasonable for a person in his position, given his relative lack of professional experience, his educational background, and his declared lack of awareness of the requisite duty. Appellants further contend that 'taking the contemporary 1971 practice of the Patent Bar as the measure of reasonableness, his [Dorman's] own was entirely consistent,' citing in support the statement from Connel v. Sears, Roebuck & Co., 722 F.2d 1542, 220 USPQ 193 (Fed.Cir. 1983) that '[i]t is regrettable but true that the present standard was not earlier recognized, promulgated, and enforced.' Appellants also rely on a 1976 survey by the Commissioner of Patents and Trademarks [FN7], indicating that only 54% of the 1600 pending applications surveyed during the week of August 30, 1976, included prior art citations by the applicants, to show reasonableness of Attorney Dorman's conduct. On the matter of Attorney Dorman's 'good faith,' Appellants' quote from Oetiker v. Jurid Werke GmbH, 671 F.2d 596, 215 USPQ 21 (D.C.Cir. 1982), that a 'good faith judgment not to cite prior art to the Patent and Trademark Office, even if erroneous, cannot be fraud,' and from American Hoist that 'good faith judgment or honest mistake might well be a sufficient defense.'
We have carefully considered these contentions but are not persuaded by them. We do not believe that Attorney Dorman's declared ignorance of his duty, nor his particular education and experience, alter the test stated in Argus and J.P. Stevens from that of a hypothetical actor in a particular position, e.g., that of a competent registered patent attorney preparing an application for a client seeking protection of a prospectively valuable property right, to something less.
The 'contemporary 1971 practice' to which Appellants refer is not persuasive on several counts. There is no indication in the report on which this argument is based of the percentage of the 1600 surveyed application in which relevant prior art had come to the applicants' attention, e.g., by way of pre-examination search or otherwise. Moreover, the Court in Argus, 225 USPQ at 1102, 'reject[ed] the view that one's duty to the Patent and Trademark Office should be judged by the least common denominator' among attorneys in practice before the Patent and Trademark Office. The quotation from Connell is removed from a context which otherwise indicates that the Court considered themselves bound by the jury's findings. Moreover, the Court in Connell indicated that they, if at liberty to do so, might have applied 37 CFR 1.56(a) is a codification of prior case law. Jerabek and Driscoll, decided after Connell, in fact make it clear that 37 CFR 1.56(a) is a codification of the Patent and Trademark Office policy on inequitable conduct as of the time (1971) the original application was being prepared and prosecuted.
*16 Appellants' contentions concerning 'good faith' are simply undercut by the Court's statement in Argus that 'Counsel's subjective 'good faith' does not . . . negate inequitable conduct.' We note that the quotation from American Hoist actually relates to a balancing of materiality and intent. Where the art is merely important and not crucial to the decision to reject, facts showing an intent greater than that of gross negligence may be required, in which case 'good faith judgment or honest mistake might well be a sufficient defense.' Id., 220 USPQ at 773.
We cannot agree that a determination here that Attorney Dorman's behavior constituted gross negligence would establish a new 'per se rule.' Rather, the 'rule' being followed here is that set forth in the recent decisions of the Court of Appeals for the Federal Circuit interpreting what constitutes the threshold degree of intent, also termed 'gross negligence.'
Materiality of Green, as we have found, existed in high measure. The threshold degree of intent, also termed 'gross negligence,' has been met. When intent is balanced in light of materiality in the manner in which our reviewing Court has instructed, American Hoist, 220 USPQ at 773, we are constrained to conclude that inequitable conduct occurred through the gross negligence of Appellants' Attorney Dorman in failing to disclose to the Patent and Trademark Office a highly material reference. Accordingly, we sustain the Special Program Examiner's rejection of claims 1 through 8.
The rejection of claims 1, 2, 3 and 6 under 35 USC 103 as unpatentable over Green in view of Novick is sustained.
The rejection of claims 1 through 8 upon examination pursuant to 35 USC 131 and 132 based on a violation of the duty of disclosure as set forth in 37 CFR 1.56 is sustained.
BOARD OF PATENT APPEALS AND INTERFERENCES
Robert F. Stahl
Bruce H. Stoner, Jr
FN1. Claims 4, 5, 7 and 8 have been indicated by the Primary Examiner to be allowable over the prior art.
FN2. Claims 4 and 7 have been amended by re-writing in independent form.
FN3. See In re Dien, 680 F.2d 151, 214 USPQ 10 (CCPA 1982).
FN4. We reproduce claim 1 with additions underlined and deletions enclosed in square brackets as required by 37 CFR 1.173.
FN5. U.S. Patent No. 3,257,885 copy attached to Paper No. 21.
FN6. U.S. Patent No. 3,274,871, copy attached to Paper No. 21.
FN7. A copy of this is attached to the supplemental brief filed December 2, 1985.
Richard G. Besha
I agree with the majority in the affirmance of the rejection based on 35 U.S.C. 103 but disagree, under the facts of this case, with the affirmance of the rejection based on violation of the duty of disclosure under 37 C.F.R. § 1.56.
*17 To start, I agree that a reasonable examiner would have considered Green important in deciding whether to allow the application to issue as a patent within the meaning of 37 C.F.R. § 1.56. Thus, the broadest test of materiality, the U. S. Patent and Trademark Office standard, is met and the threshold degree of materiality set forth in J. P. Stevens, necessary to a holding of inequitable conduct, is established. Where I part company with the majority is in the determination of whether the factual evidence presented, under the clear and convincing standard, supports a finding establishing the threshold intent, in this case gross negligence, necessary to the subsequent determination of inequitable conduct under the J. P. Stevens test.
Considerations of fraud and bad faith are not relevant inasmuch as this rejection is based on a violation of the duty of disclosure set forth in 37 C.F.R. § 1.56(a) through at least gross negligence. Gross negligence has been defined 'as requiring willful, wanton, or reckless misconduct, or evidence of 'utter lack of all care'.' Machinery Corporation of America v. Gullfiber AB, 774 F.2d 467, 227 USPQ 368 (Fed. Cir. 1985). The meaning assigned the words willful, wanton and reckless by Prosser, The Law of Torts, p. 188 (3rd Ed., 1964) is that 'the actor has intentionally done an act of an unreasonable character in disregard of a risk known to him or so obvious that he must be taken to have been aware of it, and so great as to make it highly probable that harm would follow'. Prosser further characterizes these words as highly unreasonable conduct or an extreme departure from ordinary care, an aggravated form of negligence and more than mere thoughtlessness, inadvertence or simple inattention. However, 'mere evidence of simple negligence, oversight or an erroneous judgment made in good faith not to disclose prior art is not sufficient to render a patent unenforceable.' Orthopedic Equipment Co. v. All Orthopedic Appliance, 707 F.2d 1376, 217 USPQ 1281 (Fed. Cir. 1983).
The majority here adopts a per se rule finding threshold intent by finding high materiality under the objective-but-for test. Intent is imputed by a finding of high materiality. To the contrary:
Intent to deceive is also a material factor in the determination of 'inequitable conduct' before the PTO . . . However, intent remains a factor to be weighed in meeting the burden of proving inequitable conduct by clear and convincing evidence, and evidence on the factual question of intent can not be refused consideration.
Kangaroos, U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571 (Fed.Cir. 1985). Kangaroos went further recognizing that while the intent element of inequitable conduct may be found from 'a showing of acts the natural consequences of which were presumably intended by the actor . . . the intent of the actor is a factor to be considered in judicial determination of . . . inequitable conduct'. Additionally, it requires the factfinder to 'evaluate all the facts and circumstances in each case'. In Reactive Metals v. ESM, 769 F.2d 1579, 226 USPQ 821 (Fed. Cir. 1985), the same court reiterated the standards set forth in J. P. Stevens, which the majority applies here, yet found no evidence of gross negligence or wrongful intent in the face of non-disclosure of admitted prior sales that invalidated the patent. Indeed, non-disclosure by patentee in Reactive was excused on the basis that applicant simply misunderstood the oath and disregarded its significance. Clearly, the court was saying that evidence of intent must be considered. Kangaroos confirmed this by holding that patentee could not be denied the opportunity to submit evidence of intent on the issue of inequitable conduct. Evidence of such intent includes the actual state of mind of the individual charged with inequitable conduct. Argus is not to the contrary because, in The Laitram Corporation v. Cambridge Wire Cloth Company, 228 USPQ 935 (Fed. Cir. 1986), the same court stated that it was erroneous to conclude from Argus that "subjective good faith' is never a defense to a claim of inequitable conduct'. The evidence of intent and materiality in Laitram was weighed and a balance was struck between the two.
*18 Here, Attorney Dorman drafted original claims to distinguish (and in my view did distinguish [FN1]) Green in the sense of avoiding anticipation with respect to the air blast feature. He believed such claims patentably distinguished Green on that basis alone and in conjunction with his (albeit mistaken) belief that Green did not disclose the angular adjustment feature. Attorney Dorman simply lacked awareness of the angular adjustment feature in Green (which the majority indicates it has no reason to disbelieve) at the time he prepared the original patent application. [FN2]
Additionally, appellants have submitted evidence, principally Attorney Dorman's education and work experience; statements in publications, e.g., the Federal Register and Chisum's treatise Patents, Volume 4, para. 19.03(2)(b), 1984; and a report entitled 'Report on Results of a Survey on the Citation by Applicant of Prior Art in Patent Applications' over the signature of the then Commissioner of Patents. Appellants have also referred to a statement in Connell, where our reviewing court acknowledged that the present 37 C.F.R. 1.56(a) standard was not earlier recognized, promulgated and enforced. That record reflects the patent practice prevailing at the time this application was filed. It bears on the reasonableness of Attorney Dorman's conduct at that time. The majority dismisses the argument that Attorney Dorman's conduct was wholly consistent with established patent practice at that time by quoting from Argus to the effect that good faith does not negate inequitable conduct. That, however, begs the question whether inequitable conduct has in fact occurred. It is also contrary to the statements in Kangaroos and Laitram requiring consideration of evidence of intent and permitting evidence of good faith, respectively.
While our reviewing court has indicated that 37 C.F.R. § 1.56(d) was a codification of existing law, appellants do not contest what the law was at that time. Rather, they have submitted evidence which bears on the element of intent, properly placing that issue for consideration in the context of the patent practice prevailing at that time. Attorney Dorman's conduct in my view was wholly consistent with such prevailing practice.
Weighing these facts against the act of non-disclosure of Green and absent, as here, additional evidence indicating culpability, I would find such facts fall short of establishing the willful, wanton, and reckless conduct necessary to hold gross negligence under the clear and convincing standard.
There is an additional reason why I would reverse the examiner's decision holding inequitable conduct. The holdings of recent cases of our reviewing court indicate that, where inequitable conduct has been found, there has been a clear showing of heightened awareness of the activity or reference which constitutes the factual basis for the holding. The level of awareness or knowledge of the activity or reference has been beyond that of simply awareness or knowledge of its existence. Evidence was presented to show recognition of the significance of the activity or reference by the inventor or attorney in relation to an aspect of patentability, and action based on such recognition was present.
*19 For example in Clark, the Strickler memorandum forcefully demonstrated how material applicant believed the Stowe et al. reference to be. In J. P. Stevens, heightened awareness and knowledge of the significance of the Weiss and DeGasso patents, which formed the basis of the inequitable conduct holding, were found in the rejection in a companion application of a claim in view of DeGasso, licenses taken under Weiss, and the foreign applications rejected on Weiss. Correspondence between attorneys and inventors demonstrated full awareness of materiality of the Canadian Patent in Driscoll. The attorney's confirmation of the sales of the dry powder and subsequent modification of the claims demonstrated in Argus enhanced knowledge and awareness of the prior sales as activities which rightfully should have been called to the attention of the U.S. Patent and Trademark Office. That counsel in Jerabek was repeatedly confronted with the Sattler patent and its contents, used Sattler in a foreign opposition proceeding, referenced Sattler in various correspondence and cited it to foreign counsel, all evidenced heightened awareness and knowledge by the party charged with inequitable conduct. In sharp contrast, where simple awareness of prior patent invalidating sales was found in Reactive, no gross negligence i.e., inequitable conduct, was found.
My view of the facts here does not reveal any heightened awareness or knowledge of the significance of Green by Attorney Dorman. Rather, the facts reveal knowledge of Green's existence, a recognition of the air blast feature in Green, an effort to define original claims over Green in that respect consistent with prevailing patent practice, and a total lack of awareness or knowledge of the angular adjustment feature in Green. Under these facts, I find no heightened awareness or knowledge of Green sufficient to impute to Attorney Dorman gross negligence in failing to disclose Green to the U.S. Patent and Trademark Office at that time. Consequently, threshold intent as defined in J.P. Stevens has not been met and it follows that inequitable conduct cannot likewise be found.
FN1. Original claim 1 required the aperture to constitute 'substantially the only outlet for air from said roll'. Without the amendment of original claim 1, I would still hold Green to be non-anticipatory in this respect because the openings in the Green roll between the axially spaced dies constitute additional outlets for air from the roll.
FN2. The majority holding, in effect, charges him with knowledge of the angular adjustment feature. However, lack of awareness or actual knowledge of that feature bears on Attorney Dorman's intent. He can hardly be said to intend to conceal that of which he was not aware or had knowledge.
Additionally, it is only a fortuitous circumstance that both the air blast and angular adjustment features appear in the same patent document which the majority holds forms the basis of prior art highly material under the objective but-for test. Thus, even if the act of withholding the patent can be said to have been intended by Dorman, such intent was only with respect to the air blast feature which the evidence of record does not disclose would have been sufficient to refuse issuance of the patent.
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