In Re Arnold B. Serenkin ( 2007 )

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United States Court of Appeals for the Federal Circuit
06-1242
(Serial No. 10/134,550)
IN RE ARNOLD B. SERENKIN
John E. Nathan, Paul, Weiss, Rifkind, Wharton & Garrison LLP, of New York, New
York, argued for appellant. With him on the brief was Jeffrey H. Ingerman and John R.
Lane, Ropes & Gray LLP, of New York, New York. Of counsel was Gongjun Ji.
Heather F. Auyang, Associate Solicitor, United States Patent and Trademark
Office, of Arlington, Virginia, argued for appellee. With her on the brief were John M.
Whealan, Solicitor and Thomas W. Krause, Associate Solicitors.
Appealed from: United States Board of Patent Appeals and Interferences, Patent and
Trademark Office.
United States Court of Appeals for the Federal Circuit
06-1242
(Serial No. 10/134,550)
IN RE ARNOLD B. SERENKIN
_____________________
DECIDED: March 6, 2007
_____________________
Before LOURIE, SCHALL, and GAJARSA, Circuit Judges.
LOURIE, Circuit Judge.
Arnold B. Serenkin (“Serenkin”) appeals from the final decision of the United
States Patent and Trademark Office (“PTO”) Board of Patent Appeals and Interferences
(“Board”) sustaining the examiner’s rejection of claims 1 to 11 of Reissue Application
No. 10/134,550 (“the ’550 reissue application”). Because the Board correctly
determined that the error upon which Serenkin bases his reissue application is not
correctable error under 35 U.S.C. § 251, we affirm.
BACKGROUND
On January 29, 1997, Serenkin filed U.S. Provisional Patent Application No.
60/036,649 (“the ’649 provisional application”) in the PTO. That application, entitled
“Apparatus and Method for Uniformly Discharging Bulk Solid Material from Overhead
Drag Type Conveyors,” relates to an improvement on a type of mechanical conveyor.
The application consisted of five pages and eight figures. Some of the figures included
multiple illustrations.
On January 28, 1998, one day less than a year after the filing of the ’649
provisional application, Serenkin, through his counsel, submitted an application to the
PTO in its capacity as the United States Receiving Office (“USRO”) under the Patent
Cooperation Treaty (“the PCT application”). The PCT application claimed priority from
the ’649 provisional application. Although the request form indicated that eight pages of
drawings accompanied the application, and the PCT application referenced the eight
figures in the specification, no drawings were included with the application. The USRO
sent a postcard to Serenkin notifying him of the receipt of the application and the
missing drawings.
On February 17, 1998, Serenkin submitted eight sheets of drawings to the
USRO. On February 26, 1998, the USRO sent a formal notice entitled “Notification of
Non-inclusion of Drawings with the International Application,” indicating that the
drawings were missing from the original filing and providing Serenkin with the choice of
either submitting the drawings and receiving a new international filing date, or
proceeding without the drawings and retaining the original filing date. In the event
Serenkin chose the latter, the USRO informed him that “any reference in the
international application to these drawings will be considered non-existent” and “will not
be taken into account for the purposes of the international processing.”
The USRO issued a Petition Decision on March 24, 1998, stating that pursuant to
PCT Rule 20.2(a) and PCT Administrative Instructions, sections 309(b) and 310, “the
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filing date of an international application is the date when all the papers completing the
international application are received.” Thus, the office stated that the drawings could
not be treated as having been submitted on the original filing date. The USRO again
informed Serenkin that he must decide within fifteen days whether he preferred to retain
the original filing date of January 28, 1998, with the application as filed without
drawings, or incorporate the drawings as part of the application and accept a new filing
date of February 17, 1998. If Serenkin chose the latter, the USRO specifically stated
that the priority date of January 29, 1997 would be lost.
On March 31, 1998, Serenkin’s attorney filed a petition to the USRO accepting
the February 17, 1998 filing date. By letter dated August 19, 1998, the attorney again
informed the USRO that Serenkin wished to include the drawings in the application and
that the revised filing date was acceptable. Notably, the attorney requested that the
World Intellectual Property Organization “republish th[e] application showing a filing date
of 17 February 1998 with no priority claim and the eight sheets of drawings filed on 17
February 1998.” On September 10, 1998, the USRO confirmed that the drawings were
received, and the application was accorded an international filing date of February 17,
1998.
On August 21, 1998, Serenkin’s attorney filed a request to commence the United
States national phase of the PCT application. The national stage application was
assigned Application No. 09/125,736 (“the ’736 application”). The request was
accompanied by a preliminary amendment that deleted the following sentence that
appeared in the original application: “This application claims the benefit of U.S.
Provisional Patent Application No. 60/036,649, filed January 29, 1997.” The sentence
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was replaced with: “This is the national phase of International Application No.
PCT/US98/01446 filed February 17, 1998.” Serenkin filed his inventor’s declaration on
December 9, 1998, which became the filing date of the application. On August 29,
2000, the ’736 application issued as U.S. Patent 6,109,425 (“the ’425 patent”).
On April 30, 2002, Serenkin, through new counsel, sought reissue of the ’425
patent, seeking to obtain the benefit of the January 29, 1997, filing date for the ’649
provisional application. The examiner issued a final rejection of the reissue application
on November 4, 2002, concluding that “the error which is relied upon to support the
reissue application is not an error upon which a reissue can be based.” Serenkin also
filed a petition under 37 C.F.R. §§ 1.181 and 1.182 for retroactive award of an earlier
international filing date in the Office of the PCT Legal Administrator. That petition was
dismissed on February 6, 2003.
Serenkin appealed the examiner’s rejection to the Board on May 1, 2003. The
Board sustained the rejection, noting that under the PCT and applicable U.S. statutes,
Serenkin failed to perfect his claim for priority from the provisional application. The
Board concluded that the PCT application had been properly accorded an international
filing date of February 17, 1998. Moreover, the Board determined that Serenkin failed
to obtain the benefit of the earlier filing date, not because of inadvertence, accident, or
mistake, which are correctable by reissue under § 251, but because of a deliberate
choice, which it construed as an error of judgment.
Serenkin timely appealed. We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(A).
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DISCUSSION
Whether an applicant satisfies the statutory requirements of 35 U.S.C. § 251 is a
question of law that we review de novo. In re Clement, 131 F.3d 1464, 1468 (Fed. Cir.
1997). We review the Board’s underlying factual findings for substantial evidence. In re
Roemer, 258 F.3d 1303, 1307 (Fed. Cir. 2001).
On appeal, Serenkin argues that the Board erred in determining that reissue is
not an available remedy for what he argues is “error” in this case. Serenkin asserts that
his attorney simply made the wrong procedural choice during prosecution of the PCT
application. In hindsight fashion, Serenkin argues that the attorney should have
accepted the January 28, 1998 filing date without the drawings, and added the drawings
at some later point, arguing that they would not have introduced new matter. Under
such circumstances, Serenkin asserts that he would have been able to claim priority
from the ’649 provisional application. While admitting that the relief he seeks is not
available under PCT procedures, Serenkin argues that such a procedural mistake is
remediable under § 251, particularly in light of our case law authorizing the use of
reissue to correct prosecution mistakes. Moreover, Serenkin contends that the Board
improperly relied on recapture cases, which are inapplicable here, in concluding that
errors of judgment are not correctable under § 251.
The Director of the PTO responds that the Board correctly concluded that reissue
is not an available remedy in this case. The Director asserts that Serenkin made a
deliberate choice to forgo the earlier filing date in exchange for inclusion of the drawings
in his PCT application. Such a deliberate choice, according to the Director, is not the
type of error correctable under § 251. Additionally, the Director contends that under the
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provisions of the PCT agreement and the United States patent laws, the ’425 patent
was properly accorded an international filing date of February 17, 1998. Thus, the
Director asserts that requiring the PTO to change the priority date of the ’425 patent
would result in a violation of the treaty agreement.
We agree with the Director that the Board properly concluded that it is not
permissible for Serenkin to claim the benefit of the earlier filing date through the reissue
process. Section 251, which governs reissue of defective patents, provides in pertinent
part that:
Whenever any patent is, through error without any deceptive intention,
deemed wholly or partly inoperative or invalid, by reason of a defective
specification or drawing, or by reason of the patentee claiming more or
less than he had a right to claim in the patent, the Director shall . . .
reissue the patent for the invention disclosed in the original patent . . . for
the unexpired part of the term of the original patent.
35 U.S.C. § 251 (emphasis added). In deciding the instant appeal, we must determine
whether the action of Serenkin’s attorney, specifically, the act of choosing a later filing
date during prosecution of the PCT application in exchange for inclusion of missing
drawings, constitutes an “error” that is correctable under § 251. We conclude that it
does not.
While we have acknowledged that § 251 is “based on fundamental principles of
equity and fairness, and should be construed liberally,” In re Weiler, 790 F.2d 1576,
1579 (Fed. Cir. 1986), we have also stated that the remedial function of the statute is
not without limits. MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323 (Fed. Cir.
2007). Indeed, “[t]he reissue statute was not enacted as a panacea for all patent
prosecution problems, nor as a grant to the patentee of a second opportunity to
prosecute de novo his original application.” Weiler, 790 F.2d at 1582. Thus, “not every
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event or circumstance that might be labeled ‘error’ is correctable by reissue.” Id. at
1579.
Our case law holds that the deliberate action of an inventor or attorney during
prosecution generally fails to qualify as a correctable error under § 251. Our
predecessor court, the Court of Customs and Patent Appeals, so held in In re Mead,
581 F.2d 251 (CCPA 1978). In that case, the inventor’s attorney made the deliberate
choice of not filing a continuing application during the pendency of the parent application
in order to cover subject matter that was disclosed, but not claimed, in the original
application. Although he may have had the intention of filing a subsequent application
to cover that subject matter within the applicable one-year statutory bar period, in the
interim he discovered intervening prior art that was capable of defeating patentability of
that subject matter unless he was able to claim priority from the parent application. The
court held that the inventor could not rely on § 251 to correct that purported error.
Notably, the court stated:
When his attorney made the conscious choice of breaking appellant’s
chain of copendency by letting the application issue, with the plan to claim
in the subsequent application, he knew, or should have known, that there
could exist intervening references . . . which could defeat patentability of
the disclosed but unclaimed subject matter in the original patent. That
intentional omission of the appealed subject matter from the original
application combined with the plan to claim it in the subsequent
application, does not constitute “error” under § 251 because to permit
appellant to use the reissue statute in this manner would defeat the
purpose behind the copendency requirement of § 120 of the statute.
Id. at 257 (emphasis added).
Similarly, in In re Orita, 550 F.2d 1277 (CCPA 1977), the Court of Customs and
Patent Appeals found that the reissue applicant failed to establish error under § 251.
The Orita inventor filed two sets of claims—the first involving compound and process
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claims, the second involving coating and emulsion claims—in one application. The
examiner required restriction between the two sets of claims. The inventor’s counsel
elected the first set, and authorized the cancellation of the non-elected claims. The
attorney, however, failed to subsequently file a timely divisional application covering the
non-elected claims. The inventor then filed a reissue application, arguing that the failure
to file a divisional application was a correctable error under § 251. The court disagreed,
holding that the error did not cause “the original patent to be ‘partially inoperative by
reason of the patentee claiming less that he had a right to claim in the patent.’” Id. at
1280. The court noted that the inventor “acquiesced in the examiner’s requirement for
restriction,” and therefore failed to establish a correctable error. Id. Moreover, the court
reasoned that if the inventor prevailed, the copendency requirement would be rendered
meaningless. Id. at 1280-81.
The instant case presents similar circumstances. Serenkin’s attorney
acquiesced to the PCT examiner’s requirement of making a choice between the original
international filing date and the drawings. He made a conscious decision to select the
latter. Notably, unlike the attorney in Mead, the consequence of losing the January 28,
1998 filing date was not a fact discovered at some later point, but was an issue that was
brought to the attention of Serenkin’s attorney by the USRO at the time of his decision.
Yet he proceeded to choose that option. Thus, this case is even less meritorious than
Mead. Serenkin cannot now rely on the reissue statute, in light of a belated decision
that he should have retained the original filing date, in order to undo the consequences
of his attorney’s deliberate choice. As the court articulated in Orita, to do so would
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undermine the importance of the applicable rules set forth by our national patent laws
and international patent treaties.
We reject Serenkin’s assertion that the Board erred in light of prior case law
wherein various courts found reissue to be an appropriate vehicle for perfecting priority
claims to earlier applications. As a preliminary matter, we note that the present case, in
essence, is not about the failure of an applicant to perfect a claim for priority. The
applicant was fully alert to the benefits of claiming priority. To characterize this case
more accurately, it is about an applicant who intentionally and knowingly surrendered
his right to a claim of priority, in exchange for a benefit, and now is unhappy with his
choice. We find that to be a significant distinction over the cases cited by Serenkin.
Moreover, although the courts in those cases held that reissue could be used to
perfect a claim for priority, none involved a situation where an attorney made a
deliberate decision to forgo any right to a priority claim in exchange for the benefit of
including newly submitted drawings or other material in his application. See Brenner v.
State of Israel, 400 F.2d 789 (D.C. Cir. 1968) (holding that reissue is appropriate when
an attorney made a clerical error by failing to file a certified copy of the foreign
application from which priority was claimed); see also Fontijn v. Okamoto, 518 F.2d 610(CCPA 1975) (concluding that reissue is a proper mechanism for perfecting priority
where patentee failed to notify PTO of earlier-filed copending applications during
prosecution of original application); Sampson v. Comm’r, 195 USPQ 136 (D.D.C. 1976)
(holding that reissue is appropriate to perfect priority claim where patentee substantially
complied with the statutory requirements but inadvertently omitted the filing dates from
prior applications). Instead, the errors in those cases were the result of inadvertence,
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accident, or mistake, which clearly are appropriate bases for reissue. Weiler, 790 F.2d
at 1582 (citing In re Wadlinger, 496 F.2d 1200, 1207 (CCPA 1974)). The distinction is
between a genuine error, or mistake, and a deliberate, but subsequently found to be
disadvantageous, choice.
Further, we are not persuaded by Serenkin’s argument that the Board erred by
relying on recapture cases in reaching his decision. That argument fails to focus on the
dispositive issue before us, viz., whether a remediable error occurred under § 251. The
cases relied upon by the Board are instructive in indicating the types of errors that are
correctable through reissue, even though they arise out of circumstances not relating to
priority claims. See Wadlinger, 496 F.2d at 1207 (noting that errors arising from
inadvertence, accident, or mistake are correctable under the reissue statute); see also
In re Murray, 77 F.2d 651 (CCPA 1935) (stating that the reissue statute “was not
enacted for the purpose of correcting errors of judgment”).
Finally, we reject Serenkin’s argument that reissue is appropriate in light of In re
Wadlinger, wherein the Court of Customs and Patent Appeals concluded that error
under § 251 may include “actions taken in full consciousness.” 496 F.2d at 1207. In
dictum, the court stated that correctable errors can include “mistakes” which it defined
as including “to choose wrongly.” According to Serenkin, because his attorney “chose
wrongly” when confronted with the two options, that wrong choice is correctable by
reissue.
We disagree with Serenkin’s overly broad reading of Wadlinger. In that case, the
court was presented with the issue whether an applicant can use the reissue process to
obtain claims that were narrower than claims that were previously cancelled by the
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applicant. In deciding that question, the court first noted the well-established principle
that “[t]he deliberate cancellation of a claim of an original application in order to secure a
patent cannot ordinarily be said to be an ‘error’ and will in most cases prevent the
applicant from obtaining the cancelled claim by reissue.” Id. at 1206 (quoting In re
Willingham, 282 F.2d 353, 357 (CCPA 1960)). The court then stated, however, that the
extent to which the reissue statute prevents an applicant from obtaining claims that
differ in form or substance from the cancelled claims “necessarily depends upon the
facts in each case and particularly on the reasons for the cancellation.” Id. After
conducting a fact-intensive review of the record, the court determined that the reissue
claims were different, specifically narrower in scope than the cancelled claims, and were
thus permissible under § 251 because the original patent claimed less than it had a right
to claim. The court so held, despite the fact that the cancellation of the original claims
was deliberate.
Thus, the nature of the error asserted in Wadlinger differs greatly from the so-
called error asserted here. Serenkin is not attempting to obtain claims that differ in
scope from claims that he previously cancelled. Instead, he is attempting to use the
reissue process to undo the consequences of his attorney’s conscious decision to give
up an earlier filing date so that certain material, which was considered important at the
time, would be considered with his PCT application. He did not claim less than he had a
right to claim. Because this case presents an entirely different set of circumstances,
Wadlinger is thus distinguishable and fails to support Serenkin’s position. As discussed
above, the purported error asserted by Serenkin is not the type of error contemplated by
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the reissue statute. We therefore hold that Serenkin may not rely on § 251 to perfect
his claim for priority.
CONCLUSION
We have considered Serenkin’s remaining arguments and find them
unpersuasive. Accordingly, we conclude that the Board did not err in sustaining the
rejection of reissue claims 1 to 11 of the ’550 reissue application in light of Serenkin’s
failure to establish a correctable error under § 251.
AFFIRMED.
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