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In re Dinsmore

United States Court of Appeals, Federal Circuit

June 10, 2014

IN RE MARK T. DINSMORE AND DAVID J. CARUSO

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Serial No. 12/137,662.

ORLANDO LOPEZ, Burns & Levinson LLP, of Boston, Massachusetts, argued for appellants.

COKE MORGAN STEWART, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, argued for appellee. With her on the brief were NATHAN K. KELLEY, Deputy General Counsel for Intellectual Property Law and Solicitor, and KRISTI L. R. SAWERT, Associate Solicitor.

Before TARANTO, BRYSON, and HUGHES, Circuit Judges.

OPINION

Page 1344

Taranto, Circuit Judge.

Mark Dinsmore and David Caruso (" applicants" ), who are the inventors named in U.S. Patent No. 7,236,568, applied to reissue the '568 patent under 35 U.S.C. § 251. During the patent's prosecution, they had recorded a terminal disclaimer in response to rejections for obviousness-type double patenting. The terminal disclaimer declares that the '568 patent " shall be enforceable only for and during such period" as it is commonly owned with the patent that underlay the double-patenting rejections. In their reissue application, the applicants sought to modify the recorded terminal disclaimer to delete the common-ownership provision, and to modify the claims that gave rise to the disclaimer, because the two patents are not and never have been commonly owned. An examiner in the Patent and Trademark Office rejected the reissue application, and the Patent Trial and Appeal Board affirmed. Ex parte Dinsmore, No. 13-6879, 2013 WL 5274029 (Patent Tr. & App. Bd. June 3, 2013). Because the applicants have not identified an " error" within the meaning of section 251, we affirm.

Background

The '568 patent, entitled " Miniature x-ray source with improved output stability and voltage standoff," issued on June 26, 2007, with Mr. Dinsmore and Mr. Caruso listed as inventors and twX, LLC as the sole assignee. During prosecution, the examiner, in addition to rejecting all the filed claims on several prior-art grounds, had rejected claims 1 and 18-20 of the original application--which eventually became issued claims 1, 16-17, and 21 of the '568 patent--" on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims . . . of U.S. Patent No. 6,658,086," J.A. 553, a 2003 patent listing Mr. Dinsmore as the sole inventor and a firm called Carl Zeiss as the sole assignee. The applicants responded by filing a terminal disclaimer over the '086 patent, disclaiming any term for the '568 patent beyond the expiration date of the '086 patent, and narrowing all of the filed claims to overcome other rejections that the examiner had made under 35 U.S.C. § § 102 & 103. The '568 patent then issued.

To file the terminal disclaimer, the applicants completed and submitted the PTO's terminal-disclaimer form, PTO/SB/26, entitled

Page 1345

" Terminal Disclaimer To Obviate A Double Patenting Rejection Over A 'Prior' Patent." As required by 37 C.F.R. § 1.321(c)--which addresses terminal disclaimers " filed to obviate [a] judicially created double patenting" rejection--the applicants' terminal disclaimer declares that " any patent so granted on the instant application shall be enforceable only for and during such period that it and the prior patent are commonly owned." J.A. 579. It says nothing about who then actually owned, or will in the future own, the '086 patent that gave rise to the disclaimer. In filing the disclaimer, the applicants stated: " The enclosed terminal disclaimer in compliance with 37 CFR 1.321(c) overcomes the obviousness-type double patenting rejection." J.A. 575. In allowing the claims, the examiner said that the disclaimer had been reviewed, accepted, and recorded.

On June 12, 2008, the applicants applied to reissue all claims of the '568 patent under 35 U.S.C. § 251, seeking simply to remove the recorded terminal disclaimer without substituting a new one or amending any of the claims. Implementing section 251's precondition of " error" for reissue, a PTO regulation required the applicants to file a reissue declaration that, among other things, identified " [a]t least one error upon which reissue is based." 37 C.F.R. § 1.175(a)(1). The applicants stated in their (initial) declaration that they

inadvertently and without deceptive intent filed a Terminal Disclaimer over [the '086 patent], which was not commonly owned by the owners of ...

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