In re Wadlinger

MILLER, Judge

(concurring).

Although I am in full accord with the result reached by the majority and with most of its opinion, I cannot agree with its oblique criticism of this court’s statement in Wesseler that in Byers the court “ignored the fact that the new reissue statute broadened the term ‘error’ by not limiting it to ‘error’ that had arisen through ‘inadvertence, accident or mistake.’ ”

In Byers, this court agreed with the board’s decision, affirming the rejection of claims in a reissue application. The court said: “It is well settled that the deliberate withdrawal or amendment of a claim in order to obtain a patent does not involve inadvertence, accident or mistake and is not an error of the kind which will justify a reissue of the patent including the matter withdrawn.”

In Wesseler, this court found that, while the appellant had acted “deliberately” in cancelling claims, this was “error without any deceptive intention.” It reversed the board’s decision affirming the rejection of claims in a reissue application.

Now the majority would revert to Byers, saying that the court was correct in its statement that:

The use of the word “error” . instead of the words “inadvertence, accident or mistake,” which appeared in the corresponding section . of the patent statutes prior to the re-codification of 1952, does not involve a substantive change, and the same type of error is necessary to justify a reissue after the enactment of the Patent Act of 1952 ....

It cites the Commentary by Federico which, discussing section 251, says:

There is no indication in the printed record that this change in language *1210 was intended to effect any change in substance and, since the old phrase was usually rather liberally construed, except when the reissue sought to recapture claims cancelled during the prosecution of the original patent, this question would be of minor significance except in connection with the situation mentioned.

However, the Commentary adds:

As to this situation there would be a large body of precedent to overcome, but one commentary urges that there is a liberalization in this respect.

Far more relevant to the determination of legislative intent are the Committee Reports of the House of Representatives and the Senate. These state that “there are a number of changes in substantive statutory law.” 1 Giving substance to the changes in language made by section 251, as the court did in Wesseler, accords with this statement.

A fundamental principle of statutory interpretation is that a substantial change in language is evidence that a departure from the old law was intended. Johnson v. United States, 225 U.S. 405 , 32 S.Ct. 748 , 56 L.Ed. 1142 (1912). Here we have a change in the phrase “by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention,” to “through error without any deceptive intention.” The plain meaning of the new language is that reissue will be allowed for any error, deliberate or not, except where there is “deceptive intention”; whereas, the old language allowed reissue only where there was error consisting of “inadvertence, accident, or mistake,” which had been interpreted by “a large body of precedent” not to include deliberate cancellation. In re Byers, supra. It may be, as the court in St.- Regis Paper Co. put it, “difficult to imagine an ‘error’ which would not be encompassed by any of the terms “inadvertence, accident, or mistake’.” However, “a large body of precedent” indicates that deliberate error (e.g. cancellation) was not encompassed by those terms. Congress is presumed to have had knowledge of the “large body of precedent.” See Zemel v. Rusk, 381 U.S. 1 , 85 S.Ct. 1271 , 14 L.Ed.2d 179 (1965). Thus there is ample basis for the presumption that Congress intended liberalization of the reissue statute. The majority opinion falls far short of rebutting that presumption.

Even assuming, arguendo, that no substantive change was intended, if the language is clear it is conclusive. “There can be no construction when there is nothing to construe.” United States v. Hartwell, 73 U.S. (6 Wall.) 385, 396 , 18 L.Ed. 830 (1868). Rules of interpretation are resorted to for the purpose of resolving an ambiguity, not for the purpose of creating it. Railroad Comm, of Wisconsin v. Chicago, B & Q R.R. Co., 257 U.S. 563, 589 , 42 S.Ct. 232 , 66 L.Ed. 371 (1922). This court should follow the plain meaning of the language “through error without any deceptive intention,” unless the words are otherwise defined by the statute. If the Congress intended no change but, nevertheless, enacted one, it is for the Congress and not the courts to rectify its “deliberate mistake.”

By interpreting “mistake” to include deliberate cancellation, the majority is saying, in effect, that the “well settled” principle referred to in Byers was wrong in the first instance. It over *1211 comes the “large body of precedent” referred to by Federico — not by recognizing a substantive change enacted by Congress, but by renouncing this court’s holding in Byers after a lapse of eighteen years.

. H.R.Rep.No. 1923, 82d Cong. 2d Sess. 5 (1952) ; S.Rep.No.1979, 82d Cong. 2d Sess. 4 (1952). The House Report (p. 8) and the Senate Report (p. 7) both state that sections 251 and 252 are a “development” of the present statute; that they “make a number of clarifications and a few additions in further development of the subject [of reissue].” The revision notes accompanying each report merely state that “some changes in language” appear in section 251 compared to its predecessor, 35 TJ.S.C. § 64 (1946 ed.). However, changing the language to cover a patentee “claiming as his own invention or discovery more than he had a right to claim” to “claiming more or less than he had a right to claim” (emphasis supplied) obviously was a substantive change. So too the broader language “error without any deceptive intention” represents a substantive change.