Free Declaration - District Court of Delaware - Delaware

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United States Court of Appeals for the Federal Circuit

2007-1262

BALDWIN GRAPHIC SYSTEMS, INC., Plaintiff-Appellant, v.

SIEBERT, INC., Defendant-Appellee.

Thomas B. Kenworthy, Morgan, Lewis & Bockius LLP, of Philadelphia, Pennsylvania, argued for plaintiff-appellant. With him on the brief was Kenneth J. Davis. Keith D. Parr, Lord, Bissell & Brook LLP, of Chicago, Illinois, argued for defendant-appellee. With him on the brief were Hugh S. Balsam and James T. Peterka. Of counsel on the brief was Robert P. Conlon, Walker Wilcox Matousek LLP, of Chicago, Illinois. Appealed from: United States District Court for the Northern District of Illinois Senior Judge James B. Moran

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United States Court of Appeals for the Federal Circuit
2007-1262

BALDWIN GRAPHIC SYSTEMS, INC., Plaintiff-Appellant,

v.

SIEBERT, INC., Defendant-Appellee.

Appeal from the United States District Court for the Northern District of Illinois in case no. 03-CV-7713, Senior Judge James B. Moran. ___________________________ DECIDED: January 15, 2008 ___________________________ Before MICHEL, Chief Judge, RADER, and MOORE, Circuit Judges.

RADER, Circuit Judge. Baldwin Graphic Systems, Inc. (Baldwin) sued Siebert, Inc. (Siebert) for infringement of U.S. Patent No. Re. 35,976 (the Reissue patent) and U.S. Patent No. 5,974,976 (the '976 patent). After conducting a Markman hearing, the United States District Court for the Northern District of Illinois ultimately granted Siebert's motions for summary judgment of non-infringement of both patents. Because the district court

erred in its construction of some of the disputed claim terms, this court affirms-in-part, reverses-in-part, and remands.

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I Baldwin's patents claim systems for cleaning a cylinder of a printing press using strips of cleaning fabric and methods for making those systems. Baldwin sued Siebert, asserting that Siebert's packaged fabric rolls infringed claim 32 of the Reissue patent and claims 1, 7, 9, 12, 14, 23, and 25 of the '976 patent. * The district court construed two phrases in claim 32 of the Reissue patent, "a pre-soaked fabric roll" and "sealed sleeve." Claim 32 of the Reissue patent states:

32. A pre-packaged, pre-soaked cleaning system for use to clean the cylinder of printing machines comprising in combination: (1) a pre-soaked fabric roll saturated to equilibrium with cleaning solvent disposed around a core, said fabric roll having a sealed sleeve which can be opened or removed from said fabric roll for use of said fabric roll, disposed therearound, and said system including (2) means for locating said fabric roll adjacent to and operatively associated with a cylinder to be cleaned. Reissue patent, col.11 l.9 ­ col.12 l.8 (emphases added). The district court construed "a pre-soaked fabric roll" to mean "a single presoaked fabric roll." Baldwin Graphic Sys., Inc. v. Siebert, Inc., 1:03-CV-07713, slip op. at 9 (N.D. Ill. July 28, 2005) (Initial Order). In concluding that "a" means "one" in this context, the district court largely relied on the subsequent use of "said fabric roll" as suggesting a singular fabric roll. Initial Order, slip op. at 7. Also, according to the district court, the statement in the Reissue patent's specification that the sleeve is "disposed around and in intimate contact with the fabric roll," Reissue Patent, col.2 ll.22-

Baldwin initially asserted that Siebert infringed another of its patents, U.S. Patent No. 6,035,483, but chose not to pursue this claim. With respect to the '976 patent, Baldwin asserted that Siebert directly infringed claims 1, 7, 9, 14, and 25, induced the infringement of claim 23, and contributorily infringed claim 12. 2007-1262 2

*

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23, col.3 ll.17-18, evinced an intent to limit "a pre-soaked fabric roll" to "one pre-soaked fabric roll" because this condition "would not be fully possible with more than one roll in the sleeve." Initial Order, slip op. at 8. As for "sealed sleeve," the district court construed this term to mean "heat-sealed sleeve." Initial Order, slip op. at 13. Not readily apparent from the language of claim 32 itself, the district court arrived at this conclusion through an examination of the specification and the prosecution history of the Reissue patent. The Reissue patent originally issued as U.S. Patent No. 5,368,157 (the '157 patent), and as the district court noted, "[a]ll references in the reissue patent specification to a sealed sleeve are to a `heat-sealed' or a `heat shrunken and heat-sealed' sleeve, as are all references in the 28 claims that appeared in the original '157 patent." Initial Order, slip op. at 9. During prosecution of the Reissue patent, the applicants attempted to remove "heat" as a modifier of "sealed" and "sealable" from the specification, but the PTO examiner rejected the proposed changes as impermissibly introducing new matter: It is inconceivable that the applicants can find such a teaching in . . . the original specification, which by its own terms refers to the sleeve as a heat sealable plastic sleeve. Why would one of ordinary skill in the art upon being informed that a sleeve was a heat sealable plastic sleeve, infer that what was really intended was that the sleeve need not be plastic and/or need not be heat sealable? Initial Order, slip op. at 11 (quoting Reissue Patent Prosecution, PTO Official Action May 15, 1996 at 5) (ellipsis added). Due to these objections, the applicants withdrew their broadening amendments to the specification. Because of the withdrawal, the applicants maintained that the

examiner's new matter rejection was moot. Thus, the district court limited the term "sealed sleeve" in Reissue claim 32 to a "heat-sealed sleeve" because "[a] broader

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reading would be wholly incongruous with the patent prosecution, the patent examiner's blunt rejection of the contention that the patent specification supports the broader term, and the patentees' own acknowledgment that their revised amendments no longer sought to broaden this terminology." Initial Order, slip op. at 11-12. Based on its construction of "a pre-soaked fabric roll" and "sealed sleeve," the district court granted Siebert's motion for summary judgment of non-infringement of claim 32 of the Reissue patent. The district court based its summary judgment on the undisputed facts that Siebert sold its accused fabric rolls in sets of three or between six and nine, but not individually. Initial Order, slip op. at 9. Likewise, Siebert did not sell its fabric rolls in heat-sealed sleeves. Id. With respect to the asserted claims of the '976 patent, claims 1 and 14 are independent claims, and the other asserted claims depend from either claim 1 or claim 14. Claims 1 and 14 contain the disputed limitations, "reduced air content cleaning fabric" (claim 1) and "reducing air content of a strip of cleaning fabric" (claim 14). The district court construed the phrase "reduced air content cleaning fabric" to address these similar claim terms together. Initial Order, slip op. at 14. Claims 1 and 14 of the '976 patent recite: 1. A device for cleaning a cylinder of a printing press comprising:

a reduced air content cleaning fabric having an air content by volume of 1 to 50 percent; and a solvent comprising a low volatility cleaning compound which does not readily evaporate at ambient temperature, and means for introducing said solvent being into said reduced air content cleaning fabric in an amount sufficient for cleaning said cylinder of a printing press.

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14.

A

method

for

making

a

cleaning

system

comprising:

reducing air content of a strip of cleaning fabric by 1 to 50 percent to form a strip of reduced air cleaning fabric; and contacting said strip of reduced air content cleaning fabric with a low volatility, organic compound solvent which does not evaporate readily at ambient temperature and pressure and pre-soaking and saturating said reduced air content cleaning fabric with said solvent. '976 patent, col.11 ll.58-67, col.12 ll.49-57. In its initial consideration of these terms, the district court concluded that "reduced air content cleaning fabric" was not limited to a particular method for producing reduced air content cleaning fabric. The district court reached this conclusion because the '976 specification notes that "[t]he preferred, but not exclusive, method of reducing the air content in the fabric is calendaring." Initial Order, slip op. at 15 (quoting '976 patent, col.7 ll.27-28). Under the district court's initial construction, the claims covered reducing air content in the fabric by methods other than calendaring, including winding or rewinding the fabric on a roll. Because this claim construction created issues of fact about Siebert's method of winding its accused products on a roll to reduce air content, the trial court denied Siebert's motion for summary judgment of non-infringement of the '976 patent. Initial Order, slip op. at 16-17. Some months later, on Siebert's motion, the district court reconsidered its construction of "reduced air content cleaning fabric." Baldwin Graphic Sys., Inc. v.

Siebert, Inc., 1:03-CV-07713 (N.D. Ill. Mar. 21, 2006) (Reconsideration Order). Siebert then argued for the first time, and the district court agreed, that while the claims may not be limited to calendaring as the method for reducing air content, the claims were in fact limited to a particular timing of that air content reduction step relative to winding. With

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this understanding, the district court interpreted "reduced air content cleaning fabric" to mean "a fabric whose air content has been reduced by some method prior to being wound on a roll." Reconsideration Order, slip op. at 15. The district court arrived at this new construction with an eye to the terms "fabric," "cleaning fabric," "strip of cleaning fabric," and "strip of cloth" in the various claims of the '976 patent. With respect to claim 14, the district court explained that the term "strip of cleaning fabric" "refers to a cleaning fabric whose air content has not yet been reduced . . . because that term, a noun, is being modified by the verb `reducing.' Thereafter in the claim the term used is `reduced air content cleaning fabric,' because the reducing of the air content has already occurred." Reconsideration Order, slip op. 7. According to the district court, "independent . . . claims 1 and 14, standing alone, do not aid much in our claim construction analysis . . . [because] both claims are very broad and vague, neither teaching the winding of the fabric on a core." Reconsideration

Order, slip op. at 5. Thus, the district court turned to the usage of various fabric and cloth-related terms in the dependent claims as a guide for construing "reduced air content cleaning fabric" in the independent claims. Also, the district court relied on the prosecution history, where Baldwin represented that the claimed invention improved fabric moisture content and solvent distribution "[b]y reducing the air content of the cleaning fabric prior to saturation." Reconsideration Order, slip op. at 8 (emphasis

added). Because Siebert's product does not reduce air content before winding of the fabric on the roll, the district court granted Siebert's motion for summary judgment of non-infringement on the claims of the '976 patent. Reconsideration Order, slip op. at 15-16.

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II This court reviews claim construction without deference to the district court's interpretation. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). Likewise, a district court's grant of a motion for summary judgment receives review without deference. Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1353 (Fed. Cir. 1998). First, as to the Reissue patent, "[t]his court has repeatedly emphasized that an indefinite article `a' or `an' in patent parlance carries the meaning of `one or more' in open-ended claims containing the transitional phrase `comprising.'" KJC Corp. v.

Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). That "a" or "an" can mean "one or more" is best described as a rule, rather than merely as a presumption or even a convention. The exceptions to this rule are extremely limited: a patentee must

"evince[ ] a clear intent" to limit "a" or "an" to "one." Id. The subsequent use of definite articles "the" or "said" in a claim to refer back to the same claim term does not change the general plural rule, but simply reinvokes that non-singular meaning. An exception to the general rule that "a" or "an" means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule. See, e.g., Abtox Inc. v. Exitron Corp., 122 F.3d 1019 (Fed. Cir. 1997); Insituform Techs., Inc. v. Cat Contracting, Inc., 99 F.3d 1098 (Fed. Cir. 1996). This record does not contain a clear indication that the applicant departed from the general rule for the article "a." Nothing in the claim language, specification, or prosecution history compels an exceptional reading of "a" in this case. The district court erred by misapplying the term "said fabric roll" later in the claim and the phrase "in

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intimate contact with the fabric roll" in the specification. Initial Order, slip op. at 8. As noted above, the use of a definite article ("said" or "the") to refer back to an initial indefinite article does not implicate, let alone mandate the singular. Because the initial indefinite article ("a") carries either a singular or plural meaning, any later reference to that same claim element merely reflects the same potential plurality. In grammatical terms, the instances of "said fabric roll" in the claim are anaphoric phrases, referring to the initial antecedent phrase. Because the initial phrase carries no definitive

numerosity, the anaphoric phrases do not alter that meaning in the slightest. Contrary to the district court's analysis, § 2173.05(e) of the Manual of Patent Examining Procedure (MPEP) does not suggest otherwise. Section 2173.05(e)

describes the need, in most cases, for claim terms to have proper antecedent bases: The lack of clarity could arise where a claim refers to "said lever" or "the lever," where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference. Similarly, if two different levers are recited earlier in the claim, the recitation of "said lever" in the same or subsequent claim would be unclear where it is uncertain which of the two levers was intended. MPEP § 2173.05(e). According to the district court, § 2173.05(e) "only strengthens" the exclusively singular nature of "a pre-soaked fabric roll," because "the use of `said fabric roll' implies that the prior reference to `a fabric roll' should be read as a single roll, not one or more rolls, in order to avoid confusion." Initial Order, slip op. 7. To the contrary, MPEP § 2173.05(e) is inapposite because the limitations in claim 32 all relate to proper antecedent bases. Thus, the confusion or indefiniteness problem addressed by

§ 2173.05(e) does not arise in this claim. The district court's reliance on language in the specification to limit "a pre-soaked fabric roll" to a single roll is similarly unavailing. The phrase "disposed around and in

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intimate contact with the fabric roll" appears twice in the specification of the Reissue patent, and describes the relationship between the plastic sleeve and the fabric roll. Reissue patent, col.2 ll.22-23, col.3 ll.17-18. This description does not require a single pre-soaked fabric roll. Under the terms of this description, the plastic sleeve could be in intimate contact with multiple fabric rolls, like the plastic wrapping on a package of several hot dogs is in intimate contact with each of the hot dogs, despite the fact that the hot dogs themselves contact each other as well as the packaging. Appellant's Br. at 13. This description contains no requirement, implicit or explicit, that the plastic sleeve must be in intimate contact with the entire fabric roll. For these reasons, "a pre-soaked fabric roll" as used in claim 32 of the Reissue patent is not limited to a single roll. This court agrees, however, with the district court's careful and accurate analysis in its construction of "sealed sleeve" as limited to "heat-sealed sleeve" in the Reissue patent. This court has consistently recognized that the Patent Act prevents an applicant from adding new subject matter during the patent prosecution process. See Pandrol USA, LP v. Airboss Ry. Prods., Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005) (citing In re Ruschig, 379 F.2d 990 (CCPA 1967)). In this case, during prosecution of the Reissue application, the examiner rightly refused to allow the applicants to amend the specification to remove references to "heat" as the way of sealing the sleeve. This change would have broadened the patent and introduced impermissible new matter not included in the initial disclosure. Thus the claims would have been invalid for lack of support in the initial disclosure for the new subject matter encompassed by the change because the claims could not show any support if construed to encompass more than heat-sealed sleeves.

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In sum, with respect to the Reissue patent, this court finds that the district court erred in its construction of "a pre-soaked fabric roll." Nonetheless, the trial court correctly construed "sealed sleeve," rendering Siebert's fabric rolls non-infringing. Thus this court affirms the district court's summary judgment of non-infringement with respect to the Reissue patent. Turning to the asserted claims of the '976 patent, this court finds that the district court erred in limiting "reduced air content cleaning fabric" to "a fabric whose air content has been reduced by some method prior to being wound on a roll." Upon review of the claims, specification, and prosecution history, this court discerns no way to uphold the trial court's construction of "reduced air content cleaning fabric." As a preliminary matter, the parties agreed that the terms "reduced air content cleaning fabric" in claim 1 and "reducing air content of a strip of cleaning fabric" in claim 14 were substantially similar. Seizing on this point, the district court agreed, and

construed only "reduced air content cleaning fabric" in an attempt to construe similar terms in both independent claims at once. Unfortunately this approach blurred an

important difference between the two independent claims, namely that claim 1 is an apparatus claim and claim 14 is a method claim. Despite their similarities, these claims are directed toward different classes of patentable subject material under 35 U.S.C. § 101. Courts must generally take care to avoid reading process limitations into an apparatus claim, see AFG Industries, Inc. v. Cardinal IG Co., 375 F.3d 1367, 1372-1373 (Fed. Cir. 2004), because the process by which a product is made is irrelevant to the question of whether that product infringes a pure apparatus claim, see Vanguard Products Corp. v. Parker Hannifin Corp., 234 F.3d 1370, 1372 (Fed. Cir. 2001) ("A novel

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product that meets the criteria of patentability is not limited to the process by which is was made."). Claim 1 and its dependent claims (asserted claims 7, 9, and 12) are pure apparatus claims. They have no process limitations. Claims 1, 7, 9, and 12 are

therefore not limited to any particular process or method of making the claimed prepackaged, pre-soaked cleaning system, or to any particular sequence of air content reduction relative to winding. Unlike claim 1 and its dependent claims, claim 14 and its dependent claims (asserted claims 23 and 25) are method claims and each recites a series of steps. Therefore, and again unlike claim 1, the scope of claim 14 specifies the limits on the performance of those steps. As with any other type of claim, courts must carefully avoid importing limitations from the specification into method claims. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) ("In examining the specification for proper context, however, this court will not at any time import limitations from the specification into the claims."). Nonetheless the specification informs the

meaning of the claims. In Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc), this court acknowledged the difficult distinction between "using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim." This court explained, however, that the distinction is

manageable "if the . . . focus remains on understanding how a person of ordinary skill in the art would understand the claim terms." Id. Also, although a method claim

necessarily recites the steps of the method in a particular order, as a general rule the claim is not limited to performance of the steps in the order recited, unless the claim

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explicitly or implicitly requires a specific order.

See Interactive Gift Express, Inc. v. The specification or

Compuserve Inc., 256 F.3d 1323, 1342-43 (Fed. Cir. 2001).

prosecution history may also require a narrower, order-specific construction of a method claim in some cases. Id. In this case, the claims themselves contain no basis to require air content reduction before winding. Though the claims, specification, and prosecution history require that the air content of the cleaning fabric be reduced prior to saturation, this does not mean that the air content must be reduced prior to winding on the roll. Also, in relying on the dependent claims to inform the meaning of "reduced air content cleaning fabric" in claims 1 and 14, the district court effectively imported limitations it saw in dependent claims into the independent claims, contrary to basic claim construction principles. The effect of this process was to bootstrap a temporal restraint on the

occurrence of a winding step relative to air content reduction, even though winding is not even explicitly recited in either claim 1 or claim 14. As independent claims, claims 1 and 14 are naturally broader than their dependent counterparts, making the district court's use of the dependent claims to constrict claims 1 and 14 all the more suspect. For example, claim 18 recites: 18. The method as defined in claim 14 including providing an elongated core wherein said strip of cleaning fabric is wrapped about said elongated core prior to contacting said strip of cleaning fabric with said solvent. '976 patent, col.13 ll.3-6. The district court held that the second instance "said strip of cleaning fabric" had to refer to reduced air cleaning fabric because air content must be reduced prior to contacting with solvent, and that the term should be interpreted consistently within the same claim. When read consistently, the strip of cleaning fabric

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that is "wrapped about an elongated core" already has its air content reduced. But even if the district court correctly determined that the method of claim 18 requires air content reduction prior to winding, this is an additional limitation of that particular dependent claim, and not a requirement of independent claim 14. In short, the dependent claims

simply do not support the district court's determination that the fabric in all instances must have its air content reduced prior to being wound on a roll. Furthermore, the '976 patent's specification, in simple terms, does not warrant such a narrow reading. With an eye to the understanding of an ordinarily skilled artisan, this court cannot find support for widely varying interpretations of the term "fabric" and related terms throughout the claims. An ordinarily skilled artisan would simply not The passages

construe similar terminology so differently from one usage to another.

from the specification cited by the district court in support of its temporally restricted construction are not dispositive. For example, the district court quoted from the

summary of the invention, which states that "[a] cleaning fabric with a reduced air content is wrapped around the core to form a fabric roll." Reconsideration Order, slip

op. at 12 (quoting '976 patent, col.3 ll.65-66). For the district court, this use of "with" suggested that air content reduction must occur prior to winding. But this language, like the other passages cited by the district court, does not unequivocally preclude a different order of steps, and this court sees no justification in the specification for imposing a temporal constraint on claim 14 that is not required by or implicit in the language of the claim itself. Finally, the district court's reliance on the prosecution history, namely the singular comment by the applicants during prosecution that the air content reduction occurs prior

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to saturation, provides no support whatsoever for the district court's construction requiring air content reduction before winding. By no means does this statement

constitute something akin to a disavowal of claim scope. See Purdue Pharma L.P. v. Endo Pharm., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006) (disavowal of claim scope must be "clear and unmistakable"). Moreover, even if this statement constituted a

disavowal of scope with respect to the method claims, it would not justify the district court's construction, because the statement would, at best, require reduction before saturation, not necessarily before winding. saturation. After all, winding could occur before

For these reasons, the district court's final construction of "reduced air

content cleaning fabric" was erroneous. But the district court's initial construction of this term as not limited to a particular method (calendaring) for producing reduced air content cleaning fabric was correct. As the district court astutely observed, the

specification merely prefers, not requires, calendaring. This court therefore remands for further proceedings consistent with this opinion. III In this case, the claim construction issues entirely drive the summary judgment analysis. With respect to claim 32 of the Reissue patent, even though the district court erred in limiting "a pre-soaked fabric roll" to a single roll, there is no dispute that Siebert's accused products are not heat-sealed, so this court affirms the district court's summary judgment of non-infringement as to this patent. But the district court's error in construing "reduced air content cleaning fabric" requires this court to reverse and remand for further proceedings because under the district court's initial construction of

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this claim term, with which this court agrees, the district court declined to grant Siebert's motion for summary judgment of non-infringement of the '976 patent.

AFFIRMED-IN-PART, REVERSED-IN-PART, AND REMANDED

COSTS Each party shall bear its own costs.

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Exhibit 2

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U. S. PATENT APPLICATION
ERlAL NUMBER :ILING DATE CLASS GROUP ART UNIT

08/419,752 REISSUE

04/10/95

206

3208

2

CHARLES R. GASPARRINI, PORT CHESTER, NY; WALTER H. CANO, BRIDGEPORT, CT.

5,368,157

**FOREIGN/PCT APPLICATIONS************ VERIFIED

FOREIGN FILING LICENSE GRANTED 05/23/95
rATE OR IUNTRY SHEETS DRAWING TOTAL CLAIMS INDEPENDENT CLAIMS RECEIVED

NY

I

1

I

56

I
I

6

$1,596.00

0140-4124

3

THOMAS M HAMMOND MORGAN AND FINNEGAN 345 PARK AVENUE NEW YORK NY 10154

PRE-PACKAGED, PRE-SOAKED CLEANING SYSTEM AND METHOD FOR MAKING THE

This is to certif that annexed hereto is a true copy from the records of the United States Patent and TraJemark Office of the application which is identified above.
By authority of the COMMISSIONER OF PATENTS AND TRADEMARKS

Date

Certifying Officer

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PATENT cket No. 0140-4124
REISSUE PATENT APPLICATION IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

e Reissue of:
U.S. Patent No. 5,368,157 Serial No.: 145,881 Filing Date:October 29, 1993 Issue Date: November 29, 1994

Serial No.: Filing Date: Inventor: For:

To be assigned To be assigned Charles R. Gasparrini et al.
PRE-PACKAGED, PRE-SOAKED CLEANING SYSTEM AND METHOD FOR MAKING THE SAME R'EISSUE APPLICATION DECLARATION AND POWER OF ATTORNEY BY INVENTOR8

HON. COMMISSIONER OF PATENTS AND TRADEMARKS Washington, D.C. 20231 Sir: As a below named inventor, I hereby declare that:
1 .

My residence, post office address and citizenship

are as stated below next to my name and I believe I am an original and joint inventor of the subject matter which is described and claimed in letters patent number 5,368,157 granted on November 29, 1994, and in the foregoing' specification and for which invention I solicit a reissue patent.
2.

I hereby state that I have reviewed and understand

the contents of the above identified specification, including the claims.
3.

I acknowledge the duty to disclose information

which is material to the examination of this application

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namely, information where there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent.
4.

In compliance with this duty there is attached an

Information Disclosure Statement in accordance with 37 CFR
1.98.
5 .

I hereby claim no foreign priority benefits under

Title 35, United States Code, 5 119 of any forei-gn application(s) for patent or inventor's certificate.
6.
As

an original and joint inventor, I, Charles R.

Gasparrini believe the original patent 3,568,157 to be partly inoperative and invalid, and thus defective, because of error which occurred without any deceptive intent on my part and which first came to my attentionionor about

January 4, 1995, when considering the original patent and
its relationship to other technical programs of Baldwin Graphic Systems, Inc., the assignor. The reasons for this

belief are that I claimed less than I had a right to claim in the patent and that as claimed, the claims failltocover the inventive subject matter of my pre-packaged, pre-soaked cleaning system in the broadest scope to which I am entitled in that (1) they fail to recite the sleeve which is disposed around and in contact with the pre-soaked fabric roll as simply a sealed or sealable sleeve in contact with the fabric rather than a heat-sealedand/or heat-sealed and heat

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shrunk plastic sleeve which is in intimate contact with the pre-soaked fabric roll as recited in the patent; (2) they fail to recite the core around which the pre-soaked fabric roll is disposed as simply a core rather than as an elongated cylindrical core having open ends as recited in the claims of the patent; (3) they fail to recite simply removing of excess solvent from the pre-soaked, saturated fabric roll in language of broad scope rather than draining excess solvent from the fabric roll as recited in the claims of the patent; and (4) they fail to recite the combination of (a) the claimed cleaning system with means for positioning the system adjacent a cylinder to be cleaned, (b) means locating the fabric roll adjacent to and operatively associated with a cylinder to be cleaned and (c) mounting means for disposing the fabric roll in a position to clean a cylinder while the fabric is in contact with and being fed past such cylinder. Moreover, I further
'

determined on or 4bsut the same date mentioned above khat

the specification and claims of the patent are defective in that they contain a number of obvious errors in disclosing and reciting the caliper thickness of a suitable fabric which can be employed in the pre-packaged, pre-soaked cleaning system in accordance with my inventive concept

-

namely, that I disclosed at Column 4, lines 60-62 and Column
5, lines 9 and 10 and recited in Claims 8 and 10 the caliper

thickness in terms of mils rather than in terms of inches

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and further in the specification I disclosed the top of such thickness range as 0.10 at Column 5, line 10 rather than as
0.01, as recited in original claim 10, when paper is

disclosed as a cleaning fabric, and further recited in Claim
8 the upper limit of such range as 0.30 rather than 0.03, as

disclosed at Column 4, line 60 of the specification when referring to a fabric generally, which can be employed in the practice of my invention. In addition, on or about the

same date mentioned above, I further determined that the patent discloses at Column 7, lines 58 through 68, that the fabric generally retains therein, after draining to remove excess solvent in accordance with a preferred form of the method for making the system of this inventions, an amount sufficient to wet the fabric to the extent that it imparts

efficient cleaning ability thereto to clean the oylindlers of
apparatus, such as printing machinery, from about 0.05 to about 0.5 cc of solvent per in2 of fabric, but which more properly should read --from about 0.03 to about 0.05 up to about 0.3 to about 0.5 cc of solvent per in2 of fabric--, which phraseology is more realistic though somewhat broader in scope. My co-inventor, Walter H. Cano, and I discussed my belief in detail concerning the above-mentioned errors in the specification and claims on or about January 10, 1995.
7.

As an original and joint inventor, I, Walter H.

Cano, believe the original patent 5,368,157 to be partly inoperative and invalid, and thus defective, because of

Case 1:06-cv-00077-JJF

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errors in the specification and claims as set forth above and which occurred without any deceptive intent on my part and which first came to my attention on or about January 10, 1995, when my co-inventor, Charles R. Gasparrini, brought these matters to my attention and discussed with me in detail his belief and reasons for the same that the patent is partly inoperative and invalid, and thus defective, and that I concur with his belief and the reasons therefor without any reservations.
9.

I hereby appoint the following attorney(s) and/or

agent(s) to prosecute the application and transact all business in the Patent and Trademark Office connected therewith: John D. Foley (Reg. No. 16,836), John A. Diaz -? (Reg. No, 1 9-, 5 m T h o m a s I. Dowling (Reg. No. 19,221), John Vassil (Reg. No. :9,098), Warren H. Rotert (Reg. No.

C.

19,659), Alfred P Ewert (Reg. No. 19,887), David H. .
n

Pfeffer, P.C. (Reg. No. 19,825), Harry C. Marcus (Reg. No.
. C - C L 7

22,390), Robert E. Paulson (Reg. No, 21,046), Stephen R.
/ -

Smith (Reg. No. 22,615), Kurt E. Richter (Reg. No. 24,052), J. Robert Dailey (Reg. No. 27,434), Eugene Moroz (Reg. No.
c _

-

John F. Sweeney (Reg. No. 2 Z , U ) , Arnold I Rady . (Reg. No. 26,601), Christopher A. Hughes (Reg. No
/---

William

S.

Feiler (Reg. No. 26,728), Joseph A. Calvaruso
c___

(Reg. No. 28,287), James W. Gould (Reg. No. 28,859), Richard

7 C.

\

Komson (Reg. No. 27,913), Israel Blum (Reg. No. 26,710),

Bartholomew Verdirame (Reg. No. 28,483), Maria C. H. Lin
5

-

.\

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(Reg. No. 29,323), Joseph A. DeGirolamo (Reg. No. 28,595), Christopher E. Chalsen (Reg. No. 30,936), Michael A.
,I,' 1

7-----

-.--

n No.

Nicodema (Reg. No. 33,199) and Michael P. Dougherty (Reg.
32,730) of Morgan
&

-

Finnegan, L.L.P. whose address is:
10154.

345 Park Avenue, New York, New York 8.

I hereby declare that all statements made herein

of my own knowledge are true and that all statements made on information and belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or Imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements may jeopardize the validity of the application or any patent issued thereon.
I hereby specify the following as the correspondence

address to which all communications about this-application are to be directed:

Full name of first join Inventor's signature Residence: Citizenship
55 Ouintard Drive, Port Chester, New York 10573

United States of America Same

Post Office Address

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Full name of Inventor's Residence: Citizenship United States of America Same signature

Post Office Address

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I

-7-

Docket No.

Applicant ( s ) Serial No. Filed For

:

Charles R. Gasparrini et al. To Be Assigned Herewith

Group Art Unit: Examiner:

PRE-PACKAGED, PRE-SOAKED CLEANING SYSTEM AND METHOD FOR MAKING THE SAME
PRELIMINARY AMENDMENT

Honorable Commissioner of Patents and Trademarks Washington, DC 20231 Sir: Please amend the above-identified Application as follows:
IN THE SPECIFICATION:

in the fabric roll and detrimehtallv affectins the cleaninq
". -

ability of the fabric.
1

-

I

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. -e-+

Column 2, line 10, after vlwithll insert --a more sDecific aspect of--;

-

affectins the cleanins abilitv

f the fabric roll.

Column 2, line 28, [Broadly,] and b e f m h e method1' ins-

--another--:

/
/
/

Column 2, lines 49 and 50, [elongated cylindrical]: Column 2, line 52, [more]; Column 2, line 53, [heat-sealable plastic] and before `lsleevelf insert --sealable--: Column 2, line 56, [heat-sealable]:
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2

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Column 2, line 57, [more]; Column 2, line 60, [cylindrical].
----3

/

Column 3, line 4, [more]; Column 3, line 6, [the sleeve];
- L s - .

/

Column 3, line 9, [more].

Column 3, lines 11 through 13, [and which extend over the peripheral edges of the fabric roll before the role is inserted in the plastic sleeve];
/

*
/

Column 3, line 27, [drained,]; Column 3, line 30, [drained];
/ " -

Column 3, line 31, [plastic];
- c .

Column 3, line 57, after "comprisestr insert --a core such as--;
A

Column 3, line 68, before Ilsleeve 15" insert --sealable--; after "sleeve 15" i n s e e h i c h may be--.
A

Column

4,

line 24, [also preferably]:

Column 4, line 27, before 81extend11 insert

- . ---

-- ;

Column 4, line 60, [mils to about 0.030 mils,] and b & E % Irandt* insert --inch to about 0.030 inch--;

/

Column 4, line 61, [mils] and before I t l i s - c - ; tol nenhColumn 4, line 62 [mils] and b e e , and" insert? --inch--.
d

Column 5, line 10, [mils] and before Iltogv insert --inch--;
[0.10 mils] and before lal , second occurrence, insert ll --0.01 inch--;

.

139911-1

3

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Column 5, line 29, before Wegetablell insert

-

orsanic oils, the

dnal-c-hcus like insert --oils--;

@

Column 5, between lines 41 and 42, insert as a new paragraph

other hand, where plhstics materials are used for the sealable or sealed sleeves,
-e

Column 5, line 62, [draining of] and insert before "excesst1 insert --removinq--;
( I

/

Column 5, line 65, [an elongated cylindrical] and before Itcoreg1 insert --g--;
.rc4

Column 5, line 66, [heat-sealable plastic] and before

ltsleevetl insert --sealable--; Column 5, line 67, [drained,];
/---

Column 5, line 68, [subjecting] and before I1thetl insert --sealinq--; [to a temperature sufficient to heat].
= / Column 6, line 1, [seal the plastic sleeve] and [drained,]; / Column 6, line 2, [intimate];

----c.--c-s

Column 6, lines 10 and 11, [cylindrical];

/

In Column 6, line 17, after I i " insert --a sealable sleeve
139911-1

4

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or--; -

/
[i

Column 6, line 18, after I1istl insert --sealed.--; Column 6, line 20, after 1Rro118t insert&.@--;

n-lbe Column 7, line 7, before "heat-sealable" i s a a l sleeve or--;
/ - - - - -

Column 7, line

8,

after #listt insert --sealed,--;

inseTt --sealed--; Column 7, line 10 , before lvheat-sealtt Column 7, line 11, [drained,], / Column 7, line 12, [intimate]; /
/ - -

Column 7, line 13, after Ilparticular" insert --sealins.--; insert --sealable--; Column 7, line 14, after rtofll Column 7, line 16, after Itabout"inser --ambient
/

4

/ Column 7, line 21, [plastic];
t
/

--

Y insert --where--; after Column 7, line 22, after 8tgeneral,1f
I I

tlheat-sealingtl insert --are emx>loved,thev--; Column 7, line 28, [plastic]; Column 7, line 3 3 , K [intimate];

Column 7, line 56, [cylindrical].

7

Column 7, line 67, after Itabout", first * occurrence, insert
--0.03 to about--; after t10.0518 insert

--=--; ttabouttl, after

second o & c , cne
139911-1

insert --0.3 to about--.
5

I

--

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Column 8 , before l i n e 15, i n s e r t a s a new paragraph YThus,

\

.

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6

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IN THE CLAIMS:

claim 2 wherein the fabric has a basis we
6.0 ounces per

square yard to about 6.0 ounces per thickness in a range of from a
[0.30 mils,] 0.03 inch, a t

le strength in the longitudinal about
20

direction in a range of lbs. per inch and in

lbs. per inch to about 200

dth direction in a range'af from about

n claim

9

wherein the paper fabric
40

a basis weight in a range

f from about

lbs. to about

., a caliper thickness in a
lbs. per inch and in a

inch. a tensile strength of from about 20 lbs. width direction in

e longitudinal direction in a range inch to about
80

about 50 lbs. perlnch, a porosity in a range of from about 1.0 second to ab from about 1
0 seconds, and a stretchability

in a range of

rcent to about 6.0 seconds.

139911-1

7

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IN THE ABSTRACT:
In body o f t h e Abstract: Lines 5 and 6 , [ c y l i n d r i c a l ] ; 6-.--4 Line 6 , [having open ends];

4
sleeve

Line 7 , before aaheat-sealablelti n 6 r t --Sealable or a--; Line 8 , [ p l a s t i c ] ;
/ /

Line 9 , [ t o intimate]; before llcontactla i n s e r t
/

-

--in--;

Line 1 0 , [ i n ] ; before llheat-sealinglt i n s e r t --to s e a l h a , - - ;

Line 18, [ p l a s t i c ] ; before lasleevelan s e r t --sealable--; i before llheat-sealedaa i n s e r t --sealedL-Line 19, a f t e r llcapsaa n s e r t i
;

-

/

--are--.

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REMARKS

The Specification and the Body of the Abstract of the subject Reissue Application have been amended herewith in order to bring the same into more precise alignment with the inventive concept as set forth not only in the Claims of the original Patent but, as well, with the Reissue Claims as filed in this matter. In addition, the Specification has been amended along with original claims 8 and 10, as presented in the Reissue Application to correct obvious errors occurring therein with respect to erroneously disclosing in the Specification, at Column
4,

lines

60 through 62 and Column 5, lines 9 and 10 and reciting in claims
8

and 10 that the caliper thickness of a fabric which can be

employed in the practice of the invention has a thickness in mils. This is obviously incorrect since a fabric in the

numerical ranges set forth in this case based on mils thickness would not be thick enough to retain sufficient solvent to achieve efficient cleaning, if any cleaning at all; nor would it be thick enough to maintain its form without falling apart, that is, disintegrating, either h m e d i a t e l y , or at l e a s t very soon after one attempted to use it to clean a surface, such as, for example, the surface of a cylinder like those employed in printing machinery. Thus, it would be totally impractical for use in the On the other
'

practice of the inventive concept in this case.

hand, a fabric having a thickness measured in terms of inch thickness would be functional and it is believed to be obvious
139911-1

9

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that an inch thickness basis is what Applicants meant.

Thus, it

is submitted that the correction from mils to inches is an obvious and correctable error where made in the specification and claims. Further it is to be noted that the specification has been amended at Column 5, line lo, to correct the obviously erroneous top thickness range disclosed as 0.10 to read 0.01 when paper is employed as a cleaning fabric, and as recited in original claim
10 in the patent.

In addition, original claim

8

has been amended

to properly recite the correct upper limit of the range of caliper thickness as 0.03, as disclosed in the specification at Column
4,

line 60.

Finally, attention is directed to the amendment made to the specification at Column 7, lines 58 through 6 8 , where the recitation of the range of solvent retained in the fabric has been amended to clarify that ''from about 0.03 to about 0.05 up to about 0.3 to about 0.5 cc of solvent per in2 of fabric" is retained in the fabric after draining. Such phraseology is more

realistic though somewhat broader in scope than as originally disclosed.
at;

It is to be noted, however, that it is clearly stated
4 6 that

csluan 7 , linea 62 through

aftaar draining thq fabric
~

retains therein sufficient solvent in an amount to wet the 'fabric to the extent that it imparts efficient cleaning ability to the fabric to clean cylinders of apparatus, such as printing machinery. Thus, it is submitted that the amendment under

139911-1

10

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discussion clarifies Applicants' disclosure making it more exact than as originally set forth. It is respectfully submitted that the above amendments to the specification, as well as those made in claims
8

and 10, as

granted in the original patent, clarify and make the application more exact and precise and further bring the specification and claims into more proper alignment with each other while still defining over the art of record in this matter taken alone or in any combination thereof for the reasons set forth in greater detail hereinafter.

It is respectfully submigted that the new claims added as
Claims
28

through 56 in this Reissue Application are clearly

patentable over the art of record in this case for the reasons set forth below. None of the references of record, taken alone or in any combination thereof, disclose, or even remotely suggest, a prepackaged, pre-soaked cleaning system for use in cleaning the cylinders of printing machines and which comprises (1) a presoaked fabric roll saturated to equilibrium with low volatility organic compound solvent disposed around a core, and
(2)

a sealed

sleeve disposed around and in contact with the fabric roll so that the pre-soaked, saturated roll can be transported and stored vertically and horizontally until use without substantially disturbing the distribution of the solvent in the roll and detrimentally affecting the cleaning ability of the fabric.
.

139911-1

11

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Consequently, it is submitted that in the absence of any positive teaching of such an inventive concept, or at least a suggestion of such a concept, in the references of record, the new claims drawn to the inventive system of this case, that is, Claims
28

through

44,

are clearly patentable over the references

of record and should be allowed. Moreover, for the same reasons, it is submitted that the new claims drawn to the combination of the claimed system with means for positioning the system adjacent a cylinder to be cleaned, removal of the sealed sleeve from the roll and,provisionof means locating the roll adjacent to and operatively associated with a cylinder to be cleaned, as well as the provision of mounting means to mount the roll in a position to clean a cylinder while the fabric is in contact with and being fed past such cylinder Claims
44, 45

-

and

46,

respectively,

-

are also clearly patentable

over the art of record, taken alone or in any combination thereof. Still further, the same is also true in respect to new Claims
47

through

56,

which are drawn to the method for making

the new cleaning system of this case and wherein the excess solvent is removed from the saturated fabric to obtain a fabric saturated to equilibrium with solvent before or after wrapping the fabric around a core and, as well, wherein the core may be provided with open ends in which end caps may be disposed and/or wherein the system may include insertion of the saturated fabric roll in a slotted canister before it is inserted in a sealable
139911-1

12

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sleeve.

No such method is disclosed, or remotely suggested, in

any of the references of record in this case, taken alone or in any combination of such references. It is stressed that the inventive concept of th packaged, pre-soaked cleaning system of this case, the combination of the same with means to dispose the same on such means to locate the system adjacent a cylinder to be cleaned on, for example, printing machinery, as well as the method for making the system is not disclosed, or even remotely suggested, in any of the references of record in this matter, taken alone, or in any combination with the others. Therefore, in view of the above amendments and remarks, an early action on the merits of this Application and allowance of all the Claims are respectfully solicited. Respectfully submitted,

Registration No. 19,131 Morgan t Finnegan 345 Park Avenue New York, New York 10154
(212) 758-4800

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13

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Serial Number: 08/419,752 Art Unit: 3208

-2-

1.The reissue oath or declaration filed with this application is defective because it fails to particularly specify the errors and/or how the errors relied upon arose os occurred as required under 37 CFR 1.175(a)(5). Included are inadvertent errors in conduct, i.e., actions taken by the applicant, the attorney or others, before the original patent issued, which arp alleged to be the cause of the actual errors in the patent. This includes

how and when the errors in conduct arose or occurred, as well as how and when these errors were discovered. Applicant's attention is directed to Hewlett-Packard v. B a u s c h 1758 (Fed. Cir. 1989).
&

Lomb, 11 USPQ2d 1750,

The reissue declaration is defective as

stated above, because it fails to particularly point out how and why the applicant concluded that each change to the specification was necessary. For example only, it is not clear from the

reissue declaration hew and why the applicant now believes that inches (and no other unit of measurement) should be substituted for the mils previously disclosed, and how and why the applicant noWbelieves that the specific numerals which denote the top of the thickness ranges f o r both the paper and cloth should also be changed. it is noted in this regard that in one instance, the

applicant appears to refer to a specific claim as support for the contention that a recitation in the specification is an obvious

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Serial Number: 08/419,752 Art Unit: 3208

-3-

error, while in another instance, the applicant refers to the specification as support for the contention that a recitation in another claim is an obvious error (see the top of page 4 of the reissue declaration). Accordingly, it is not clear precisely how or why the applicant concludes that each of the changes are required. In another example only, it is not clear how applicant

concludes that the range of solvent per square inch of fabric originally disclosed is an error, beyond the statement that the changes sought are "more realistic". 2. Claims 1-56 are rejected as being based upon a defective See 37 C.F.R.

reissue declaration under 35 U.S.C. 5 251.
§

1.175. The following is a quotation of the first paragraph of 35
§

3.

U.S.C.

112:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention. The specification is objected to under 35 U.S.C.
§

112,

first paragraph, as the specification as originally filed does not provide support for the invention as is now claimed. The

changes sought to be made to the specification in this reissue

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Serial Number: 08/419,752 Art Unit: 320'8

i

-4-

application are unsupported in the disclosure of the original application. While the Rules permit the applicant to recite claims broadly, the applicant is not permitted to introduce new matter into an application. In this case, the changes sought to be made to the disclosure constitute new matter, because they add to the invention originally disclosed, as opposed to merely broadening the scope of the claims.
For example only, the

amendments to the specification in the reissue application now indicate that the invention encompasses other means of sealing the sleeve, when in the original disclosure, the sleeve was described as being a heat sealed or a heat-shrunken and heat sealed sleeve, whenever the method of sealing was referred to. The applicant has not shown where in the original disclosure, other than a heat-sealed or a heat-shrunken and heat sealed sleeve was contemplated, and if so, what those other kinds of
sealing and/or sleeve might be.

The other changes sought are defective for the same reasons, ie, the specification has been amended in such a way that encompasses more than what was originally disclosed.

;5
.

In another

example only, note that the amendments to the disclosure to incorporate therein "means plus function" terminology, and the precise wording of the amendments, appear to indicate that the

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Serial Number: 08/419,752 Art Unit: 3208

-5-

invention now encompasses more than the specific structural elements originally disclosed as being the means for accomplishing the functions.

4.

Claims 1-56 are rejected under 35 U.S.C. 5 112, first

paragraph, for the reasons set forth in the objection to the specification. 5. Any inquiry concerning this communication should be directed

to Jacob Ackun at telephone number (703) 308-3867.

JA/NC November 30, 1995

JACOB K. ACKUN PRIMARY EXAMINtB GROUP 3200

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PATENT

IN THE UNITED STATES PATENT AND TRADEMARK OFFIC

I n

re Reissue of: U.S. Patent No. 5,368,157 Serial No.: 145,881 Filing Date:October 29, 1993 Issue Date: November 29, 1994 Serial No.: Filing Date: Inventor: For:
08/419,752

Group Art Unit: 3208 Examiner:Ackun, J.
I

April 10, 1995

Charles R. Gasparrini et al.
PRE-PACKAGED, PRE-SOAKED CLEANING SYSTEM AND METHOD FOR MAKING THE SAME AMENDMENT

ASSISTANT COMMISSIONER FOR PATENTS Washington, D.C. 20231 Sir:

In response to the Official Action dated December
5, 1995, please amend the above-identified Application as

follows:
IN THE SPECIFICATION:
/ -

Column 4, line 60, [inch to about 0.030 inch] and insert therefor --inch to about 0.30 inch--; Column 5, line lo, [0.01 inch] and insert therefor
--0.10

*

inch--.

.
(Amended twice) A pre-packaged, pre-soaked

IN THE CLAIMS:

Amend Claims 8 and 10 as follows:

r

as defined in claxm 2 wherein the fabric has

a basis weight

k f a range of from about a

1.5 ounces per

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t 6.0 ounces per square yard,<-Q_absut. r-e,y~d_], a caliper thickness in a range rinc4to about [0.03 inch] 0.30 inch, a
\

i

gth in the longitudinal direction in a range of from about bs. per inch to about 200 lbs. per inch and

n in a range of from about 15 lbs. per
s.

per inch.

.
fabric has to about 90 about 0.003

-..-

____I

-

(Amended twice)

A pre-packaged, pre-soaked
9

ined in claim

wherein the paper
40

ht in a range of from about

lbs.

iper thickness in a range of from ut [0.01 inch] 0.10 inch, a tensile dinal direction in a range of from

about 20 lb width direction about:
50

to about 80 lbs. per inch and in a a range of from about 15 lbs. per inch to
a por'osity in a range of from about

1

1.0 second to about

seconds, and a stretchabilityh a percent to about 6.0 [seconds]

percent.

-

,/\

Cancel Claims 35 and 37 without prejudice.

207619-1

2

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REMARKS

Reconsideration of the Application, as amended, is respectfully requested. The primary rejections involve the alleged insufficiency of the Declaration and the Specification. A new Declaration is submitted herewith. prior art rejection has been made. The Specification and Claims 8 and 10 of this Reissue Application have been amended in order to bring them into agreement with each other and to disclose and recite Applicants' inventive concept with greater precision. In
No

this regard, the attention of the Examiner is respectfully directed to the fact that in the Preliminary Amendment filed with the Reissue Application, Applicants amended the Specification at Column
4,

line 60 to change llmilsll to

while retaining the numerical figure "0. 030t1for the top of the range disclosed and which describes the caliper thickness of a cleaning fabric employed in the practice of the subject invention. Still further in that Preliminary Amendment, Applicants also amended Claim 8 to insert therein the numerical figure t10.03011for the figure
"0.30", thus bringing the Specification and Claim 8 into

line with each other.

Since the correct figure

110.30f~ was

recited in original Claim 8 of the issued patent, as granted, which Applicants have now done'is to amend Claim
8

to restore this originally correct recitation to that claim, while continuing to assert Ilinchesll rather than Ivmilst1 as
207619-1

3

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the correct measurement basis.

Moreover, in order to

eliminate any double claiming aspects, Reissue Claim 35 has been cancelled without prejudice.
As the Examiner knows, the original Claims are

also part of the original disclosure and thus can properly provide adequate support for such a change in regard to the numerical figure. On the other hand, insofar as Claim 10 is concerned, Applicants disclosed in the original Specification of the original patent at Column 5, line 10, the correct upper numerical figure
I1O.1Ot1

and by this

Amendment has restored this figure to the Specification while amending Claim 10 to delete the previously incorrect figure
llO.OIO1l

to bring the Specification and Claim 10 into

agreement with each other in this respect while again continuing to assert that ltinchesll rather than "milst1is the correct measurement basis. It is respectfully submitted

that the support for the change of the upper figure limit in Claim 10 is adequate from the Specification to which the original numerical figure has now been restored. Furthermore, in order to eliminate any double claiming aspects in this regard Reissue Claim 37 has been cancelled without prejudice, The reason that Applicants have had to rely on the Specification in one instance and the appropriate Claim in the other instance as the basis of support is simply that
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the obvious errors occurred, without deceptive intent, once in the Specification and once in the appropriate Claim.
It is also respectfully submitted that the

amendatory change in both the Specification and Claims from I@mils@l @Iinches@f a proper measurement basis has already to as been adequately set forth in the Remarks in the Preliminary Amendment filed in the subject Reissue Application.
As

there noted, it is believed that one of ordinary skill in the art would recognize that mils is the incorrect measurement indicia since it would be far too small and fragile for the purpose intended. In addition, this change

is cfurther substantiated by the attached New Reissue

Declaration, as called for by the Examiner in the aboveidentified Office Action, the Declaration is discussed more fully hereinbelow. Now, turning once again to the above-identified Office Action, in paragraphs 1 and
2,

the Examiner has

statad that the Reissue Oath or Declaration filed with this

Application is defective because it fails to particularly specify the errors and/or how the errors relied upon arose or occurred as required under 37 C.F.R. 1.175(a)
(5).

In

this respect, it is further noted that the Examiner has stated that included are inadvertent errors in conduct, that is, actions taken by the Applicants, their attorneys, or others, before the original patent issued which are alleged to be the cause of the actual errprs in the patent and this
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includes how and when the errors in conduct arose or occurred as well as how or when these errors were discovered while directing Applicants' attention to Hewlett-Packard v.
Bausch & Lomb, 11 USPQ 2nd 1750, 1758 (Fed Cir 1989).

The

Examiner further continues by stating that the Reissue Declaration is defective for the reasons stated above because it fails to particularly point out how and why the Applicants concluded that each change to the Specification was necessary. For example only, the Examiner points out

that it is not clear from the Reissue Declaration how and why the Applicants now believe that inches (and no other unit of measurement) should be substituted for the mils previously disclosed and how and why Applicants now believe the specific numerals which denotes the top of the thickness ranges for both the paper and the cloth should also be changed, while pointing out that in one instance, Applicants appear to refer to a specific claim as support for the

eontention that a recitation in the Specification is an
obvious error, while in another instance, Applicants refer to the Specification as support for the contention that a recitation in another claim is an obvious error as'stated at the top of page
4

of the original Reissue Declaration.

The Examiner further states also that it is not clear precisely how or why Applicants conclude that each of the changes were required.

In another example, the Examiner

states that it is not clear how Applicants conclude that the
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range of solvent per square inch of fabric originally disclosed is in error beyond the statement that the changes sought are Ivmorerealisticvv. Consequently, in paragraph 2, on page 3 of the Action, the Examiner has rejected Claims 1 through 56, as being based upon a defective Reissue Declaration under 35 U.S.C., Section 251, and 37 C.F.R., Section 1.175. Reconsideration of this Application based on a new Declaration is respectfully requested. The attention of the Examiner is respectfully directed to the new Reissue Declaration submitted herewith which it is believed clearly remedies each of the alleged defects in the originally filed Reissue Declaration of record in this case, as s e t forth by the Examiner i