Application of Arthur L. Reese

359 F.2d 462, 53 C.C.P.A. 1099

• Court: Court of Customs and Patent Appeals
• Decided: April 21, 1966
• Docket: Patent Appeal 7596
• Status: Published

Opinions

PER CURIAM:

Appellant has (1) filed a petition for rehearing of our order granting the motion of the Patent Office to dismiss his appeal on the ground that it was not timely filed and (2) moves to vacate said order.

The petitioner argues, as he did in the opposition to the Patent Office motion, that he is entitled to the “benefit” of Patent Office Rule 197 (b). The lengthy petition is mostly devoted to arguing why appellant is entitled to that “benefit.”

Assuming, arguendo, that appellant is entitled to whatever benefit is to be had from Rule 197(b), though he admits that he has not technically come within its provisions, we think that rule is not germane to the issue here. It relates only to the time for a request or petition to the Board of Appeals for a rehearing or reconsideration or modification of its decision by it, not by us.

The time for appealing to this court is governed by Patent Office Rule 304, promulgated in accordance with 35 U.S.C. § 142, and appellant makes no contention that he has complied with that rule. Rather, he argues that Rule 197(b) provides for an exception to Rule 304. That is not the fact.

The application of Rule 304 to the facts here is as follows: the 60-day provision, measuring from the original decision of the board on June 29, 1964, does not apply because a timely petition for rehearing was filed on July 24, 1964. The decision on the petition was dated September 21, 1964, which started the 30-day provision in Rule 304 running.¹ Under the rule, the time for appeal expired October 21, 1964, and the notice of appeal was not filed until 12 days thereafter.

While the times for taking appeal are stated in a Patent Office rule, compliance with them is required by statute. 35 U.S.C. § 142 provides that an applicant shall file his notice of appeal within such time as the Commissioner appoints (not less than sixty days from “the date of the decision appealed from”) and it is mandatory. We are without power to waive the requirement.²

Furthermore, Rule 197(c), which makes express reference to Rule 304, contains the further provision that “proceedings in the application are considered terminated as of the * * * expiration” of the time to appeal, set by Rule 304, in the event an appeal has not been timely taken. In this case proceedings did so terminate October 21, 1964, and notice of appeal was not filed until November 2, 1964.

Appellant’s petition has been granted to the extent that we have reconsidered, but is otherwise denied. The motion to vacate is denied.

1 . Petitioner filed a second request for reconsideration with the board September 24, 1964, which was denied with an opinion on October 16, 1964, except for the consideration given to it. We deem that second request irrelevant since, regardless of appellant’s contention, the date of the decision appealed from is June 29, notwithsiai ding the fact the opinion dated September 21 provided additional reasons for that earlier decision and also notwithstanding the board’s action on September 21 constituted a “new” decision to the extent the board changed its earlier position on a rejection of three other claims, not on appeal, from an affirmance to a reversal. Adverse decisions, not their supporting reasons, are the proper subject of an appeal.

2 . This is not to say the Commissioner is without power to waive the requirement of Rule 304, for he clearly can under the provision of Rule 183. Eckey v. Watson, 106 U.S.App.D.C. 16, 268 F.2d 891. The question of the applicability of that rule not being before us, however, we express no views regarding appellant’s rights should he rely on Rule 183.