Application of John Edward James

432 F.2d 473, 57 C.C.P.A. 1371

• Court: Court of Customs and Patent Appeals
• Decided: October 22, 1970
• Docket: Patent Appeal 8268
• Status: Published

Opinions

BALDWIN, Judge.

James appeals from the action taken by the Patent Office Board of Appeals dismissing his appeal to that tribunal for failure to file a reply brief. For reasons stated herein, we have decided that this court lacks jurisdiction over the subject matter of the controversy and therefore dismiss this appeal.

The facts are as follows:

Certain claims ¹ in appellant’s application² were given a final rejection as “unpatentable over Montgomery, et al. in view of Berger, et al.”

Appellant appealed the Final Rejection and submitted a brief to the Board of Appeals wherein he listed all references of record (including 4 patents not mentioned in the Final) but only discussed and argued the two patents relied upon in the Final.

In his Answer, the examiner listed two additional references, Nelles and Lincoln, as “NEW REFERENCES CITED TO FURTHER SHOW THE STATE OF THE ART.” Nelles and Lincoln were discussed under the heading “THE REFERENCES” but were not mentioned in “THE REJECTION”. In “THE ARGUMENT” the examiner used Lincoln to rebut one of appellant’s contentions but added that a particular point emphasized would be apparent to one skilled in the art even absent Lincoln’s disclosure; he also briefly mentioned Nelles, again referred to as “cited to further show the state of the art.” The Answer was concluded by the following paragraph:

Since the use of the newly cited reference to further show the state of the art may be considered a new ground of rejection, appellant has sixty days within which to file a reply to this answer. Such reply may include any new amendment or material appropriate to the new ground and may request remánd to the Examiner to consider such amendment or material. Prosecution other wise remains closed.

The record is silent as to any further action by either appellant or examiner.

The Board of Appeals took the following action (which we reproduce in its entirety), listed in the record as “Decision of Board of Appeals”: ³

The Examiner in his Answer added two new references to “show the state of the art”. However, it is quite clear in studying the Answer (note particularly the application of the Lincoln et al. patent in page 4 and of the Nelles et al. patent in page 5) that the new references are key references required to support the rejection of the appealed claims as unpatentable over the art.

Recognizing that the inclusion of these newly cited references might be considered as a new ground of rejection, the Examiner in the last page of his Answer granted appellant additional time to file a reply brief. Since appellant did not file such reply brief and has neither acknowledged nor discussed the additional references nor the application thereof to the claims at issue, we do not have appellant’s position as to the rejection (Rule 192a) and are not presented with proper appealable issues.

In view of appellant’s failure to file a brief directed to the rejection based upon all the references relied upon in the Examiner’s Answer, this appeal is dismissed (see Rule 192b and In re Dismissal of Appeal to Board of Appeals if no Brief is Filed, 152 USPQ 292).

Appellant proceeded no further in the Patent Office, but directly appealed to this court, submitted a printed record, and filed a brief asserting that the board’s dismissal was improper and should be reversed. That brief in no way discusses the merits of the prior art rejection, but argues only the impropriety of the board’s dismissal.

The solicitor has responded to appellant’s position, first in a motion to dismiss the appeal to this court (which was denied without prejudice), later in his brief and finally at oral hearing, with the contention that this court lacks jurisdiction to review the protested action of the board. Briefly summarized, the solicitor’s position is that the action taken by the board in this case, since it did not involve review of the examiner’s position on the patentability of appellant’s claims, but merely consisted of a factual determination that there was a new ground of rejection and a notice that there would be no decision on patent-ability, was not such a “decision” which, under 35 U.S.C. § 141, this court is authorized to review.

Appellant has met this contention with the argument that the court does have jurisdiction since the board did review the examiner’s position and “decided” that the Nelles and Lincoln references were “key” references and that a new ground of rejection was made.

Neither party has argued the merits of the claimed invention on appeal, confining themselves to their respective positions regarding the question of our jurisdiction and the propriety of the board’s action. Of necessity, the jurisdictional question must be settled first.

The solicitor’s entire, argument is based on the premise that the jurisdiction of this court in ex parte patent cases is defined and limited by the provision of 35 U.S.C. § 141 which reads:

An applicant dissatisfied with the decision of the Board of Appeals may appeal to the United States Court of Customs and Patent Appeals, thereby waiving his right to proceed under section 145 of this title. * * *

That premise apparently had its genesis in the opinion of this court handed down almost forty years ago, in Sundback v. Blair, 47 F.2d 378, 18 CCPA 1016 (1931). In that case, the court had before it an appeal from a decision of the Board of Appeals sustaining the action taken by a law examiner on a motion to dissolve in an interference proceeding. Review of such actions by the board had been provided for by Patent Office rule. Finding first that the law examiner was acting for the Commissioner of Patents, who had the sole statutory authority to dissolve an interference, the court concluded that the board was also acting only for the Commissioner, and not in any capacity provided for in the statutes. Considering the language of the predecessor of 35 U.S.C. § 141, which was substantially identical to the present language, the court then found that it lacked jurisdiction to hear such an appeal, stating:

We are clear that appeals can be taken to this court only from decisions which the Board of Appeals is specifically authorized by the statutes to make in proceedings relating to patents; and that any decisions not so authorized but which are made under authority of the Commissioner of Patents to aid him in the performance of his duties, are not appealable to this court.

* * -S -A-

Nowhere in the statutes is the Board of Appeals specifically given any jurisdiction except in a prescribed appellate capacity. If any jurisdiction is exercised by it in proceedings relating to patents, not expressly authorized by the statutes, but under rules of the Patent Office, any decision rendered thereunder is not a decision which is appealable to this court, because there is no statutory authority for such an appeal.

Since that case was decided, we have been required to reconsider its holding several times but have never felt the need to alter it. Certainly we have not narrowly construed the meaning of the word “decision” in the statute. See, e. g., In re Searles, 422 F.2d 431, 57 CCPA 912 (1970). However, in every case in which we have discussed the meaning of that word, it has been concluded that an acceptable “decision”, in the jurisdictional sense, refers to an action taken by the board, in a capacity, provided for in the statutes which has been dispositive of the appeal in that it has adjudicated a legal right. Cf. In re Marriott-Hot Shoppes, Inc., 411 F.2d 1025, 56 CCPA 1230 (1969); United States Treasury v. Synthetic Plastics Co., 341 F.2d 157, 52 CCPA 967 (1965).

Considering the case before us now, we agree with appellant that, in its handling of this appeal, it appears that the board first not only had to determine what subject matter was being claimed by appellant, but also had to consider the teachings of each prior art reference, the rationale and position of the examiner both before he cited the new references and after, and the arguments made by appellant in his brief on appeal. Analyzing the board’s opinion, it further becomes apparent that the following conclusions are implicit therein: first, that the newly-cited references contained teachings pertinent and critical to a position pressed by the examiner in his answer; second, that the position maintained in that Answer involved a change substantial enough to be considered a new ground of rejection; and third, that appellant’s brief did not contain an adequate response to that new ground of rejection.

Even taking all this into consideration, however, we are compelled to disagree with appellant that the final action of the board here was a “decision” which this court has jurisdiction to review. Such action might have been arbitrary, and, we must point out, appears to have been less than fair. While appellant's attorney should have acted in anticipation of a finding of a new ground of rejection, it would seem that ordinary rules of fairness would have- dictated in this case that he be given an opportunity to complete his argument.

The board here appears to have been responding to what it thought to be the rulings of the Commissioner. Its interpretation of those rulings might very well have been in error. Nevertheless, the fact remains that, in so responding, the board was acting only under authority of the rules — as an agent of the Commissioner — and not in any statutory capacity, reviewing, on its merits, an adverse decision of the examiner. See, e. g., 35 U.S.C. § 7. The action taken here, if dispositive, was so only in a procedural sense. Any error involved was solely an abuse of discretion. We have concluded that such action, standing by itself, was outside the scope of our authority to review and accordingly, this appeal must be dismissed. Appellant’s proper avenue for review was by recourse to Rule 181 and 5 U.S.C. §§ 701-706.⁴

Dismissed.

1 . The application originally contained 27 claims. Among the issues left unsettled by the board’s action in this case was the propriety of a restriction requirement which left the status of a number of claims uncertain. Beyond this comment we will say nothing further concerning either the subject matter of the claims or the merits of any rejection.

2 . Serial No. 324,207, filed November 18, 1963, entitled “Corrosion Protection and Compositions Therefor.”

3 . The board was apparently prompted by a “Commissioner’s Notice” dated May 4, 1966 (827 O.G.l), which admonished applicants that “Lack of response by way of brief to any ground of rejection will result in dismissal of the appeal as to the claims affected.” We presume that appellant was aware of this notice.

4 . We believe that this avenue should still be open to appellant. See Rule 183.