Application of Rudolf Wiechert

370 F.2d 927, 54 C.C.P.A. 957

• Court: Court of Customs and Patent Appeals
• Decided: January 19, 1967
• Docket: Patent Appeal 7636
• Status: Published

Opinions

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner’s rejection of claims 1-3 of application serial No. 98,026, filed March 24, 1961, for “la-Methyl Steroids.” Claims 11-18 and 25 have been allowed.

Introduction

The invention relates to certain la-methyl dihydrotestosterones and their 17-acylates which possess strong androgenic and anabolic activities. Claim 1, generic to all claims in the application, reads:

1. A compound of the formula:

wherein X is selected from the group consisting of hydrgen and halogen; wherein

and wherein R is selected from the group consisting of

wherein acyl is derived from a lower aliphatic carboxylic acid.

Appealed claims 2 and 3 are directed to that embodiment of the invention wherein the substituent X in the structural formula of claim 1 is a hydrogen atom. All of the allowed claims are directed to compounds, or processes for making them, wherein X is a halogen.

The appealed claims were rejected by the examiner under 35 U.S.C. § 103 as obvious “from the standpoint of structural chemistry” in view of a sole reference:

Ringold et al. [I] 2,908,693 Oct. 13, 1959

In addition, the examiner cited the following patent “to show the state of the art”:

Ringold et al. [II] 3,032,552 May 1, 1962 (Filed Apr. 5, 1955)

The examiner contended that Ringold [I] discloses dihydrotestcsterones which are the 1-desalkyl derivatives of the compounds claimed by the appellant. Ring-old [I] is concerned with a process for the production of 2-methyl-dihydrotesto-sterones and it shows compounds of the following structural formula as starting materials:

where R represents hydrogen or a lower alkyl group of less than 7 carbon atoms. The examiner stated that “the claimed compounds are so closely related to the prior art compounds * * * as to be obvious * * *.”

Appellant submitted an affidavit by Langecker¹ which shows, in the words of the examiner, that “1-methyl dihydrotestosterone is 7.5 times as strong anabolically and 7 times as strong androgenically as the prior art compound.” Appellant contended in essence that the superior properties of his novel compounds impart patentability thereto under In re Papesch, 315 F.2d 381, 50 CCPA 1084.

The examiner considered the differences in properties shown by appellant’s affidavit to be merely “differences of degree rather than of kind” and gave “no affirmative weight” to the affidavit. In addition, the examiner cited Ringold [II] as showing that the prior art was aware that the 1-methyl substituent would enhance the properties of the “parent compound.” Ringold [II] relates to certain l-methyl-19-nor-A 4-3-ketones, which include l-methyI-19-norA 4-androstene-17|3-ol-3-one (1-methyl-testosterone), and the method of their preparation. The particular portion of Ringold [II],² designated by the examiner for the above purpose, states:

The novel compounds of the pres-sent invention are novel androgenic hormones having at least the anabolic activity characterizing testosterone and in some instances having enhanced, or lesser androgenic effects. (Emphasis ours.)

The board, in affirming the examiner’s rejection of claims 1-3, considered the claimed compounds are so closely related to the prior-art compounds as to be obvious to those skilled in the art and found that the affidavit did not overcome “the presumption of obviousness.” However, the board then added:

We further note that the compound set forth in column 1, lines 60 to 70 of the Ringold et al. reference [Ringold I] is a position isomer of both the instant 17-ol and 17-ester compounds and there is nothing persuasive of record to indicate that the instant compounds are patentable thereover. [Emphasis ours.]

The “position isomer” of Ringold [I], not specifically relied on by the examiner and noted for the first time by the board, has the following structural formula:

where R represents hydrogen or a lower alkyl group of less than 7 carbon atoms and R" represents hydrogen or an acyl group of a hydrocarbon carboxylic acid of 2 to 12 carbon atoms. A comparison of the above formula with that of claim 1 will show that the two differ mainly in the location of the CH3 group on the left ring of the 4-ring nucleus. Thus, the board termed the two “position isomers.”

After the board’s decision was rendered, the history of this application became considerably more complicated. The details of that portion of the prosecution are fully set forth in Part II of this opinion, infra. Suffice it to say for the present that counsel for appellant described it, during oral argument, as a “nightmarish” situation.

We have divided this opinion into two sections, in part for the reason that the argument on the merits and a reargument on the question of the composition of the Board of Appeals panel hearing the case were heard by different benches. We come now to “Part I,” dealing with the “merits,” that is to say the rejection of the claims.

I. Merits of the Rejections Based on Ringold [7]

As indicated above, the examiner rejected the appealed claims on the basis of the so-called 1-desalkyl derivatives of the claimed 1-methyl dihydrotestosterones shown in Ringold [I]. While the Board affirmed the examiner’s reasoning, it made the additional observation that Ringold [I] discloses a position isomer of the claimed compounds and such isomer is also a bar to the patentability of appellant’s claims. We will take up these issues in that order.

Appellant attempted to overcome the examiner’s rejection by the submission of the Langecker affidavit. The examiner’s Answer before the board admitted +hat the affidavit shows the claimed compounds to be about 7 to 7.5 times as effective as the prior art compound. However, the examiner, and the board, found the affidavit insufficient to overcome the reference since affiant has shown no new properties but merely an alleged improvement in the' same properties. The improvement in the same properties possessed by the prior art compounds is labeled by the examiner and the board as “differences of degree rather than of kind.”

Appellant contends that obviousness of a novel compound is to be decided not only from a comparison of its structural formula with that of the prior art compound, but from all properties of the compounds. In re Papesch, supra. Appellant then submits that the 7-fold androgenic activity and 7.5-fold anabolic activity shown for his compounds constitute “clear proof of unobvious and patentable greater effectiveness.”

We think appellant’s contentions have merit and the board’s decision with respect to the rejection based on the 1-desalkyl compounds of Ringold [I] is therefore reversed.

As we indicated in In re Lohr, 317 F.2d 388, 50 CCPA 1274, it is possible to obtain a patent where the showing proves substantially greater effectiveness :

When a new compound so closely related to a prior art compound as to be structurally obvious is sought to be patented based on the alleged greater effectiveness of the new compound for the same purpose as the old compound, clear and convincing evidence of substantially greater effectiveness is needed. [Emphasis added.]

Again, in In re Grier, 342 F.2d 120, 52 CCPA 1081, we held that a large difference in degree (3-fold increase) was persuasive evidence, in the absence of countervailing evidence, of unobviousness. See In re Carabateas, 345 F.2d 1013, 52 CCPA 1386, where a showing of six and nine times effectiveness was held insufficient to establish patentability because the record there contained “other evidence” (our emphasis) which compelled a holding of obviousness.

In the case at bar, we are impressed by the 7-fold improvement in activity and, in the absence of valid countervailing evidence, we find the claimed compounds to be unobvious. There is nothing in any reference of record which would suggest any improvement, let alone a 7-fold improvement in activity.

The examiner apparently attempted to rebut the thrust of the affidavit by citing Ringold [II] as showing the art was aware that the 1-methyl substituent would enhance the properties of the parent compound. The statement in Ringold [II] relied upon by the examiner, quoted above, clearly does not support that proposition. In the first place, Ringold [II] only states that his compounds have “at least the anabolic activity” of the prior art testosterone and “in some instances * * * [have] enhanced or lesser androgenic effects.” These phrases could hardly be characterized as teaching that these activities would be increased at all, let alone increased several fold. Furthermore, the cited statement in Ringold [II] refers to l-methyl-19-nor-testosterone and there is no showing that such 19-nor compound and the claimed compounds behave in a similar fashion when substituents are added to or deleted therefrom. Therefore, Ringold [II] does not support the allegation of the examiner.

The solicitor’s brief alleges certain inconsistencies between the two tables in the affidavit and between the affidavit and the application as originally filed. However, these alleged inconsistencies were not pointed out or adverted to by either the examiner or the board. Hence we regard this attack, on the credibility as opposed to the sufficiency of the affidavit, to be a new issue rather than a new argument and therefore not properly before us. In re Nygard, 341 F.2d 924, 52 CCPA 1032.

We turn now to the issue raised by the “position isomer” first noted in the board’s opinion. The board’s language, quoted above, in noting the isomer, appears to us to be a rejection of the appealed claims on the ground the claimed compounds are obvious, under 35 U.S.C. § 103, in view of the disclosed isomer. For reasons to be stated below, we find this to be a ground of rejection which was specifically pointed out for the first time by the board and, under the facts of this case, we believe that appellant should be afforded an opportunity to respond to that rejection. In view of the board’s failure to do so, we remand the case to the board for further proceedings. Cf. In re Yale, 347 F.2d 995, 52 CCPA 1668.

Position isomerism involves close structural similarity which is to be taken into consideration with all other relevant facts in applying the test of obviousness under section 103. In re Mehta, 347 F.2d 859, 52 CCPA 1615. However, all other relevant facts must also be considered, as the board appears to have been aware when it stated that “there is nothing persuasive of record to indicate that the instant compounds are patentable” over the isomer. Of course, there is nothing of record to so indicate since the isomer was first pointed out and relied upon by the board.

As we had occasion to state, m a different factual situation in In re Hughes, 345 F.2d 184, 52 CCPA 1355:

It seems basic to the concept of procedural due process that an applicant at least be informed of the broad statutory basis for rejecting his claims, so that he may determine what the issues are on which he can or should produce evidence.

In the present case, the rejection first advanced by the board left appellant without an opportunity to make a showing of unobviousness. Appellant requests that we provide such an opportunity by remanding the case to the board.

An applicant’s attention and response are naturally focused on that portion of the reference which is specifically pointed out by the examiner. More important, where, as here, the appellant depends on a showing of unexpected properties to support patentability, the comparison which results in a conclusion of unexpected properties cannot practically be made for all of the compounds which might be mentioned in a particular reference.³ Under such circumstances, we conclude that when a rejection is factually based on an entirely different portion of an existing reference the appellant should be afforded an opportunity to make a showing of unobviousness vis-a-vis such portion of the reference.

II. The Question of the Composition of the Patent Office Board ■ of Appeals

This case was initially argued here on 10 March 1966, Judge Kirkpatrick sitting by designation in place of the Chief Judge pursuant to 28 U.S.C. § 294(d). At that time the case was argued on the merits. Appellant also called to our attention a request for reconsideration,⁴ contained in the record before us, in which, following the wholly adverse and unanimous decision of the board of 30 October 1964, appellant pointed out that the board rendering the decision consisted of Federico, Examiner-in-Chief, and Stone and Rosdol, acting Examiners-in-Chief. Appellant pointed out that Stone was a Supervisory Examiner. Rosdol, presumably, was a Primary Examiner. While expressly disavowing any objection to the abilities of the acting Examiners-in-Chief, it was urged by appellant that the board was improperly constituted under 35 U.S.C. § 7⁵ in that not more than one acting Examiner-in-Chief could be a member of a three-man board hearing an appeal— that there must be two regularly appointed (as distinguished from temporarily designated) Examiners-in-Chief. The Request for Reconsideration asserted that the adverse decision of the board was a “nullity” because the board was improperly constituted. Appellant requested that the case “be set for rehearing before a properly constituted Board of Appeals.”

The Request for Reconsideration points to no error in and asks for no revision of the board decision.

The record shows no further action by any Board of Appeals in this case prior to the taking of this appeal. What transpired, in summary, is the following:

1. The 3 Dec. 1964 response by the Patent Office to the above Request for Reconsideration is entitled “Commissioner’s Decision” and was by the First Assistant Commissioner. It opens with the statement, “This is a petition requesting that the decision of the Board of Appeals rendered October 30, 1964 in this case affirming the decision of the primary examiner be vacated and that the case be set for hearing before another board.” The decision was:

It is clear from the quoted language [from 35 USC 7, see note 2, supra] that the expression “such primary examiner” refers to the “patent examiner of primary examiner grade” previously referred to and not to the examiner of higher grade. Since a supervisory examiner is of a higher grade than a primary examiner, the board which decided this case was properly constituted and the petition is accordingly denied.

2. On 14 Dec. 1964 appellant filed a “Petition to Commissioner” under Rule 181 asking the Commissioner, acting under his rule-suspending power (Rule 183), (a) to permit the filing of the petition for reconsideration, (b) to waive the third sentence of Rule 304 to permit filing this appeal 30 days after the decision on said petition, (c) to extend the time for filing a new petition and the filing of an affidavit appellant wished to file answering an alleged new ground of rejection by the board, and (d) to extend the time for filing appeal from the board’s decision.

3. A Commissioner’s Decision of 22 Dee. 1964 denied all requests for want of a showing of “an extraordinary situation” as required by Rule 183, in the absence of a showing why the board was not requested to reconsider its decision within the time provided by Rule 304.

4. On 24 Dee. 1964 another “Petition to Commissioner” argued that an extraordinary situation had been shown and that appellant could not have asked the same board to review its decision without admitting the board was properly constituted.

5. The Commissioner’s Decision of 24 Dec. 1964 denied the petition filed the same day.

6. This appeal was taken 29 Dee. 1964, by Notice of Appeal, the eight reasons of appeal annexed thereto alleging error only with respect to the rejection of claims and making no reference, direct or otherwise, to the previously asserted unlawful constitution of the board.

All of the papers above referred to are included in the record before us. Appellant’s brief contains a recitation of what transpired in the Patent Office to lay the basis for only one request of us, namely, that if we do not find the appealed claims allowable, we remand the case to the board “so as to afford appellant an opportunity to submit in an affidavit the tests described hereinabove and to have this affidavit evaluated by the Patent Office prior to adjudication of this case by the Hon. Court of Customs and Patent Appeals.” This is the affidavit referred to in “2”, above. We are not asked to do anything about, or to take any other action based on, the alleged unlawful constitution of the board.

Having been made aware of the foregoing factual situation, this court set this case down for reargument by an order dated 10 June 1966, In re Wiechert, 361 F.2d 482, 53 CCPA 1351, the re-argument to be limited to the following three questions:

1. Is this court authorized to consider, in the present proceeding, appellant’s challenge to the composition of the Board of Appeals whose decision is here appealed?

2. What authority, if any, permits the Commissioner of Patents to designate as members of a Board of Appeals under paragraph 1 of 35 U.S.C. § 7, more than one examiner-in-chief serving in such capacity by designation of the Commissioner pursuant to paragraph 2 of 35 U.S.C. § 7?

3. Was the Board of Appeals which rendered the decision here appealed validly constituted under 35 U.S.C. §§ 3, 7?

Briefs were filed by appellant and the Solicitor, U. S. Patent Office, and oral argument held 3 Oct. 1966 limited to the above questions. The five judges hearing the reargument were the regular members of this court. Judge Martin died thereafter, on November 5. By consent of the parties, the Chief Judge and Judge Kirkpatrick are participating in the decision of the entire case.

The Chief Judge, Judge Kirkpatrick and the writer are of the view that question 1, above, should be answered in the negative and that questions 2 and 3 should therefore not be considered, for the reasons more fully set forth below. We therefore reach the merits as dealt with in part I of this opinion.

Judge Almond’s views are that question 1 should be answered in the affirmative,⁶ that the answer to question 2 is that 35 U.S.C. § 7 authorized the board as herein constituted and that the answer to question 3, therefore, is “Yes.” He reaches the merits on that basis.

Judge Smith's view is that the answer to question 1 is “Yes,” to question 2, “None,” and to question 3 “No,” wherefore he regards the board’s decision as a nullity and would dismiss the appeal without consideration of the merits.

The Answer to Question 1.

In the present proceeding, on the facts above recited, we should not and cannot consider the legality of the composition of the board for three principal reasons: (1) The question was not raised on this appeal by appellant; (2) having raised the question in the Patent Office, he abandoned it by not arguing it before us (except as we insisted on his doing so at the reargument); and (3) our limited statutory authority precludes our consideration of the question. These reasons will now be amplified.

(1) As above pointed out, appellant failed to file any reason of appeal raising in this court the question of the board’s constitution. That issue is therefore not before us. 35 U.S.C. § 142. We are limited by statute to the rendering of decisions “confined to the points set forth in the reasons of appeal”, 35 U.S.C. § 144. Ample explanation of our long-established position on this point will be found in In re LePage’s Inc., 312 F.2d 455, 50 CCPA 852, and In re Gruschwitz, 320 F.2d 401, 50 CCPA 1498. See also the cases listed in the writer’s dissenting opinion in the latter case. We agree with the solicitor’s somewhat over-emphatic statement in his supplemental brief that:

The stark unchallengable, naked fact shown by the record is that the appellant has uttered no challenge in this Court to the composition of the Board of Appeals that can properly be considered by this Court. There is no reason of appeal in the case at bar * * * which, directly, indirectly, or impliedly raises an issue as to the composition of the Board. * * * The legality of the Board is not an issue in this case. The challenge, if it be a challenge, is the Court’s, not appellant’s.

However broadly or narrowly this court may have construed reasons of appeal in the past, the total absence of a reason bearing, even remotely or by implication, on an issue alleged to be present in a case cannot be overlooked. Le Page’s, supra.

By reason of facts brought out in the discussion of the next point, “(2),” we consider appellant’s action in not asking us to review the Patent Office ruling on the board’s composition to have been quite deliberate.

(2) This court has uniformly followed the sound rule that an issue raised below which is not argued in this court, even if it has been properly brought here by a reason of appeal, is regarded as abandoned and will not be considered. It is our function as a court to decide disputed issues, not to create them. In re Baird, 348 F.2d 974, 52 CCPA 1747; In re Lorenz, 305 F.2d 875, 49 CCPA 1227 (footnote 2); In re LeBaron, 223 F.2d 471, 42 CCPA 956.

It is clear from the record, briefs, and oral arguments that appellant did not present the question of the legality of the board’s composition to us as an issue for us to decide before we set the case for reargument. He merely told us about the contention he made below, in the past tense, and perhaps for the very good reason that he knew it was not within our jurisdiction to consider that issue.

The first indication that appellant dropped the issue of the board’s composition in coming to this court is the absence of a reason of appeal,⁷ as noted in “(1)” above. It is even clearer from a reading of his brief as a whole. After the recitation of the events described under “1” through “6” above, the brief concludes:

Under the circumstances described above and apparent from the Transcript of Record, it is respectfully submitted that in the event that the application is not found allowable by the Hon. Court of Customs and Patent Appeals based on the record presently before the Court this case should be remanded to the Hon. Board of Appeals so as to afford appellant an opportunity to submit in an affidavit the tests described hereinabove [tests described in the brief but not of record] and to have this affidavit evaluated by the Patent Office prior to adjudication of this ease by the Hon. Court of Customs and Patent Appeals.

Note that it is not even suggested that the case be remanded to a different board than the one which decided this ease. In the “Conclusion” of the brief, appellant summarized on the remand request, if we deem it necessary to consider the proposed affidavit to find patentability in view of the alleged new ground of rejection made by the board, by saying,

* * * such remanding is proper in view of the extraordinary situation existing in this case, as more fully discussed above and apparent from the Transcript of Record.

The significance of this statement is that by reason of the challenge below to the board’s constitution and the ensuing petitions and denials, appellant never succeeded in asking the board to reconsider its decision. He never pursued a procedure which would get into the record the affidavit of additional tests made after the board’s decision and in response to the alleged new ground of rejection in the board’s opinion. Now all he is asking us to do as a result of what he did, and what the Patent Office did, is to take this case history into account in considering his suggestion to remand if we do not find his claims allowable on the basis of other arguments. He is not asking us to pass on the constitution of the board. For all the brief shows, he regarded it at the time of the initial argument as a dead issue. In fact, it appears to us that he regarded it as dead as long ago as the filing of his final “Petition to Commissioner” on 24 Dec. 1964 in which he made this statement:

It was only after the decision of the First Assistant Commissioner on December 3, 1964 denying the petition of November 20, 1964 that counsel for applicant had any basis for considering that the original Board of Appeals hod-been properly constituted and therefore in submitting a request that this same Board of Appeals reconsider its decision. [Emphasis ours.]

In any event, we can find nothing prior to our setting the case for rehearing indicating any desire on the part of appellant to have us pass on the legality of the constitution of the board, which we referred to in our prior per curiam order, in question 1, as “appellant’s challenge.”' We wish to make it clear that it was not a challenge in this court and that whatever challenge was made was solely in the Patent Office and not pursued further.

Had appellant wished to pursue the matter further his proper remedy, decisions of the Commissioner on petitions not being appealable to this court, as pointed out under (3) below, would have been by mandamus in the District Court. United States ex rel. Steinmetz v. Allen, 192 U.S. 543, 24 S.Ct. 416, 48 L.Ed. 555 (1904); Butterworth v. United States ex rel. Hoe, 112 U.S. 50, 55 S.Ct. 25, 28 L.Ed. 656 (1884); see Ex parte Frasch, 192 U.S. 566, 24 S.Ct. 424, 48 L.Ed. 564 (1904); 5 U.S.C. § 1009. That would be the proper forum in which to settle the question of the legality of the board’s constitution, with appeal to the Court of Appeals available to either party from an adverse decision.

(3) The basic limitation on our jurisdiction in 35 U.S.C. §§ 141, 143 and 28 U.S.C. § 1542 is to the review of “decisions” of the board. There was no decision by the board, whose decision was appealed here, that it was legally constituted. There was such a decision by the First Assistant Commissioner but there is no provision in the statutes for any appeal to this court from his decisions on petitions. They are reviewable by mandamus. Aggrieved applicants are therefore not without a remedy. But such Commissioner’s decisions are not reviewable by us. To take up the legality of the board’s constitution in this case would, therefore, appear to be doing by indirection what we have no authority to do directly and would amount to review of a Commissioner’s decision that the board was legally constituted, which we have no jurisdiction to do. In re Jewett, 247 F.2d 953, 45 CCPA 714; see In re Mavrogenis, 57 F.2d 361, 19 CCPA 1063.

The Patent Office has cited a number of our decisions to support the statement, which is true, that we will not ordinarily interfere in matters of Patent Office practice. We find them beside the point as the question here is not one of Patent Office practice. It is a matter of whose decision we are being asked to review, the board’s or the Commissioner’s. We have jurisdiction to review the former but not the latter.⁸

Conclusion

The rejection by the examiner, affirmed by the board, is reversed. The case is remanded with respect to the board’s added ground of rejection for further proceedings consistent with this opinion.

Reversed and remanded

1 . Dr. Hedwig Langecker was, from 1934 to 1945, an associate professor of Experimental Pharmacology and Pharmacognosy at the German University of Prague and, at the time of the affidavit, a scientific advisor for the firm of Schering A.G., Berlin, Germany, assignee of the application at bar.

2 . Ringold [II] is not included in the printed record but copies of that patent were later furnished to us by the Patent Office.

3 . This point seems to be appreciated by the Patent Office itself as its Rule 106(b) provides, inter alia, that:

When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable.

4 . Appellant’s original brief here says “appellant filed a request for reconsideration * * The printed record contains this paper with the printed heading, prepared in the Patent Office, “Request for Reconsideration, November 20, 1964.” Our Rule 25(3) (b) calls for simplifying such headings to a short title and date an inquiry by us of the Patent Office has brought ou the fact that the actual title on the paper as filed was, “Petition to the Commissioner of Patents for a New Hearing before the Board of Appeals.”

As required by Patent Office Rule 1, the paper was addressed: “Hon. Commissioner of Patents, Washington, D. C.” It bears a Mail Room stamp of Nov. 20, 1964, and a Board of Appeals stamp of Nov. 23, 1964.

On its face it appears to be directed to the Board of Appeals since it requests that the decision of the board be “withdrawn” and it would appear that no one other than the board itself could “withdraw” its opinion. See also 35 U.S.C. § 7, last sentence of first paragraph, reading: “The Board of Appeals has sole power to grant rehearings.”

5 . Paragraph 2 of 35 U.S.C. § 7, so far as applicable here, reads:

Whenever the Commissioner considers it necessary to maintain the work of the Board of Appeals current, he may designate any patent examiner of the primary examiner grade or higher, having the requisite ability, to serve as examiner-in-chief for periods not exceeding six months each. An examiner so designated shall be qualified to act as a member of the Board of Appeals. Not more than one such primary examiner shall be a member of the Board of Appeals hearing an appeal. [Emphasis ours.]

6 . Judge Almond’s stated view is that “this court would lack jurisdiction of the subject matter” if the appointment of one of the members of the board was defective. He does not mean, of course, that a decision of a Board of Appeals would not be subject matter of which we have jurisdiction. He means that there would be no decision of a Board of Appeals to which our jurisdiction could attach. Perhaps, in a broad sense, this is a “jurisdictional” question but it is well to bear in mind its precise nature. It is not a question of a lack of our power to decide but only an alleged lack of an object on which to exercise that power. It is somewhat confusing to regard it as a question of our jurisdiction.

It seems to us that an invalid appointment would not so vitiate a board’s decision that neither waiver nor abandonment of the defect would be possible. In United States v. L. A. Tucker Truck Lines, Inc., 344 U.S. 33, 73 S.Ct. 67, 97 L.Ed. 54 (1952), the Supreme Court held that the Interstate Commerce Commission was not ousted by jurisdiction in a case heard by an invalidly appointed examiner. Rejecting “technical eompulsionfs],” the Court characterized the examiner’s appointment as an “irregularity which would invalidate a resulting order if the Commission had overruled an appropriate objection” and “not one which deprives the Commission of power or jurisdiction * * We feel that the present case is governed by analogous considerations.

7 . It happens that appellant’s counsel who signed the Notice of Appeal is personally very conscious of the reasons of appeal requirement as he was counsel for the appellant in In re Gruschwitz, supra, decided about a year and a half before the filing of the appeal herein, holding reasons of appeal inadequate and dismissing the appeal.

8 . On how the Patent Office internally divides the determination of questions relating to patent applications between the board and the Commissioner, which in turn determines the appropriate route of review thereof, see Sec. 1201, Manual of Patent Examining Procedure and Rules of Practice 181 and 191.