Patent And Trademark Jurisdiction Of The Court Of Customs And Patent Appeals — Part 1

1973Previously published in the Journal of the Patent Office Society, volume 55 (1973), pages 69-85, and the George Washington Law Review, volume 40 (1972).

PATENT AND TRADEMARK JURISDICTION OF THE COURT OF CUSTOMS AND PATENT APPEALS* --
Part I

by Charles L. Gholz **

The Court of Custom and Patent Appeals (CCPA) is "a court established under Article III of the Constitution of the United States"1, which means that its jurisdiction is limited by the Constitution, and it is a "special" appellate court, which means that its jurisdiction is still further limited by statutes peculiar to it. This article will examine principally the statutory inhibitions on its power, both because the inhibitions arising from the Constitution have not troubled the CCPA greatly and because they are no different from those dealt with in standard works addressed primarily to the problems of the federal Courts of "general" jurisdiction.2 Furthermore, the patent and trademark jurisdiction of the CCPA will be examined in a restricted sense, excluding some issues which the court has called jurisdictional.3

The Jurisdictional Statute
The statute which purports to set forth the patent4 and trademark jurisdiction of the CCPA is 2S U.S.C. §1542:

The Court of Customs and Patent Appeals shall have jurisdiction of appeals from decisions of:
(1) The Board of Appeals and the Board of Interference Examiners of the Patent Office as to patent applications and interferences at the instance of an applicant for a patent or any party to a patent interference, and such appeal by an applicant shall waive his right to proceed under section 63 of Title 35; and
(2) the Commissioner of Patents as to trademark applications and proceedings as provided in section 1071 of Title 15.


However, this statute, which was last amended in 1949, is woefully out of date and must be read in conjunction with at least five other more recently enacted statutory provisions.

The first of these is 42 U.S.C.§ 2181, which provides that certain disputes between the Atomic Energy Commission and its contractors or subcontractors over title to parents or patent application are to be determined initially by the Board of Patent Interferences, and which gives the CCPA exclusive jurisdiction5 over appeals from such proceedings. The second is 42 U.S.C. § 2457, which performs a similar office6 in controversies between the National Aeronautics and Space Administration and its contractors or subcontractors.7 The third, 35 U.S.C. § 146, superseded 35 U.S.C. § 63 twenty years ago. However, 28 U. S. C. § 1542, which refers to "section 63 of Title 35," has not been amended to reflect the change.8 The fourth is 35 U.S.C. § 141, which refers to a "board of patent interferences" (the title of which is now customarily capitalized) rather than a "Board of Interference Examiners," as 28 U.S.C. § 1542 still calls that body, and limits appeals therefrom to "the question of priority."9 Finally, 15 U.S.C. § 1071 (a)(1), as amended in 1958, gives the court jurisdiction over appeals from the Trademark Trial and Appeal Board, which was created to take over most of the Commissioner's former appellate jurisdiction in trademark cases.10 Putting these all together and separating the jurisdiction of the Trademark Trial and Appeal Board from the remaining trademark jurisdiction of the Commissioner,11 28 U.S.C. § 1542 should12 read somewhat as follows:

Patent Office decisions. The Court of Customs and Patent Appeals shall have jurisdiction of appeals from decisions of:

(1) the Board of Appeals as to patent applications, which appeal may be taken by the applicant,13 thereby waiving his right to proceed under section 145 of Title 35;

(2) the Board of Patent Interferences in

(a) interferences, which appeal may be taken on the question of priority by any party to an interference, thereby waiving his right to proceed under section 146 of Title 35,

(b) proceedings under section 2182 of Title 42, which appeal may be taken by either the applicant or the Commission, and

(c) proceedings under section 2457 of Title 42, which appeal may be taken by either the applicant or the Administrator;

(3) the Trademark Trial and Appeal Board as to

(a) registration or cancellation of a mark, which appeal may be taken by an applicant for registration of a mark14 or a party to an interference, opposition, or cancellation proceeding, thereby waiving his right to proceed under subsection 1071(b) of Title 15, and

(b) registration as a lawful concurrent user, which appeal may be taken by any party to a concurrent-use proceeding, thereby waiving his right to proceed under subsection 1071(b) of Title 15; and

(4) the Commissioner of Patents as to

(a) the affidavits filed under section 1058 of Title 15, which appeal may be taken by a registrant, thereby waiving his right to proceed under subsection 1071(b) of Title 15,

(b) applications for renewal of registration as provided in section 1059 of Title 15, which appeal may be taken by a registrant, or former registrant, thereby waiving his right to proceed under section 1071(b) of Title 15, and

(c) the conditions and limitations provided for in subsection 1052(d) of title 15, which appeal may be taken by any party to a concurrent-use proceeding who is aggrieved by the conditions and limitations imposed by the Commissioner, thereby waiving his right to proceed under subsection 1071(b) of Title 15.

Merely recognizing the anachronisms in the present statute, however, is only one aspect in the understanding of the patent and trademark jurisdiction of the CCPA. Interpreting the deceptively simple language has created many vexing problems and, no doubt, will continue to do so. The following is a discussion of some of these problems.

When Is A Decision Not A Decision?
Appealable versus Petitionable

The most commonly litigated jurisdictional question15 in appeals from the Patent Office to the CCPA is whether a given decision of the Commissioner or one of the three boards was a "decision"16 within the meaning of the relevant statutes.17 "Decision" in this context has become a term of art, for, as Judge Rich wrote in Palisades Pageant, Inc. v. Miss America Pageant,18

not all "decisions" of the Trademark Trial and Appeal Board, in the broad, general sense of the word "decision," are appealable to this court any more than are all "decisions" of the Commissioner, the Patent Office Board of Appeals, or the Board of Patent Interferences.19


For a decision of the Commissioner or one of the boards to be appealable to the CCPA, it must have been a decision on an issue which the court is willing to characterize as "appealable" rather than as "petitionable."20

Why are decisions on certain issues appealable and decisions on others petitionable? According to the McGrady text, Patent Office Practice,21

[e]mpirically tribunals find out that some classes of items had better be cleaned up before a decisive contest is made, and these items, also selected empirically, are disposed of in Office practice by petition to the Commissioner. . . . On the other hand a "rejection," on the "merits," is reviewed by appeal to the Board and thereafter by appeal to the Court of Customs and Patent Appeals or by an "equity" suit [now the "civil action" of 35 U.S.C. §145].22

Judge Baldwin similarly emphasized both the merits-procedure dichotomy and the traditional, or customary, aspects of this determination in In re Hengehold:23

There are a host of various kinds of decisions an examiner makes in the examination proceeding - mostly matters of a discretionary, procedural or nonsubstantive nature - which have not been and are now appealable to the board or to this court when they are not directly connected with the merits of issues involving rejections of claims, but traditionally have been settled by petition to the Commissioner.24

Of the two, tradition may be the sounder guide, for, as further stated by McCrady, "there is no syllogistic way to separate the subject matters for the two modes of review."25 The heavy weight of tradition, as well as the manner in which the specific case has been handled by the Patent Office,26 seems likely to govern most routine cases.27

In the past two years, three separate tests have been enunciated by the CCPA in an attempt to clarify the distinction between appealable and petitionable decisions. In In re Searles,28 a decision which the court acknowledged had nothing to do with the "merits of the invention"29 was held to be appealable because it had "required the exercise of technical skill and legal judgment."30 In re James31 held a decision to have been petitionable because it was based solely on a Patent Office Rule, rather than a statute. Finally, in Palisades Pageants,32 the court indicated that it would have been willing to review a subordinate decision of the Trademark Trial and Appeal Board if it had been able to see how that decision was "logically related" to the primary, jurisdiction-giving issues in the case.33 Obviously, the court itself is searching for consistent and rational criteria with which to separate appealable decisions from petitionable decisions.

A first step in establishing these criteria would be to recognize the relative insignificance of the appealable-petitionable dichotomy.34 The court is not dealing here with great problems of federalism or separation of powers within the federal government.35 Rather, it is merely faced with the problem of construing a statute36 whose words and legislative history fail to provide adequate guidelines. Thus, there are no overriding reasons why "decision" should not be given a different interpretation than it has been given, certainly in deciding new issues, and perhaps in re-examining the "long-standing internal division of review authority established by the Patent Office and approved by [the CCPA]."37

Accepting the fact that the appealable-petitionable dichotomy is terminable only by legislation,38 the designation of particular issues as "appealable" or "petitionable" should be based upon considerations of relative expertise, and not upon sterile arguments concerning what is "procedural" and what is "substantive." Thus, an issue should be held "appealable" if it is peculiar to patent or trademark law, bringing it within the scope of the CCPA's special expertise.39 On the other hand, if an issue involves only administrative actions of a conventional nature bringing it within the scope of the expertise developed by the district and circuit courts under the Administrative Procedure Act, it should be held "petitionable." There is no public interest in requiring the district courts to decide patent issues. In fact, the only public interest involved is the general public interest of assuring that the private parties secure just, speedy, and inexpensive resolutions of their disputes. Since the public interest is presumably identical to the parties' private interests, no balancing of public and private interest is required.

Furthermore, to facilitate the just, speedy, and inexpensive resolutions of such disputes, it is desirable that, where possible, the entire controversy be settled by one action, brought in the court best suited to dispose of the entire matter. Therefore, because the CCPA is presumably "the court best suited to dispose of the entire matter," where the "entire matter" consists both of issues peculiar to patent law and of issues involving routine administrative actions, it should be reviewed by the CCPA in its entirety. In particular, if a Patent Office resolution of a matter results in both petitionable and appealable decisions, both should be resolved by the CCPA instead of requiring two separate actions. While conventional wisdom, in fact, dictates that decisions are either petitionable or appealable, but not both,40 two separate, though possibly converging, lines of cases indicate that some decisions previously considered to be petitionable only may, under certain circumstances, be appealable as well.

The first line of cases stems from Judge Hatfield's 1930 opinion in In re Austin,41which held that

the rulings of the Commissioner of Patents on questions of mere practice in the Patent Office, in the absence of a showing of abused discretion, will not be reviewed by this court.42

These cases seem to suggest that "questions of mere practice" i.e., petitionable matters, are reviewable in the CCPA, but that the CCPA applies the standards for a mandamus action rather than the standards for an ordinary appeal.43

The second line of cases indicating that otherwise petitionable decisions are sometimes appealable is directly traceable to a 1970 concurring opinion by Judge Lane in In re James.44 Prior to James, the CCPA had, on two occasions, reviewed Patent Office determinations on matters traditionally said to be petitionable rather than appealable.45 In order to harmonize these cases with the general trend of cases dealing with the appealable-petitionable dichotomy, Judge Lane, in James, wrote that "[s]uch determinations are reviewable here if they are logically related to a decision under section 141."46 He agreed with the majority in James, that the CCPA had no jurisdiction because "the board made no determination on patentability [i.e., no decision under section 141] and thus did not open the . . . [petitionable issue] to our review."47 However, in two cases the next term the particular board involved had rendered clearly appealable decisions, and the question then arose whether another decision made by the same board in the same action should be likewise appealable to the CCPA or should be only separately reviewable by the courts of general federal jurisdiction.

In the first of these, In re Hengehold,48 Judge Baldwin, who had delivered the majority opinion in James, impliedly conceded that the Board of Appeal's decision refusing to review the examiner s restriction requirement might have been appealable to the CCPA if it had been "directly connected with the merits of issues involving rejections of claims."49 However, the appealable decision under section 141 was the board's decision affirming the examiner's rejection of another elected claim and the court unanimously dismissed the appeal as to the propriety of the restriction requirement.

In the second, Palisades Pageants, Inc. v. Miss America Pageant,50 the court, through Judge Rich, who had dissented in James,51 expressly adopted the rationale of Judge Lane's concurring opinion in James and proceeded to examine whether the Trademark Trial and Appeal Board's decision, denying appellant's motion to amend its description of its services, was "logically related" to the board's decision sustaining appellee's opposition.52 Although the court declined to review the board's decision, it stated that it did so because it did "not see how the board's decision to refuse to permit the applicant to amend that description is logically related to either of the above issues" i.e., likelihood of confusion and estoppel by acquiescence.53 Although the court did not hold that the "secondary decision" was logically related to the primary, jurisdiction-giving decision, perhaps the result would have been different had the appellant emphasized the fact that the board had denied its motion to amend on the ground that the "proposed amendment is [not] determinative of the issues herein"54--i.e., would not change the result on the issues of likelihood of confusion and estoppel by acquiescence -- rather than emphasizing the misallocation of scarce economic resources stemming from the present practice. The court is accustomed to the additional expenditure of time and expense occasioned by the necessity of securing review of some Patent Office actions concerning a given application in one court and other actions concerning the same application in another.55 However, in this case, the board's appealable decision (finding likelihood of confusion and no estoppel) and the board's petitionable decision (denying the motion to amend) involved almost identical considerations, since the board's opinion indicates that its denial of the motion was in reality a backhanded decision on the merits of the application as if amended. Thus, the "scope of expertise" argument mentioned previously56 might have persuaded the court to recognize the difference between the board's denial of the motion on that ground and the board's denial of a motion to amend the description of services on a ground such as the untimeliness of the petition.57

At present, the "logically related" concept is seminal. It does not help the appellant in cases such as James, where the whole controversy is over the appealability of a single decision.58 If Judge Lane's James rationale is assimilated in the Austin line of cases, as seems particularly likely in view of the contemporaneous decision in Norton v. Curtis,59 the "logically related" concept may give the appellant only a limited review of the propriety of the challenged decision. Furthermore, as indicated by Hengehold, it may give ancillary appellate jurisdiction over Patent Office determinations otherwise petitionable; but it certainly does not give pendent jurisdiction. However, the logically related concept is an opening, and its rationale may be developed in subsequent opinions to give appellants at least an opportunity to avoid the kind of dysfunctional -- and expensive -- results which perturbed the appellant in Palisades Pageants.60

Previously published in the Journal of the Patent Office Society, volume 55 (1973), pages 69-85, and the George Washington Law Review, volume 40 (1972).

*.This article is a slightly updated version of an article which previously appeared at 40 Geo. Wash. L. Rev. 416 (1972). It is reprinted with permission.

**.The author is a member of the New York and District of Columbia Bars, and is presently associated with the Washington, D. C. law firm of Sughrue, Rothwell, Mion, Zinn and MacPeak. At the time this article was first written the author was Technical Advisor to the Hon. Giles S. Rich, Associate Judge of the Court of Customs and Patent Appeals. However, the views expressed herein are the author's own, and are not necessarily shared by any member of the court.

An earlier version of this article was submitted to Professor Donald R. Dunner of the National Law Center, George Washington University, in satisfaction of course requirements. The author is indebted to Professor Dunner and to Professor Robert E. Park, also of the National Law Center, for their suggestions for improvements in the first draft.


Endnotes


[1].28 U.S.C. § 211 (1970). See also Glidden Co. v. Zdanok, 370 U.S. 530 (1962).

[2].See, e.g., WRIGHT LAW OF FEDERAL COURTS (2d ed. 1970). It should not be forgotten, however, that the Constitutional restraints do apply to the CCPA and that they may be involved, if only as background, in the resolution of questions of statutory jurisdiction. See, e.g., note 90 infra.

[3].As Mr. Justice Frankfurter remarked, "the term 'jurisdiction' . . . is a verbal coat of too many colors," United States v. L.A. Tucker Truck Lines, Inc., 344 U.S. 33, 39 (1952) (dissenting opinion), and the CCPA has at times used the term very broadly, encompassing issues more commonly denominated procedural. Thus it has stated that it has no jurisdiction to decide interlocutory appeals, Knickerbocker Toy Co. v. Faultless Starch Co., ___F. 2d___, 175 USPQ 417 (C.C.P.A. 1972); United States Treasury v. Synthetic Plastics Co., 341 F.2d 157, 144 U.S.P.Q. 429 (C.C.P.A. 1965) ; Seamless Rubber Co. v. Ethicon, Inc., 268 F.2d 231, 122 U.S.P.Q. 391 (C.C.P.A. 1959) (per curiam) ; Master v. Sheffield Steel Co., 215 F.2d 285, 103 U.S.P.Q. 54 (C.C.P.A. 1954) (per curiam) (but over an interesting dissent by Judge O'Connell) to decide issues raised by the appellant but not set forth in his reasons of appeal. In re LePage's, Inc., 312 F.2d 455, 136 U.S.P.Q. 170 (C.C.P.A. 1963) (see particularly the extensive review of the authorities in the concurring opinions of Judges Rich and Smith). The court, however, has said that it does have jurisdiction to decide issues raised by the appellee, though not mentioned in the appellant's reasons of appeal. Maremont Corp. v. Air Lift Co., 463 F.2d 1114, 1116-17, 174 USPQ 395, 396-97 (C.C.P.A. 1972) ; Kratz v. Calvert, 129 F.2d 542, 546, 54 U.S.P.Q. 264, 268 (C.C.P.A. 1942); Fageol v. Midboe, 56 F.2d 867, 13 U.S.P.Q. 30 (C.C.P.A. 1932) (particularly the concurring opinion by Judge Lenroot).

Nor does this article consider the powers which the CCPA may exercise in aid of its jurisdiction, once obtained. Williams v. Administrator of NASA, 423 F.2d 1253, 165 U.S.P.Q. 326 (C.C.P.A. 1970) (per curiam) (power to determine the validity of an agreement between the parties not to appeal) ; Loshbough v. Allen, 404 F.2d 1400, 160 U.S.P.Q. 204 (C.C.P.A. 1969) (power to issue a writ of mandamus).

[4].28 U.S.C. § 1542 (1970). This section applies to utility, design, and plant patents but not to the newly created "certificates of plant variety protection." 28 U.S.C. § 1545 (1970) provides that "[t]he Court of Customs and Patent Appeals shall have nonexclusive jurisdiction of appeals [from the Secretary of Agriculture] under section 71 of the Plant Variety Protection Act." These appeals are not discussed in this article.

[5].UMC Industries, Inc. v. Seaborg, 439 F.2d 953, 169 U.S.P.Q. 325 (9th Cir. 1971) (per curiam).

[6].While the courts have not yet had occasion to so hold, presumably the reasoning of Seaborg with respect to exclusivity will be held to apply to § 2457 cases as well.

[7].The CCPA has decided only one case -- Williams v. Administrator, 463 F.2d 1391, 175 USPQ 5 (CCPA 1972) -- appealed to it under 42 U.S.C. § 2457, and none appealed to it under 42 U.S.C. § 2181. However, it will presumably apply to such cases much of the jurisdictional law developed in interference cases. Cf. Erhardt v. NASA, 171 U.S.P.Q. 295, 300 (Pat. Off. Bd. Inf. 1966). The relevant language in 42 U.S.C. § 2182 (1970) is:

The Board [of Patent Interferences] shall follow the rules and procedures established for interference cases and an appeal may be taken by either the applicant or the [Atomic Energy] Commission from the final order of the Board to the Court of Customs and Patent Appeals in accordance with the procedures governing the appeals from the Board of Patent Interferences.

The relevant language in 42 U.S.C. § 2457(d) (1970) is:

The Board [of Patent Interferences] may hear and determine, in accordance with the rules and procedures established for interference cases, the question so presented, and its determination shall be subject to appeal by the applicant or by the Administrator [of the National Aeronautics and Space Administration] to the Court of Customs and Patent Appeals in accordance with procedures governing appeals from decisions of the Board of Patent Interferences in other proceedings.

[8].As stated in Tibbetts Indus., Inc. v. Knowles Electronics, Inc., 263 F. Supp. 275, 152 U.S.P.Q. 298 (N.D. Ill. 1966), aff'd 386 F.2d 209, 156 U.S.P.Q. 65 (7th Cir. 1967), cert. denied, 390 U.S. 953, 156 U.S.P.Q. 720 (1968), "[i]t is clear that the reference to the old § 63 may be read to include the present § 146." Id. at 277, 152 U.S.P.Q. at 300.

[9].The insertion of this limitation in 1952 and the reason therefor are discussed in Glass v. De Roo, 239 F.2d 402, 404, 112 U.S.P.Q. 62, 63-64 (C.C.P.A. 1956) (per curiam).

[10].The obvious deficiency of the statute in this respect is noted in Palisades Pageants, Inc. v. Miss America Pageant, 442 F.2d 1385, 1387 & n.2, 169 U.S.P.Q. 790, 792 & n.2, cert. denied, 404 U.S. 938, 171 U.S.P.Q. 641 (1971).

[11].In In re Marriott-Hot Shoppes, Inc., 411 F.2d 1025, 1028, 162 U.S.P.Q. 106, 109 (C.C.P.A. 1969), the court stated that the only decisions by the Commissioner in trademark cases which were still appealable after the creation of the Trademark Trial and Appeal Board were those holding insufficient an affidavit under 15 U.S.C. § 1058 and those holding incomplete or defective an application for renewal under 15 U.S.C. § 1059. However, this statement was clearly dictum, and the text follows Coastal Chem. Co. v. Hodges, 235 F. Supp. 1018, 143 U.S.P.Q. 351 (D.D.C. 1964) (opinion per Jackson, retired CCPA judge), and Coastal Chem. Co. v. Dust-A-Way, Inc., 263 F. Supp. 351, 152 U.S.P.Q. 322 (W.D. Tenn. 1967), which held Commissioners' decisions fixing certain conditions and limitations pertaining to concurrent-use rights to be appealable.

[12]."Should" in the sense of incorporating all statutory changes to date; not "should" in a normative sense for, as will be obvious from what follows, this writer believes there is room for significant reform in this connection.

[13].It might not be amiss to consider whether this provision and the corresponding one concerning the Trademark Trial and Appeal Board should be expanded to provide the opportunity for appeal to be taken by the Commissioner as well. The quasi-judicial boards are largely independent of the executive branch of the Patent Office -- notwithstanding the statements to the contrary in Lindberg v. Brenner, 399 F.2d 990, 158 U.S.P.Q. 380 (D.C. Cir. 1968), -- and there is no reason to suppose that the Commissioner will always agree with the boards' interpretations of the patent and trademark laws; yet, if their decisions are pro-applicant in an ex parte case, there is now no way for the Commissioner to appeal their interpretations to the courts. But cf. Brenner v. Manson, 383 U.S. 519, 523 n.6, 148 U.S.P.Q. 689, 691 n.6 (1966), in which the Supreme Court stated that "the Commissioner may be appropriately considered as bound by Board [of Appeals] determinations" because he is officially a member of that board and is "the official responsible for selecting the membership of its panels."

Thus, if the suggestion were adopted, it would seem appropriate to redefine the Board of Appeals as a body composed solely of examiners-in chief and to statutorily recognize the office of Chairman of the Board of Appeals, the incumbent of which office might be charged with "selecting the membership of its (i.e. the Board's) panels". Corresponding changes could be made with respect to the Trademark Trial and Appeal Board.

[14].See note 13 supra.

[15].The question of CCPA jurisdiction dicussed in this section is precisely that defined by Mr. Justice Frankfurter in Skelly Oil Co. v. Phillips Petroleum Co., 339 U.S. 667 (1950):

When concerned . . . with the power of the inferior federal courts to entertain litigation within the restricted area to which the Constitution and Acts of Congress confine them, "jurisdiction" means the kinds of issues which give right of entrance to federal courts.

Id. at 671.

[16].There are two practical effects of denominating a decision as petitionable only. First, review of such decisions rendered by an examiner must be sought from the Commissioner rather than from the otherwise appropriate board. Second, review of a Patent Office final action so designated may be had only from a district court, under the Administrative Procedure Act, 5 U.S.C. §§ 701-06 (1970), which condemns the party aggrieved to a much narrower scope of review. But see Boyden v. Commissioner, 441 F.2d 1041, 1043 n.1, 168 U.S.P.Q. 680, 681 n.1 (D.C. Cir.), cert denied, 404 U.S. 842, 171 U.S.P.Q. 321 (1971), predicating jurisdiction for the review of a petitionable action (refusal to examine) solely upon 28 U.S.C. § 1338(a) and thus possibly opening up a method of obtaining a more searching review of the Commissioner's actions in unappealable cases.

[17].Judge Rich has termed this "[t]he basic limitation on our jurisdiction." In re Wiechert, 370 F.2d 927, 938, 152 U.S.P.Q. 247, 255 (C.C.P.A. 1967). Actually, a still more basic limitation is that the appeal must be from the decision of the board or the Commissioner rather than from something said in the opinion rationalizing the decision. In re Willis, 455 F.2d 1060, 1064, 172 USPQ 667, 670 (CCPA 1972); Klemperer v. Price, 271 F.2d 743, 123 USPQ 539 (CCPA 1959) (per curiam); Dunlap & Co. v. Bettman-Dunlap Co., 23 F.2d 772 (D.C. Cir. 1927), but that limitation is so obvious that it is seldom litigated.

[18].442 F.2d 1385, 169 U.S.P.Q. 790 (C.C.P.A.), cert denied, 404 U.S. 938, 171 U.S.P.Q. 641 (1971).

[19].Id. at 1387, 169 U.S.P.Q. at 792 (decision of the Trademark Trial and Appeal Board). See also In re Hengehold, 440 F.2d 1395, 1403, 169 U.S.P.Q. 473, 479 (C.C.P.A. 1971) (decision of a patent examiner); In re Marriott-Hot Shoppes, Inc., 411 F.2d 1025, 1028, 162 U.S.P.Q. 106, 109 (1969) (decision of the Commissioner); In re Mavrogenis, 57 F.2d 361, 13 U.S.P.Q. 25 (C.C.P.A. 1932) (decision of the Commissioner).

[20].Of course, a non-appealable decision by the Commissioner is not petitionable to the Commissioner. However, the customary practice in the patent profession of using the word "petitionable" to include all non-appealable decisions, whether made initially by the Commissioner, one of the three boards, or an examiner, has been followed in this article.

[21].McCrady's text is limited to ex parte patent practice, but what is said here is relevant to trademark practice and inter partes patent practice as well.

[22].McCrady, Patent Office Practice § 112 (3d ed. 1950) [hereinafter cited as McCrady].

[23].440 F.2d 1395, 169 U.S.P.Q. 473 (C.C.P.A. 1971).

[24].Id. at 1403, 169 U.S.P.Q. at 479 (footnote omitted).

See.McCrady § 112. See In re Searles, 422 F.2d 431, 164 U.S.P.Q. 623 (C.C.P.A. 1970), which acknowledges that "the dividing line between the two [decisions which are appealable and decisions which are petitionable] is often a blurry one." Id. at 435, 164 U.S.P.Q. at 626. See also In re Hengehold, 440 F.2d 1395, 1403-04, 169 U.S.P.Q. 473, 479 (C.C.P.A. 1971), which refers to the "long-standing internal division of review authority established by the Patent Office and approved by this court," and the criticism of Palisades Pageants, Inc. v. Miss America Pageants, 442 F.2d 1385, 169 U.S.P.Q. 790, cert denied, 404 U.S. 938, 171 U.S.P.Q. 641 (1971), at Pat. L. Persp. § A.12-25 (1971 Dev.).

[26].For examples of the court's tendency to assume the correctness of the Patent Office's classification of a given decision as either appealable or petitionable, see In re Wiechert, 370 F.2d 927, 152 U.S.P.Q. 247 (C.C.P.A. 1967); In re Railly Corp., 119 F.2d 595, 49 U.S.P.Q. 377 (C.C.P.A. 1941).

[27].See, for example, the short shrift given appellant's contention that the Trademark Trial and Appeal Board's refusal to let him amend the description of the goods in his application during the appeal period was appealable. Martin v. Crown Zellerback Corp., 422 F.2d 918, 919 n.1, 165 U.S.P.Q. 171, 172 n.1 C.C.P.A., cert. denied, 400 U.S. 911, 167 U.S.P.Q. 481 (1970).

[28].422 F.2d 431, 164 U.S.P.Q. 623 (C.C.P.A. 1970), discussed in Pat. L. Persp. § A.12-3 (1970 Dev.).

[29].See also In re Kaghan, 387 F.2d 398, 401, 156 U.S.P.Q. 130, 132 (C.C.P.A. 1967), in which it is said that "[a] holding of res judicata without reliance on any other ground of rejections is not an examination on the merits of the application . . . ." Nevertheless, the CCPA routinely assumes jurisdiction to review the propriety of res judicata rejections. In re Katz, 167 U.S.P.Q. 487 (C.C.P.A. 1970); In re Kaghan, supra; In re Herr, 377 F.2d 610, 153 U.S.P.Q. 548 (C.C.P.A. 1967).

[30].422 F.2d at 435, 164 U.S.P.Q. at 626. See In re Mark Cross Co., 26 App. D.C. 101 (D.C. Cir. 1905). But see In re James, 432 F.2d 473, 474-76, 167 U.S.P.Q. 403, 405 (C.C.P.A. 1970) (similar arguments held insufficient to make appealable a decision based solely on a Patent Office Rule).

[31].432 F.2d 473, 167 U.S.P.Q. 403 (C.C.P.A. 1970), discussed in text accompanying notes 66-74 infra, and Pat. L. Persp. § A.12-25 (1971 Dev.).

[32].See text accompanying notes 47-52 infra; Pat. L. Persp. § A.12-25 (1971 Dev.).

[33].442 F.2d at 1388, 167 U.S.P.Q. at 791.

[34].The CCPA has not yet been willing to acknowledge this fact.

[35].There are, of course, no state federal tensions created by the review of the action of a federal agency by a federal court. The executive interest is only that in being subject to the limited, mandamus-type review provided by the Administrative Procedure Act rather than the more searching appellate review typically undertaken by the CCPA and the federal courts of "general" jurisdiction when acting under the parallel, but infrequently invoked, provisions for appellate review therein. 15 U.S.C. § 1071(b) (1970); 35 U.S.C. § 145 (1970); 35 U.S.C. § 146 (1970). This interest the Court of Appeals for the District of Columbia Circuit has apparently found less than compelling. Phillips Petroleum Co. v. Brenner, 383 F.2d 514, 517-18 n.8, 154 U.S.P.Q. 211, 213 n.8 (1967), cert denied, 389 U.S. 1042, 156 U.S.P.Q. 720 (1968).

[36].See In re Hengehold, 440 F.2d 1395, 1402-04, 169 U.S.P.Q. 473, 479 (C.C.P.A. 1971), which held that restriction requirements, which previously had been held appealable by both the CCPA and the Supreme Court, were made petitionable by the Patent Act of 1952.

[37].Id. at 1403-04, 169 U.S.P.Q. at 479.

[38].As indicated, note 12 supra, it is this writer's opinion that there is room for significant legislative reform of the CCPA's patent and trademark jurisdiction. One such reform would be to give the CCPA jurisdiction over all actions brought under the Administrative Procedure Act against the Commissioner in patent and trademark-related matters. Because even simple administrative actions require the reviewing court to evaluate arguments which are familiar to the patent bar but totally foreign to the rest of the bar, it is preferable that even such actions be determined by the one court having specialized jurisdiction (and, hopefully, expertise) in such matters. See also Gholz, Commissioners for the CCPA, 53 J.P.O.S. 388 (1971).

[39].This would seem to be the rationale of In re Searles, 422 F.2d 431, 164 U.S.P.Q. 623 (C.C.P.A. 1970), the first of the CCPA's recent jurisdiction cases. See also In re Mark Cross Co., 26 App. D.C. 101 (D. C. Cir. 1905); Ditlow, Judicial Review of Patent Office Action: A More Rational Review System, 53 J.P.O.S. 205, 221 (1971).

[40].See, e.g., Coastal Chem. Co. v. Hodges, 235 F. Supp. 1018, 143 U.S.P.Q. 351 (D.D.C. 1964) (opinion per Jackson, retired CCPA judge). But see McCrady § 225, "General Authority of Commissioner," which suggests that the Commissioner can consider appealable matters on petition in the exercise of his "supervisory authority," presumably to correct quickly and inexpensively gross errors (or "abuses of discretion" as they are usually called) on the part of his subordinates without putting the affected party to the necessity of taking a formal appeal. But, contrast this with the next section, "Petition From Primary Examiner" which states that while "matters of 'form' are reviewed by petition to the Commissioner . . . Rules 113 and 181 imply that petition is not entertained if there is a remedy by appeal." Id. § 226. In Myers v. Feigelman, 455 F2d 596, 172 USPQ 580 (CCPA 1972), the CCPA held that Commissioner's decisions in such cases are not binding on either the Board of Patent Interferences or the court, but it adopted the Commissioner's reasoning as its own.

[41].40 F.2d 756, 5 U.S.P.Q. 285 (C.C.P.A. 1930).

[42].40 F.2d at 760, 5 U.S.P.Q. at 290 (emphasis added). See, e.g., Schenly Indus., Inc. v. E. Martinoni Co., 408 F.2d 1049, 169 U.S.P.Q. 279 (C.C.P.A. 1969); In re Pantzer, 341 F.2d 121, 126, 144 U.S.P.Q. 415, 419 (C.C.P.A. 1965); In re Gartner, 223 F.2d 502, 504, 106 U.S.P.Q. 273, 275 (C.C.P.A. 1955); In re Hatch, 167 F.2d 1003, 1005, 77 U.S.P.Q. 580, 582 (C.C.P.A. 1948); In re Trier, 163 F.2d 575, 577, 75 U.S.P.Q. 80, 82 (C.C.P.A. 1947). Compare In re Stauber, 45 F.2d 661, 663, 7 U.S.P.Q. 258, 260 (C.C.P.A. 1930) (Patent Office's argument that sufficiency of disclosure was a question of "mere practice" rejected).

At the time of the proceedings in the Patent Office in Austin and the previous cases on which it relies, appeals from the predecessor of the Board of Appeals lay first to the Commissioner, then to the court. See generally Federico, Evolution of Patent Office Appeals, 22 J.P.O.S. 838 (1940). Subsequent cases have applied this rule to decisions of the Board of Appeals and the Trademark Trial and Appeal Board appealable directly to the CCPA.

[43].It is only fair to point out in evaluating- the present strength of this line of cases that the court, though it has considered these questions of practice at some length, has never found an abuse of discretion so far as this writer has been able to determine. But see In re Moore, 444 F.2d 572, 574-75, 170 U.S.P.Q. 260, 263 (C.C.P.A. 1971) ; In re Gartner, 223 F.2d 502, 504, 106 U.S.P.Q. 273, 275 (C.C.P.A. 1955). See also Judge O'Connell's dissent in In re Dalton, 188 F.2d 170, 175, 89 U.S.P.Q. 271, 275 (C.C.P.A. 1967), on the ground that the board had erred in failing to give the applicant an opportunity to respond to a ground of rejection relied upon for the first time by the board, may also be considered an application of the rule, and the two Vandenberg v. Reynolds cases, 242 F.2d 761, 113 U.S.P.Q. 275 (C.C.P.A. 1957), and 268 F.2d 744, 122 U.S.P.Q. 381 (C.C.P.A. 1959), as well as Norton v. Curtiss, 433 F.2d 779, 791, 167 U.S.P.Q. 532, 542 (C.C.P.A. 1970), can be regarded as recent applications of this rule in a manner which can hardly be dismissed as dictum. Nevertheless the "questions of mere practise" rule continues to be cited and continues to be a major hurdle to getting the court to accept jurisdiction. In re Mattox, 461 F.2d 826, 827 n.2, 174 USPQ 155, 156 n.2 (CCPA 1972).

[44].432 F.2d 473, 167 USPQ 403 (CCPA 1970).

[45].In re Searles, 422 F.2d 431, 164 U.S.P.Q. 623 (C.C.P.A. 1970) (refusal of the examiner to enter an amendment including another as a joint inventor) ; Vandenberg v. Reynolds, 268 F.2d 744, 122 U.S.P.Q. 381 (C.C.P.A. 1959) (refusal to strike an application from the files because of changes made in it after its execution). See also Norton v. Curtiss, 433 F.2d 779, 783, 167 U.S.P.Q. 532, 535-36 (C.C.P.A. 1970) (refusal to strike an application from the files as fraudulent); In re Mark Cross Co., 26 App. D. C. 101 (D.C. Cir. 1905) (refusal to enter an amendment).

[46].432 F.2d at 476, 167 U.S.P.Q. at 405. See also Coastal Chem. Co. v. Hodges, 235 F. Supp. 1018, 1019, 143 U.S.P.Q. 351, 352 (D.D.C. 1964) ("all acts of the Commissioner . . . that may bear on the subject mentioned in Section 1071 are authorized by that section to be judicially examined pursuant to its terms [i.e., are appealable rather than petitionable]") (opinion per Jackson, retired judge of the CCPA).

[47].432 F.2d at 476, 167 U.S.P.Q. at 405. See Spatafora v. Zaiger, 69 F.2d 118, 20 US.P.Q. 316 (C.C.P.A. 1934) (determination that one party to a three-way interference "was not the first inventor" and subsequent dissolution of the interference as to him held not appealable, perhaps because the board had not yet made an award of priority to one of the other two parties). See also note 65 infra.

[48].440 F.2d 1395, 169 U.S.P.Q. 473 (C.C.P.A. 1971).

[49].Id. at 1403, 169 U.S.P.Q. at 479. Later in the opinion, Judge Baldwin seemed to widen the opportunity for appellate review still further when he wrote that "the kind of adverse decisions of examiners which are reviewable by the board [and, ultimately, by the courts under 35 U.S.C. §§ 141 or 145] must be those which relate, at least indirectly, to matters involving the rejection of claims." Id. at 1404, 169 U.S.P.Q. at 480 (emphasis of "at least indirectly" added).

[50].442 F.2d 1385, 169 U.S.P.Q. 790 (C.C.P.A.), cert. denied, 404 U.S. 938, 171 U.S.P.Q. 641 (1971).

[51].In James, the Board of Appeals had dismissed an appeal to it on the basis of its reading of a Patent Office rule, promulgated by the Commissioner under the authority vested in him by 35 U.S.C. § 6. The majority held that, in so doing, "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, and adverse decision of the examiner." 432 F.2d at 476, 167 U.S.P.Q. at 405. Judge Rich, on the other hand, would have held the board to be acting in its statutory capacity, whether applying a section of the statute or one of the rules, unless the entire proceeding in which the board was acting "consists . . . only of the exercise of delegated authority." Id. at 477, 167 U.S.P.Q. at 406.

[52].Judge Baldwin, author of the majority opinion in James, concurred in the result without opinion.

[53].442 F.2d at 1388, 169 U.S.P.Q. at 792. It should be noted that the court also gave traditional rationale for its decision:

Whether or not the board abused its discretion in denying appellant's motion in the face of this argument [that the refusal to permit the amendment and rule on the registrability of the application as amended would lead to "needless expenditure of time and expense"] . . . was a matter to be determined not by this court, but by the Commissioner of Patents, under well-settled principles of law.

Id.

[54].Id. at 1387, 169 U.S.P.Q. at 791.

[55].See for instance, Judge Smith's vigorous, but apparently unpersuasive, exposition of this argument in his dissent in In re Wiechert, 370 F.2d 927, 943, 152 U.S.P.Q. 247, 259-60 (C.C.P.A. 1967).

[56].See text accompanying note 39 supra.

[57].Cf. In re Searles, 422 F.2d 431, 435, 164 U.S.P.Q. 623, 626 (C.C.P.A. 1970) (examiner's petitionable rulings "dealing with procedural matters, such as whether an affidavit or amendment is untimely," contrasted with appealable "questions [which] . . . deal with the merits of the invention").

[58].This is one major difference between the "logically related" concept and the familiar "ancillary to priority" concept in interferences. In the latter, the Board of Patent Interferences always makes an award of "priority," even when the only contested issue is the prior party's support for the count(s), and the board's decision on this "ancillary" issue is appealable even though its uncontested decision with respect to "date" priority is not appealed. Fageol v. Midboe, 56 F.2d 867, 868, 13 U S.P.Q. 30, 31-32 (C.C.P.A. 1932). In contrast, Judge Lane's concurring opinion in James indicates that the entity (whether one of the board's or the Commissioner) from which an appeal is sought to be taken must have actually determined the merits of the controversy before a subordinate decision will be appealable, whether or not the subordinate decision in fact prevents the would-be appellant from obtaining a favorable decision on the merits. This result is consistent with the policy consideration that the CCPA should review otherwise petitionable decisions when they come up along with decisions on the merits rather than relegating them to a separate review, for in James there was only one decision and thus only one review required, at least at that stage of the proceeding.

[59].433 F.2d 779, 167 U.S.P.Q. 532 (C.C.P.A. 1970), discussed in note 108 and text accompanying notes 114 122 infra.

[60].The court used the "logically related" concept in Myers v. Feigelman, 455 F.2d 596, 172 USPQ 580 (CCPA 1972), to reach the obviously highly desirable result that it has jurisdiction over the question of the correct burden of proof to apply to a junior party in an interference, thereby at least earning the reluctant and still qualified approval of the authors of Patent Law Perspectives for its new doctrine. Pat. L. Pers. §C. 5-3 (1972 Dev.).