Patent And Trademark Jurisdiction Of The Court Of Customs And Patent Appeals — Part II (Conclusion)

1973Journal of Patent Office Society (1973) volume 55, pages 184-202, and the George Washington Law Review (1972), volume 416.

PATENT AND TRADEMARK JURISDICTION OF THE COURT OF CUSTOMS AND PATENT APPEALS * --
Part II (Conclusion)

by Charles L. Gholz **

Table of Contents

When Is The Board Actually The Commissioner?
Delegation to One of the Boards of the Commissioner's Authority to Decide Petitionable Matters

When Is One Board Actually Another Board?
Transfer of Jurisdiction from Board to Board

When Is The Board Not A Board At All?
Decision by an Illegally Constituted Panel

When Is The Commissioner Not The Commissioner?
Delegation Within the Patent Office and Exercise by the Commissioner of the Jurisdiction of One of the Board

Conclusion


When Is The Board Actually The Commissioner?
Delegation to One of the Boards of the Commissioner's
Authority to Decide Petitionable Matters

Decisions of the Commissioner on petitionable matters are not appealable, as such, to the CCPA.61 However, when the commissioner delegates some of his authority to make decisions on petitionable matters to one of the boards, it may be asked whether the CCPA has jurisdiction over appeals from such decisions. The question was first presented to the court in Sunback v. Blair,62 where the court held that the Board of Appeals was the Commissioner in disguise. To arrive at this conclusion, the court first determined that the statute63 reposed authority to dissolve interferences solely in the Commissioner. Next, the court read the Patent Office rules which provided that motions to dissolve an interference should be decided by a Law Examiner, with appeal to the Board of Appeals, as delegations of the Commissioners authority. Thus, the court held the board's decision to have been, in legal contemplation, that of the Commissioner and not appealable to the CCPA because "[t]he statutes do not provide for any appeal to this court from any decision of the Commissioner in proceedings relating to patents."64 Later that term, Sundback was strongly reaffirmed and defended against various new attacks in Headley v. Bridges.65

A case presenting the issue did not come up again, so far as this writer has found, for thirty-nine years. When it did, in In re James,66 the court, speaking through Judge Baldwin, greatly extended the rule of Sundback. In James, the Board of Appeals had dismissed an appeal to it on the ground that appellant's failure to file a reply brief in response to newly cited references in the examiner's answer was a "failure to file the brief" within the meaning of Rule 192(b).67 On appeal to the CCPA, the majority held that "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."68 In dissent, Judge Rich first pointed out that the rules of the Patent Office, "if approved by the Secretary of Commerce and not inconsistent with statutory, constitutional, or treaty law, have the force and effect of law."69 He then argued that:

a decision of the board interpreting such a regulation is no less a decision of the board subject to our review than a decision of the board interpreting a statute, the Constitution, or a treaty. A decision of the board on a statutory appeal interpreting a regulation established by the Commissioner stands on a very different footing from a decision (whether interpreting a statute, a rule, or opinions of this or any other court) in a proceeding in which the entire proceeding consists, as it did in the Sundback case, only of the exercise of delegated authority.70

He further indicated, citing In re Searles,71 that the court was accustomed to deciding cases involving the interpretation of Patent Office Rules. In Searles the court had found an examiner's decision refusing entry of an amendment to be appealable, in part because the examiner' action "required the exercise of technical skill and legal judgment in order to evaluate the facts presented, interpret the requirements of 35 U.S.C. 116 and Rule 45 and weigh the facts against the requirements."72

It may be hoped that the result in James will prove an isolated aberration, despite the approval which it received from respected commentators.73 Apparently, the rule of Sundback has been seldom applied, presumably because the Commissioner has rarely delegated to the board portions of his statutory, quasi-judicial powers on petitionable matters. However, the boards (and the CCPA, as exemplified by the Searles case) are continually applying the rules of the Patent Office, promulgated under the authority of the Commissioner. To deprive the CCPA of its jurisdiction to review their applications of these rules --even when their actions are taken "only under authority of the rules" and are not, strictly speaking, a part of their review of what the examiner has done74 -- would diminish seriously the scope of its jurisdiction.

When Is One Board Actually Another Board?
Transfer of Jurisdiction from Board to Board

Theoretically, the division of functions between the Board of Patent Interferences and the Board of Appeals is sharp -- the former is to decide questions of priority and questions ancillary thereto,75 and the latter is to decide questions of patentability and, at the least, questions "logically related" thereto.76 Notwithstanding this theoretical division of authority, the possibility exists that one board might decide an issue which the CCPA would later determine to have been within the exclusive jurisdiction of the other board. Should this happen, the CCPA will be faced with the difficult question of whether to review the matter. There are two ways in which the court might resolve the issue. First, it could find that the particular board decision was ultra vires for that board and therefore declare the whole proceeding void. The CCPA would thus lack jurisdiction to review whatever decision the board made. Alternatively, the court could rule prospectively that decisions on that particular issue should be made by the other board, but nevertheless assume jurisdiction to review the decision on the theory that the error did not affect substantial rights, particularly since the erring board's decision was still reviewable by the CCPA. The latter alternative, however, would seem to ignore the parties' right to have the issue decided in the first instance by the board having specialized expertise over the issues involved. Although the CCPA has not yet been faced with this problem, it may soon be. In Moore v. McGrew77 the Board of Patent Interferences stated that the determination of whether or not two applications or an application and a patent interfere in fact "involves . . . a question of patentability, which, while not ancillary to priority, is property treated by the Board of Patent Interferences."78 The board thereafter decided that an "interference in fact" did exist between McGrew's patent and Moore's application and awarded priority to McGrew.

It may be debated whether, in general, the question of the existence of an interference in fact between the claims of two applications, or between the claims of an application and the claims of a patent, is solely one of patentability or is one ancillary to priority. This is, after all, an issue fundamental to all interference proceedings in which the count differs from one or more of the corresponding claims.79 Brailsford v. Lavet,80 the leading modern case on the subject, appears to assume that the CCPA has jurisdiction over appeals on the issue of the existence of an interference in fact, although the court does not seem to have specifically considered this issue.81 The only consideration militating against deciding the issue in the context of an interference is the fact that such determinations are much closer conceptually to the usual work of the Board of Appeals (determining anticipation and obviousness) than it is to the usual work of the Board of Patent Interferences (determining priority and the existence of support for the counts in the parties' disclosure).

Moore was not, however, the ordinary interference-in-fact case. Moore's application and McGrew's patent were both assigned to the same firm, and the interference was declared in compliance with a Commissioner's Notice82 which directed that an interference should be declared between an application and a commonly owned patent if the two were "directed to identical inventive concepts or . . . [if] one of the concepts would be obvious in view of the other" unless the common assignee made a determination of priority. In effect, this was a device to compel the common assignee to determine the validity of the claims in his two cases under 35 U.S.C. §§ 102(g) and 103, the sanction for noncooperation being the declaration of an interference. Thus, (1) it was a special proceeding, to which only commonly assigned cases were subject, and (2) the scope of inquiry was much broader than it is in the usual interference. In Brailsford the CCPA had said that

[i]n considering the existence or nonexistence of an interference in fact between the instant parties, the first consideration is whether the omission of the recited "core portion" from the claim of the Brailsford patent results in a different invention being claimed.83

In Moore, on the other hand, the Board of Patent Interferences determined that there was an interference in fact by determining that the parties' inventions, though concededly different, were obvious in view of each other.84

On these facts, it would indeed seem that the Board of Patent Interferences decided a question of straight patentability -- namely, the patentability of Moore's claims under 35 U.S.C. §103 over McGrew's invention, which the board assumed to be available against Moore under 35 U.S.C. § 102(g).85 Of course, the question was clearly assigned to the board by the above-mentioned Commissioner's Notice, and the assignment was, arguably, only a logical extension of the firmly established phantom-count practices,86 which permits the declaration of an interference on a count which neither party can make. On the other hand, as the Board of Interferences itself seemed to admit, the determination of patentability is a long way from its usual jurisdiction.87

The question of interference law raised by Moore is far beyond the scope of this article.88 For present purposes, it is sufficient to ask whether, if such a case is appealed and if the court does determine that the Board of Patent Interferences decided a question of patentability not ancillary to priority, the court will then review the board's decision. The CCPA has countenanced the Commissioner's delegation of some of his quasi-judicial authority to one of the boards,89 but is should not approve transfer by the Commissioner of a portion of one board's statutory authority to another.90 To do so would defeat the whole purpose of having boards with different, specialized expertise, a consideration which is not present when the Commissioner delegates some of his authority to a board which he has, presumably, concluded has specialized expertise particularly suiting it to decide the matters delegated.

When Is The Board Not a Board at All?
Decision by an Illegally Constituted Panel

This question was raised in the famous case of In re Wiechert91 but not reached by a majority of the court.

On general principles, one would have thought that a decision by an illegally constituted panel of one of the boards was void and that the CCPA therefore had no jurisdiction to review whatever decision the "board" had made. The court has managed to avoid this result, however, by adopting the peculiar doctrine92 of refusing to consider the legality of a board's constitution unless the point is "properly raised," and, so far, the court has been able to find that the point was not "properly raised."92a

In Wiechert, the decision appealed from had been rendered by a "Board of Appeals" consisting of an Examiner-in-Chief and two acting Examiners-in-Chief, one of whom was a Supervisory Examiner and one of whom was a Primary Examiner.93 During the proceedings in the Patent Office, Wiechert had challenged the constitution of this board on the ground that, under 35 U.S.C. § 7, not more than one acting Examiner-in-Chief could be a member of a three-man board hearing an appeal.94 The appellant did not press the point on appeal to the CCPA, but the court, after hearing arguments on the merits, sua sponte set the case down for reargument on two questions relating to the composition of the board and a third concerning the authority of the court to consider the first two on its own motion. The third question proved to be dispositive, for a majority of the judges95 participating held that the court lacked such authority because (1) appellant had not challenged the composition of the board in his reasons of appeal,96 (2) appellant had abandoned the question by not arguing it before the CCPA, except as compelled to do on reargument, and (3) the panel which had decided the merits of the case below had not expressly decided that it was legally constituted.97 In response to the arguments of the two judges who did not concur with the majority's reasoning, the majority cited United States v. L.A. Tucker Truck Lines, Inc.,98 for the proposition that "an invalid appointment would not so vitiate a board's decision that neither waiver nor abandonment of the defect would be possible."99 In L.A. Tucker Truck Lines, the Supreme Court upheld the Interstate Commerce Commission's jurisdiction over a case heard by an invalidly appointed examiner. The Wiechert majority stated its belief that "the present case is governed by analogous considerations."100
Judges Almond and Smith in separate opinions agreed that:

[i]f the "board" panel could not . . . [render a valid decision on behalf of the "Board of Appeals"] because of its illegal composition, this court would lack jurisdiction of the subject matter under the statute.101

They disagreed, however, on the legality of the composition of the board, Judge Almond finding it to have been legal and therefore concurring with the majority and Judge Smith finding it to have been illegal and therefore voting to dismiss the appeal.

The dissenting judges would seem to be on firm ground in arguing that no acts of the parties, including their express agreement that the court did have jurisdiction over the appeal, can confer jurisdiction on the court and that the court should always be ready to dismiss an appeal for want of jurisdiction, notwithstanding the parties' failure to raise the question either below or on appeal.102 It should not be forgotten, however, that the majority did intimate a view on the validity of the board's decision despite its contention that the matter was not properly before it. The majority indicated that an invalid appointment would not render the board's decision nugatory. Thus, even the majority probably would not have been prepared to render an opinion in an appeal to it from, say, the decision of a board of arbitrators, chosen by the parties to arbitrate an expected interference before either one had filed his application, whether or not either party challenged the court's jurisdiction.

The above example, while absurd, even outrageous, is given to emphasize that the case before the CCPA in Wiechert was neither absurd nor outrageous. In fact, the two CCPA judges who reached the issue split as to the board's legality, and the Court of Appeals for the District of Columbia Circuit, when later presented with the same issue in an action brought under the Administrative Procedure Act, held the board to have been legally constituted.103 Thus, Weichert might not be followed in a more egregious case. For example, an attempt by the Commissioner to appoint a panel consisting of three acting Examiners-in-Chief, all three of the grade of Primary Examiner, would be so clearly contrary to any conceivably tenable interpretation of 35 U.S.C. § 7104 that the court might well ignore the Wiechert doctrine.

Furthermore, Judge Smith's dissent contrasts the majority's reliance on a case involving the invalid appointment of a hearing examiner with his own reliance on cases involving the invalid appointment of judges, particularly panels of judges, arguing that the court should have "look[ed] for guidance" to cases involving the latter rather than the former because the members of the Board of Appeals, like federal judges, are appointed by the President, with the advice and consent of the Senate.105 However, flattering as the analogy must have been to the career staff at the Patent Office, it seems unlikely to convince most judges. There is a mystique surrounding the appointment of judges (apparent, at least, to other judges) which is simply not present with respect to the appointment of quasi-judicial, administrative officers, no matter how August their position or carefully considered their appointment. Thus, it may be predicted that courts (including the CCPA) will be more willing to overlook minor irregularities in the appointment of the latter than in the appointment of the former and that they may even be willing to stretch a point to avoid calling them irregularities at all.106

When Is The Commission Not the Commissioner?
Delegation Within the Patent Office and Exercise by the Commissioner of the Jurisdiction of One of the Board

As previously indicated,107 the Commissioner can delegate some of his authority to decide either petitionable or appealable matters to the three quasi-judicial boards in the Patent Office.108 Similarly, the Commissioner's power to delegate to others in the executive branch of the Patent Office his quasi-judicial authority to decide either petitionable or appealable matters seem so firmly established--and so necessary for the proper management of an enterprise as large as the Patent Office--as to have become indisputable.109 Thus, in one sense it would seem that the "Commissioner" is whoever the Commissioner (or his delegate) says he is, providing that the individual or all the members or the tribunal to whom the authority is delegated are at all relevant times employed by the Patent Office.110

Two cases involving Patent Office Rule 56,111 however, present an interesting variant of this problem. In Vandenberg v. Reynolds,112the CCPA held that the question of whether an application should have been stricken from the files for having been altered after being executed was a question ancillary to priority. But, faced with a series of cases in which the Commissioner had decided whether or not to strike applications on this ground, the CCPA held that "[t]he decision of that question [i.e., whether or not to strike the application] must be made in the first instance by the Commissioner."113 Similarly, in Norton v. Curtiss114the court held that the question of whether an application should have been stricken from the files as tainted with fraud was a question ancillary to priority which should be decided "in the first instance" by the Commissioner.115 Nevertheless, the court in both instances reviewed the Commissioner's decision.116

Where did the court get this authority to review decisions of the Commissioner in patent cases, authority which it had specifically disavowed in Sundback?117 In James,118Judge Rich, author of the court's opinion in both Vandenberg v. Reynolds cases, explained that the court had "reviewed the Commissioner's decision [in Vandenberg] because we regarded it as ancillary to priority."119 While that explains why Patent Office decisions whether to strike an application under Rule 56 are reviewable in the CCPA, it does not explain why, in the Patent Office, they should be made "in the first instance" by the Commissioner rather than by the Board of Patent Interferences.120 Certainly 28 U.S.C. § 1542121 does not hint at any such power. A better solution, in this writer's opinion, would have been to have held that questions of whether or not to strike applications under Rule 56 should be decided "in the first instance" by the Board of Patent Interferences, because ancillary to priority.122 The CCPA's jurisdiction over appeals from that decision would then follow in the normal course, whereas at present it constitutes an anomaly inexplicable in terms of the court's statutory jurisdiction.

Conclusions

The traditional separation of Patent Office decisions into "petitionable" decisions, reviewable only in the federal district courts, and "appealable" decisions, reviewable in either the CCPA or the courts of the District of Columbia, leads to some unique and highly perplexing problems of jurisdiction. The CCPA has certainly not solved all the problems inherent in the divided review structure, nor are even its recent pronouncements on the subject easily reconcilable. However, the cases discussed in the body of this article do offer the basis for making a few predictions.

First, tradition is of enormous importance in this field, and the CCPA is likely to tolerate a few intellectual anomalies rather than depart from established practices concerning routine and recurring problems of jurisdiction. Second, if the problem is one of novel impression, the CCPA is likely to find jurisdiction if the challenged Patent Office decision required expertise in statutory patent or trademark law, was made by an entity from which appeals may be taken in that kind of case, and was made in the course of a clearly appealable decision. Third, the more "procedural" the decision and the more connected with the legitimate interest of the Patent Office in self regulation, free of outside interference, the less likely the CCPA is to review the Patent Office decision or to give the appellant relief if it does. Fourth, if the issue is "properly presented," the court will probably hold that an otherwise appealable Patent Office decision made by the wrong board or by the Commissioner, although within the statutory jurisdiction of one of the boards, was therefore void and unreviewable by the CCPA. Similarly, the court will probably hold that an otherwise appealable decision made by an illegally constituted board or panel of a board, or by a purported delegate of the Commissioner who is for some reason not a proper repository for a delegation of the Commissioner's authority, was therefore void and unreviewable by the CCPA. However, the court will probably continue to display great reluctance to find these issues to have been properly presented. Beyond these, we must simply wait for developments.

Reprinted with permission. Previously published in the Journal of Patent Office Society (1973) volume 55, pages 184-202, and the George Washington Law Review (1972), volume 416.

*.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 indebtted to Professor Dunner and to Professor Robert E. Park, also of the National Law Center, for their suggestion for improvements in the first draft.


Endnotes


[61].In re Marriott-Hot Shoppes, 411 F.2d 1025, 162 U.S.P.Q. 106 (C.C.P.A. 1969). See also Myers v. Feigelman, 455 F.2d 596, 172 USPQ 580 (C.C.P.A. 1972).

[62].47 F.2d 378, 8 U.S.P.Q. 220 (C.C.P.A. 1931).

[63]Section 4904 of the Revised Statutes, the relevant portion of which is substantively identical to the first sentence of the present 35 U.S.C. § 135(a), which states:

Whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof to the applicants, or applicant and patentee, as the case may be.

[64].47 F.2d at 380, 8 U.S.P.Q. at 222.

[65].48 F.2d 938, 9 U.S.P.Q. 421 (C.C.P.A. 1931). See also Tenney v Nordmeyer, 94 F.2d 396, 36 U.S.P.Q. 346 (C.C.P.A. 1935) and the strange case of Spatafora v. Zaiger, 69 F.2d 118, 20 U.S.P.Q. 316 (C.C.P.A. 1934) (dissolution of three-way interference as to one party on the ground that he "was not the first inventor" held not appealable). Spatafora seems to extend Sunback unreasonably. Even assuming that only the Commissioner and his delegates have authority to dissolve an interference on grounds unrelated to priority (such as unpatentability of the subject matter in view of the prior art, the ground in Sunback), an assumption which now seems questionable as a matter of substantive law, see note 81 infra and accompanying text, the board's action in Spatafora was, in essence, a determination of non-priority and should have been appealable as such.

[66].432 F.2d 473, 167 U.S.P.Q. 403 (C.C.P.A. 1970), discussed in Pat. L. Persp. § A.12-1 (1970 Dev.).

[67].Rule 192 (b) of the Rules of Practice in Patent Cases, 37 C.F.R § 1.192(b) (1971) provides that "[o]n failure to file the brief, accompanied by the requisite fee, within the time allowed, the appeal shall stand dismissed."

[68].432 F.2d at 476, 167 U.S.P.Q. at 405.

[69].Id. at 477, 167 U.S.P.Q. at 406. See 35 U.S.C. § 6 (1970).

[70].432 F.2d at 477, 167 U.S.P.Q. at 406.

[71].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.).

[72].422 F.2d at 435, 164 U.S.P.Q. at 626.

[73].In Pat. L. Persp. § A.12-1 to -4 (1970 Dev.), Messrs. Dunner, Gambrell, and Kayton approved the result in James but not the rationale by which the majority reached it. It was their view that "the only decisions of the board which the CCPA can review are those the board is capable of making, viz., decisions based on the board's review of 'adverse decisions of examiners upon application for patents'," from which it would seem to follow that the CCPA can review an examiner's adverse decision which is based on a rule and which has been sustained by the board, but not an adverse decision based on a rule when the decision is made by the board for the first time. This certainly distinguishes Searles from James, but also, in this writer's opinion, leads to a rather anomalous distinction between rules which may be applied by the examiner or the board and rules applicable only to appellate practice within the Patent Office.

[74].See, e.g., In re Moore, 444 F.2d 572, 574-75, 170 U.S.P.Q. 260, 263 (1971); In re Wiechert, 370 F.2d 927, 933, 152 U.S.P.Q. 247, 251-52 (C.C.P.A. 1967). See also the discussion of Vandenberg and Norton, note 108 and text accompanying notes 114-22 infra, and especially Myers v. Feigelman, 455 F.2d 596, 172 USPQ 580 (CCPA 1972), in which the court, per Judge Rich, reviewed an application of the Rules of Practise at great length.

[75].The standard textbook in this field defines a question ancillary to priority as "a question which, if decided in favor of the party raising the question, would necessarily result in a judgment against his opponent." II Rivise & Caesar, Interference Law and Practice § 251 (1943). However, motions to shift the burden of proof and to alter the burden of proof (from preponderance of the evidence to beyond a reasonable doubt and vice versa) have been held to be ancillary to priority although neither is necessarily dispositive of the controversy, and motions to dissolve the interference on the ground that the count is unpatentable over prior art available against one party but not against the other have been held to be non-ancillary although such a holding would be dispositive of the controversy. The truth is that here again precedent is more important than logic. See also Rion v. Ault, 455 F.2d 570, 574 n.5, 172 USPQ 588, 590 n.5 (CCPA 1972), where the court stated:

In Myers v. Feigelman, decided herewith , [455 F.2d 596, 172 USPQ 580 (CCPA 1972)], we point out that certain issues are within the jurisdiction of both the Board of Patent Interferences and this court on therefrom though not, strictly speaking, either questions of priority or questions "ancillary" to priority.

The issues referred to are those "logically related to priority", for a discussion of which see fn.50-60 supra and related text.

[76].This distinction is carried forward into 35 U.S.C. § 141 (1970):

An applicant dissatisfied with the decision of the Board of Appeals may appeal to the United States Court of Customs and Patent Appeals. . . . A party to an interference dissatisfied with the decision of the Board of Patent Interferences on the question of priority may appeal to the United States Court of Customs and Patent Appeals. . . .

Id. (emphasis added).

On its face, 35 U.S.C. § 141 seems to indicate that the jurisdiction of the CCPA in appeals from the Board of Appeals is broader than its jurisdiction in appeals from the Board of Patent Interferences, since the latter is limited to "the question of priority" and the former is not limited to "the question of patentability." This distinction, however, apparently failed to persuade the majority in In re James, 432 F.2d 473, 478 n.2, 167 U.S.P.Q. 403, 407 n.2 (C.C.P.A. 1970) (dissenting opinion by Judge Rich). See also note 9 supra.

[77].170 U.S.P.Q. 149 (Pat. Off. Bd. Intf. 1971), discussed in Pat. L. Persp. § C.1[4]-1 to -5 (1971 Dev.).

[78].170 U.S.P.Q. at 152-53. Traditionally, the question of whether two applications or an application and a patent "interfere in fact" has been treated as a question of whether "a different invention [is] being claimed" in the two. See, e.g., Brailsford v. Lavet, 318 F.2d 942, 945-46, 138 U.S.P.Q. 28, 31-32 (C.C.P.A. 1963). Moore treated a question of whether the second of two separate inventions was obvious in view of the first as a question of interference in fact. See also Rion v. Ault, 455 F.2d 570, 172 USPQ 588 (C.C.P.A. 1972).

[79].Cf. Rule 231(a)(1) of the Rules of Practice in Patent Cases, 37 C.F.R. § 1.231 (1971), which reads in relevant part:

A motion to dissolve on the ground that there is no interference in fact will not be considered unless the interference involves a design or plant patent or application or unless it relates to a count which differs from the corresponding claim of an involved patent or one or more of the involved applications as provided in rules 203 (a) and 205 (a).

Rules 203 (a) and 205 (a) provide for "modified" and "phantom" interference counts. See generally Modance, "Modified" Interference Practice and "Phantom Counts", 52 J.P.O.S. 207 (1970).

[80].318 F.2d 942, 138 U.S.P.Q. 28 (C.C.P.A. 1963).

[81].The court also did not question the propriety of its reviewing (and reversing) the Patent Office decision that the parties' claims did in fact interfere in view of its holding in Sundback v. Blair, 47 F.2d 378, 8 U.S.P.Q. 220 (C.C.P.A. 1931), discussed in text accompanying notes 60-65 supra, that authority to dissolve interferences is vested solely in the Commissioner and that decisions of the Commissioner or his delegate on this issue are not appealable, and in Rion v. Ault81a the court specifically held that "both have jurisdiction over that issue.81b

81a 455 F.2d 570, 172 USPQ 588 (CCPA 1972).
81b 455 F.2d at 574, 172 USPQ at 590.

[82].Double Patenting, 834 O.G. 1615 (1967), quoted in relevant part in 170 U.S.P.Q. 150 (1971).

[83].318 F.2d at 945-46, 138 U.S.P.Q. at 31-32 (footnote omitted).

[84].170 U.S.P.Q. at 152.

[85].The question was not, it should be noted, the patentability of Moore's claims over the McGrew reference, since Moore presumably could have antedated that. See generally Turner, Is Prior Invention by Another a Proper Basis for Ex Parte Rejection Under 35 USC 102(g), and Further, Is It Part of the Prior Art Under 35 USC 103?, 52 J.P.O.S. 802 (1970).

[86].See e.g., In re Ziegler, 363 F.2d 885, 888, 150 U.S.P.Q. 551, 554 (C.C.P.A. 1966); Tolle v. Starkey, 255 F.2d 935, 936, 118 U.S.P.Q. 292, 294 (C.C.P.A. 1958) ; Modance, "Modified" Interference Practice and "Phantom Counts", 52 J.P.O.S. 207 (1970). Mr. Modance is the author of the opinion in Moore.

[87].170 U.S.P.Q. at 154-55.

[88].The interference law aspects of this case are discussed in Pat. L. Persp. § C.1[4]-1 to -5 (1971 Dev.), which approves the board's innovative action.

[89].See text accompanying notes 60-74 supra and 107 110 infra.

[90].But c.f. In re Trier, 163 F.2d 575, 75 U.S.P.Q. 80 (C.C.P.A. 1947), in which a rejection of a claim on the ground of misjoinder of invention was challenged on the ground that the examiner should not have made a rejection on that ground without first having submitted the matter to the examiner of classification. The court turned that challenge aside by saying that "[t]he question involved is merely one of Patent Office practice." Id. at 577, 75 U.S.P.Q. at 82.

Moore also raises an interesting jurisdictional question of Constitutional dimensions. While Moore and McGrew were nominally separate parties in the "interference proceeding" and were represented before the board by different attorneys, it seems obvious that it was essentially a "friendly suit" as far is Moore and McGrew were concerned. See 170 U.S.P.Q. at 150-51. Thus, there was probably no "controversy" in the Constitutional sense between Moore and McGrew, both of whom agreed that there was no interference in fact between their respective claims, and it would seem that, if the case is appealable to the CCPA at all, it is appealable as In re Moore (read, Moore v. Commissioner of Patents) rather than as Moore v. McGrew, in order to reflect the true status of the parties. But See Derby v. Whitworth, 62 F.2d 368, 16 U.S.P.Q. 85 (C.C.P.A. 1932), which holds that

it is not necessary that in interference proceeding, to be valid, shall constitute a "case" or "controversy" within the meaning of said terms as used in section 2 of Article III of the Constitution of the United States . . . [because] the tribunals of the Patent Office are not courts; they are purely administrative bodies, and the provisions of said section 2 of Article III of the Constitution have no reference to administrative tribunals.

Id. at 371, 16 U.S.P.Q. at 88. However, the court was expressly referring only to interference proceedings in the Patent Office, concerning which its statement would no doubt still be true, and, to the extent that its statement implicitly applied to the court itself (the cause which one party urged not to be a "case" or "controversy" in the Constitutional sense then being under review by the court), it would seem to be clearly overruled by Glidden Co. v. Zdanok, 370 U.S. 530 (1962).

[91].370 F. 2d 927, 152 U.S.P.Q. 247 (C.C.P.A. 1967). See also In re Marriott-Hot Shoppes, Inc., 411 F.2d 1025, 162 U.S.P.Q. 106 (C.C.P.A. 1969), in which the legitimacy of disposition of ex parte trademark cases by panels of the Trademark Trial and Appeal Board was questioned but not decided and Knickerbocker Toy Co. v. Faultless Starch Co., ___F.2d___, 175 USPQ 417, 420 n.8 (CCPA 1972), in which the legitimacy of a decision by a panel consisting of less than three members of the Trademark Trial and Appeal Board was questioned sua sponte but not squarely decided.

[92].This doctrine is, of course, contrary to the generally accepted rule that a court "is obligated to notice want of jurisdiction on its own motion." Wright, Law of Federal Courts § 7 (2d ed. 1970).

92a In Knickerbocker Toy Co. v. Faultless Starch Co.,__F.2d__, 175 USPQ 417, 420 n.8 (CCPA 1972), which involved the question of whether the decision appealed from had been made by a panel of three members of the Trademark Trial and Appeal Board or by a single member thereof, the court employed a similar stratagem, indicating that, in the absence of proof to the contrary, it would presume that the proper number of members of the board had participated in the decision. This question could become very relevant, for instance, where the two members of a panel hearing an inter partes case remaining after the death, retirement of the third member reversed the decision of the original, three-member panel on a petition for reconsideration.

[93].The Board of Appeals consists of the Commissioner of Patents, the assistant commissioners, and individuals denominated "examiners in-chief." 35 U.S.C. § 7 (1970). The Commissioner and the assistant commissioners seldom sit, and most ex parte patent appeals are heard by three-member panels consisting of examiners-in chief and acting examiners-in-chief. The acting examiners-in-chief are designated by the Commissioners from the upper levels of the examining corps. See note 94 infra.

[94].Paragraph 2 of 35 U.S.C. § 7, so far as it is relevant here, read then as now:

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 exceed-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.

[95].Three judges of the five, including a senior district judge sitting by designation, agreed on this point.

[96].Reasons of appeal are required in patent cases by 35 U.S.C. § 142 and in trademark cases by 15 U.S.C. § 1071 (a) (2). On this point, see In re LePage's Inc., 312 F.2d 455, 136 U.S.P.Q. 170 (C.C.P.A. 1963).

[97].Judge Rich, the author of the opinion in Wiechert, may have somewhat receded from the third ground in a subsequent case, In re Marriott-Hot Shoppes, Inc., 411 F.2d 1025, 162 U.S.P.Q. 106 (C.C.P.A. 1969), in which, speaking for a unanimous court, he indicated that the court "might be able to reach that question [i.e., the legality of the disposition of ex parte trademark cases by panels of the Trademark Trial and Appeal Board], if properly raised, in an appeal to us from one or more board decisions on the merits of the applications [three applications were involved in the one appeal]." Id. at 1029, 162 U.S.P.Q. at 110. In contrast to his position in Wiechert, in Marriott-Hot Shoppes Judge Rich did not suggest that the board would have to expressly decide that it was legally constituted before the court would consider the issue.

[98].344 U.S. 33 (1952).

[99].370 F.2d n.6, 152 U.S.P.Q. at 253 n.6.

[100].Id.

[101].Id. at 939, 941, 152 U.S.P.Q. at 256, 257.

[102].See, e.g., Wright, Law of Federal Courts (2d ed. 1970), wherein it is stated of all federal courts that

the parties cannot confer on a federal court jurisdiction that has not been vested in the court by the Constitution and Congress. The parties cannot waive lack of jurisdiction, whether by express consent, or by conduct, nor yet even by estoppel. The court, whether trial or appellate, is obliged to notice want of jurisdiction on its own motion. . . .

Id. § 7 (footnotes omitted).

[103].Lindberg v. Brenner, 399 F.2d 990, 158 U.S.P.Q. 380 (D.C. Cir. 1968).

[104].35 U.S.C. § 7 is quoted in relevant part, supra note 94.

[105].370 F.2d at 947, 152 U.S.P.Q. at 262-63.

[106].It is interesting to note that "the Wiechert problem" may some day be raised concerning the CCPA itself. 28 U.S.C. § 215 (1970) provides that "three judges of the Court of Customs and Patent Appeals constitute a quorum. The concurrence of three judges is necessary to any decision." 28 U.S.C. §§ 291(b), 292(d), 293(a), and 293(d) then set forth, respectively, the conditions under which a circuit judge, a district judge, a judge of the Court of Claims, and a judge of the Customs Court may be designated to serve temporarily "as a judge" of the CCPA. Clearly, a decision concurred in by two judges of the Court of Customs and Patent Appeals and one designee is valid, since they would all be "judges," but would a "Court of Customs and Patent Appeals" consisting of two regular judges of that court and three designates be legally constituted? The policy considerations--and the precedents--set forth in Judge Smith's dissent in Wiechert would seem to be peculiarly relevant to his situation. 370 F.2d at 940, 152 USPQ at 257.

[107].See text accompanying notes 60-74 supra.

[108].In re Beatrice Foods Co., 429 F.2d 466, 166 U.S.P.Q. 431 (C.C.P.A. 1970) (delegation to the Trademark Trial and Appeal Board of authority to decide an appealable matter; manner of delegation not stated) ; Norton v. Curtiss, 433 F.2d 779, 783 n.5, 167 U.S.P.Q. 532, 536, n.5 (C.C.P.A. 1970) (delegation to the Board of Patent Interferences of authority to decide an-appealable matter; delegation effected by the assistant Commissioner in the text of an opinion on a petition to the Commissioner); Sundback v. Blair, 47 F.2d 378, 8 U.S.P.Q. 220 (C.C.P.A. 1931) (delegation to the Board of Appeals of authority to decide a petitionable matter; delegation effected by Patent Office Rule). The opinions in Sundback and Beatrice Foods do not comment on the propriety of the delegation, but the above-cited footnote in Norton states specifically that "[w]e find no problem with such delegation."

[109].In re Dickenson, 299 F.2d 954, 957-58, 133 U.S.P.Q. 39, 43 (C.C.P.A. 1962) (this principle said to be "basic and non-controversial"). McCrady § 224. See 35 U.S.C. § 3 (1970).

[110].Cf. American Wood-Paper Co. v. Glen's Falls Paper Co., 1 F. Cas. 734 (No. 321a) (C.C.N.D.N.Y. 1871) (decision by a former acting commissioner who had been legislated out of office as such, although he continued to be an employee of the Patent Office, just prior to his action).

[111].Improper applications. Any application signed or sworn to in blank, or without actual inspection by the applicant, and any application altered or partly filled in after being signed or sworn to, and also any application fraudulently filed or in connection with which any fraud is practiced or attempted on the Patent Office, may be stricken from the files.
Rules of Practice in Patent Cases, Rule 56, 37 C.F.R. § 1.56 (1971).

[112].242 F.2d 761, 113 U.S.P.Q. 275 (C.C.P.A. 1957).

[113].Id. at 765, 113 U.S.P.Q. at 278.

[114].433 F.2d 779, 167 U.S.P.Q. 532 (C.C.P.A. 1970).

[115].Id. at 783 n.5, 167 U.S.P.Q. at 536 n.5.

[116].In Vandenberg the review came two years later, after "the Commissioner" (actually, the First Assistant Commissioner) had decided the question on remand. 268 F.2d 744, 122 U.S.P.Q. 381 (C.C.P.A. 1959). In Norton the review was immediate, the court having decided that the Commissioner had effectively delegated his authority in this respect to the Board of Patent Interferences and that the board had already made the decision "in the first instance."

[117].See text accompanying note 64 supra.

[118].432 F.2d 473, 167 U.S.P.Q. 403 (C.C.P.A. 1970).

[119].Id. at 477 n.1, 167 U.S.P.Q. at 406 n.1 (dissenting opinion).

[120].The rule that whether or not applications should be stricken under Rule 56 must be decided "in the first instance" by the Commissioner is criticized on much the same grounds in Pat. L. Persp. § A.126 to -7 (1970 Dev.).

[121].Quoted in text accompanying note 4 supra.

[122].It may be noted in this connection that the words of Rule 56, quoted in note 111 supra, by no means compel the conclusion that the decision to strike is to be made by the Commissioner rather than by other Patent Office officials. Moreover, even if the Rule were changed to state expressly that the decision was to be made only by the Commissioner, that portion of the Rule might be held invalid because "inconsistent with law," 35 U.S.C. § 6 (1970). This would presumably follow if the CCPA were to hold that the question of whether to strike an application under the Rule 56 could be decided either (1) by the Board of Patent Interferences (if the grounds for striking were discovered in inter partes practice) because ancillary to priority or (2) by the examiner or the Board of Appeals (if the grounds for striking were discovered in ex parte practice) because "logically related" to patentability. See In re Dickenson, 299 F.2d 954, 958, 133 U.S.P.Q. 39, 43 (C.C.P.A. 1962) ("in performing his [quasi-judicial] duties, the commissioner cannot usurp the functions or impinge upon the jurisdiction of the Board of Patent Interferences"). However, it must be confessed that the thrust of both of the above suggestions is directly contrary to the majority's position in In re James, discussed in text accompanying notes 66-74 supra. This is so because there is no statutory authority for Rule 56 other than 35 U.S.C. § 6. Thus, any action taken in accordance therewith could be said to be "only under authority of the rules" and therefore not automatically appealable.