Board Of Appeals Jurisdiction Over Appeals From Decisions By Primary Examiners Refusing To Institute Interferences On Modified Or Phantom Counts

According to 35 USC 134, "An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Appeals, having once paid the fee for such appeal." However, the applicant cannot appeal from every "decision" of the primary examiner, for word "decision" in this context has become a term of art. As Judge Rich wrote in Palisades Pageants, Inc. v. Miss America Pageant,¹

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.²

For a decision of the primary examiner to be appealable to the Board of Appeals and from there (if the Board's decision is also adverse) to the Court of Appeals for the Federal Circuit, it must have been a decision which the court is willing to characterize as "appealable" rather than as "petitionable."³

Unfortunately, "the dividing line between the two [i.e., between decisions which are appealable and decisions which are petitionable] is often a blurry one." In re Searles.⁴ In the past several years four separate tests were enunciated by the Court of Customs and Patent Appeals in an attempt to clarify the distinction between appealable and petitionable decisions. In In re Searles, supra, an arguably petitionable decision was held to have been appealable instead because it had "required the exercise of technical skill and legal judgment."⁵ In re James,⁶ on the other hand, held a decision dismissing the appellant's appeal to the Board of Appeals to have been petitionable rather than appealable because it was based solely on a Patent Office rule, rather than on a statute.⁷ In Palisades Pageants, Inc., supra, 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,⁸ and the court subsequently applied this "logically related" standard in finding jurisdiction in, inter alia, Myers v. Feigelman.⁹ Finally, the court enunciated still a fourth test in In re Haas,¹⁰ holding that the propriety of a Marcus-Markush restriction requirement was appealable rather than petitionable because "those claims [i.e., those subject to the Marcus-Markush restriction requirement] were withdrawn from consideration not only in this application but prospectively in any subsequent application because of their content. In effect, there had been a denial of patentability of the claims."¹¹

Decisions by primary examiners refusing to institute interferences¹² have traditionally been said to be petitionable rather than appealable.¹³ However, applying the four tests set forth above to decisions refusing to institute interferences when the applicant has copied a claim in modified form, it will be seen (1) that the decision unquestionably requires "the exercise of technical skill and legal judgment"; (2) that the decision is based ultimately on a statute, 35 USC 135(a) (although it is also based on 37 CFR 1.201(b) and 1.205(a) and section 1101.02 of the MPEP¹⁴); and (3) that the decision is "logically related" to, and, indeed, involves consideration of many of the same factors as the decision whether or not to accept the appellant's 37 CFR 1.131 declaration or declarations,¹⁵ review of which clearly is within the jurisdiction of the Board of Appeals. While it is true that a decision to accept an appellant's 37 CFR 1.131 declaration(s) but to refuse to institute the interference would not be "a denial of patentability of . . . [appellant's] claims," since the appellant would then obtain a patent dominating the earlier patent, there is nothing in the Haas opinion to suggest that its test was meant to supersede the tests stated in Searles and Palisades Pageants.

In any event, there is still another, more recent opinion which strongly suggests that decisions by primary examiners refusing to institute interferences are henceforth to be appealable rather than petitionable. That opinion is Hester v. Allgeier.¹⁶ It involved the question of whether the primary examiner's decision to add a species count to an interference originally declared on a genus count was appealable or petitionable. The Board of Patent Interferences had refused to review the examiner's decision to add the second count on the ground that the examiner's decision was petitionable, not appealable, and it had awarded priority on that count without regard to the question of whether or not it should have been in the interference in the first place. The Court of Customs and Patent Appeals reversed and remanded, reasoning as follows:

The ultimate issue is whether the Board properly awarded priority on count 2 to Allgeier. However, the threshold issue, which has been variously characterized by the PTO and the parties, is whether species count 2 is patentably distinct from genus count 1.***[T]he board avoided the threshold issue. However, somewhat anomalously, it also said:

A significant function of an interference proceeding is to insure that "only one patent should issue for one inventive concept." Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 at 489 (CCPA 1977). Thus, in an interference between two applications, no two counts should be included which might result in a violation of this principle, i.e., a split award where two patents could issue to two different parties involving the same, or essentially the same, subject matter. Becker v. Patrick, 47 USPQ 314 (Comm'r. Pat. 1939). As is clear from Aelony, the test to apply is whether the counts are patentably distinct from each other.

In Aelony, supra at 569-70, 192 USPQ at 489-90, this court held that a particular threshold issue of "interference-in-fact" was ancillary to priority. The issue involved whether two sets of claims were patentably distinct. Citing Nitz v. Ehrenreich, 537 F.2d 539, 190 USPQ 413 (CCPA 1976), Brailsford v. Lavet, 50 CCPA 1367, 318 F.2d 942, 138 USPQ 28 (1963), and McCabe v. Cramblet, 20 CCPA 1220, 65 F.2d 459, 18 USPQ 71 (1933), the court declared "there is ample precedent from this court for framing the test of interference in fact in terms of whether two sets of claims are patentably distinct from each other." Thus, it appears that the threshold issue in Aelony and the threshold issue here, i.e., whether species count 2 is patentably distinct from genus count 1, are essentially the same. That a patentable distinctness issue is ancillary to priority if it arises in connection with an "interference-in-fact" question, but is not ancillary to priority if it arises in connection with adding a count would appear to be without justification and would simply elevate form over substance. As this court pointed out in Aelony, supra at 569, 192 USPQ at 489, which quoted from Nitz v. Ehrenreich, supra at 543, 190 USPQ at 416, the test of whether an issue is ancillary to priority is whether determination of that issue is so logically related to the issue of priority that an award of priority would depend on determination of that issue. That is true with respect to the threshold issue here. If the counts are patentably distinct, the issue of priority must be resolved by the board; if they are not patentably distinct, count 2 is not properly in interference, and the issue of priority with respect to it is moot. Accordingly, we hold that the issue of whether species count 2 is patentably distinct from genus count 1, although arising from the addition of count 2, is ancillary to priority.¹⁷

Although a decision by a primary examiner refusing to institute an interference on a modified or phantom count is, by definition, made before rather than after declaration of the interference, the logic of the court in Hester v. Allgeier is equally compelling and directly relevant in the situation discussed here.

A significant function of interference proceedings is to insure that only one patent issues for one inventive concept. In the situation discussed, it is the appellant's position that the patentee's claim and the appellant's claim copied from the patent in modified form define only a single inventive concept. The examiner, however, has decided that the two claims are patentably distinct, and the issue which the appellant seeks to have resolved on appeal is whether that decision by the examiner was correct.¹⁸ That issue arises in a different procedural context than was present in Hester v. Allgeier, but, as the court said in that case:

That a patentable distinctness issue is ancillary to priority [i.e., appealable to the Board of Patent Interferences] if it arises in connection with an "intereference-in fact" question, but is not ancillary to priority if it arises in connection with adding a count would appear to be without justification and would simply elevate form over substance.¹⁹

The situation under discussion here is one step removed from Hester v. Allgeier, just as Hester v. Allgeier was one step removed from Aelony v. Arni. In Hester v. Allgeier, the question was whether two claims which were present in each party's case were patentably distinct from each other, while here the question is whether a claim in a patent is patentably distinct from a corresponding, but broader claim in the appellant's application. However, the fundamental question in all three cases is whether one claim or group of claims is or are patentably distinct from another claim or group of claims. If the appellant/applicant's claim is not patentably distinct from the patentee's claim, then the issue of priority should be resolved in an interference proceeding. If, however, the appellant/applicant's claim is patentably distinct from the patentee's claim, then the issue of priority between those claims is moot.

In closing, it should be noted that a number of courts have held that "The Commissioner of Patents has a very wide discretion in instituting or refusing to institute interference proceedings, and the courts will not intervene to control the manner in which he exercises his discretion." Rivise & Caesar, Interference Law and Practice, §9, "Commissioner's Discretion in Deciding Interferences."²⁰ The cases discussed by Rivise & Caeser, however, are not inconsistent with the thesis of this comment. They involved attempts to compel the Commissioner by mandamus to declare inteferences. In such proceedings there is, of course, a very high presumption of administrative correctness.²¹ None of these cases, however, involved the question of whether a decision by a primary examiner refusing to institute an inteference on a modified or phantom count should be appealable to the Board of Appeals under 35 USC 134 rather than petitionable to the Deputy Assistant Commissioner for Patents pursuant to MPEP §1002.02(b)(3). If such a decision by a primary examiner is appealable rather than petitionable, then it should be subject to no less searching a review than any other type of decision by primary examiners which is reviewed by the Board of Appeals.

First published in the Journal of the Patent Office Society, volume 64 (1982), pages 651-55.

*.Oblon, Fisher, Spivak, McClelland & Maier, P.C., Arlington, Virginia.

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Endnotes

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[1].58 CCPA 1225, 442 F.2d 1385, 169 USPQ 790 (1971), cert. den., 404 U.S. 938, 171 USPQ 641 (1971).

[2].58 CCPA at 1228; 442 F.2d at 1387, 169 USPQ at 792.

[3].See generally, Gholz, Patent and Trademark Jurisdiction of the Court of Customs and Patent Appeals, 40 Geo. Wash. L. Rev. 416, 420-27 (1972), 55 JPOS 69, 74-85 (1973), which discusses the distinction in the context of the jurisdiction of the Court of Customs and Patent Appeals.

[4].57 CCPA at 912, 916, 422 F.2d 431, 435, 164 USPQ 623, 626 (1970).

[5].57 CCPA at 917, 442 F.2d at 435, 164 USPQ at 626.

[6].57 CCPA 1371, 432 F.2d 473, 167 USPQ 403 (1970).

[7].The decision in James appears to have been overruled sub silentio in Chesebrough-Pond's Inc. v. Faberge, Inc., 618 F.2d 776, 205 USPQ 888 (CCPA 1980). The James opinion was delivered by Judge Baldwin, and Judge Rich dissented vigorously. In Chesebrough-Pond's, Judge Rich in effect converted his dissent in James into the unanimous opinion of the court (including Judge Baldwin). In the later case, the Trademark Trial and Appeal Board's decision dismissing Chesebrough's counterclaim was based solely on 37 CFR 2.127(a). Nevertheless, the court held the decision to have been appealable rather than petitionable, reasoning as follows:

While it is true that the decision below resulted from application of TTAB rules, its effect is nonetheless substantive since it finally decides Chesebrough's right to assert its counterclaim. We are mindful of the fact that the dividing line between petitionable and appealable matter can be and often is drawn between procedural and substantive decisions. To do so in this situation would, however, exalt form over substance. Even though the TTAB decision was based on a procedural rule, it finally disposed of an asserted right. 618 F.2d at 780; 205 USPQ at 891; footnote omitted.

[8].58 CCPA at 1228, 442 F.2d at 1388, 167 USPQ at 791.

[9].59 CCPA 854, 455 F.2d 596, 172 USPQ 580 (1972).

[10].486 F.2d 1053, 179 USPQ 625 (CCPA 1973).

[11].486 F.2d at 1056, 179 USPQ at 625.

[12].Although interferences are formally instituted by the Board of Patent Interferences, it is clear that the substantive decision whether or not to institute an interference is made by the primary examiner. Compare 37 CFR 1.207(a) ("When an interference is found to exist . . . , the primary examiner shall forward the files to the Board of Patent Interferences . . .") with 37 CFR 1.207(b) ("A patent interference examiner will institute and declare the interference . . ."), and see sections 1102.01 and 1102.01(a) of the MPEP. With particular reference to situations where the applicant has copied a claim in modified form, it is also clear from section 1101.02 of the MPEP that the initial decision whether or not an interference should be instituted on a modified or phantom count is to be made by the primary examiner, subject to inter partes review (if the primary examiner's initial decision is favorable) by way of a 37 CFR 1.231(a)(1) motion to dissolve on the ground of no-interference-in-fact. See Nitz v. Ehrenreich, 537 F.2d 539, 190 USPQ 413 (CCPA 1976).

[13].Such petitions have been directed to the Assistant Commissioner for Patents pursuant to §1002.02(b)(3) of the Manual of Patent Examining Procedures.

[14].Moreover, as previously noted, the James test is inconsistent with and apparently overruled by Chesebrough-Pond's in any event.

[15].Where an applicant has copied claims in modified form from a patent having an earlier effective filing date, the same declarations may be filed under 37 CFR 1.131 and 37 CFR 1.204(c) in an effort to remove the patent as a reference by the alternative techniques of antedating the filing date of the patent under 37 CFR 1.131 or provoking an interference on a modified or phantom count. Which technique is successful (assuming that the declarations are found adequate on the merits) will depend on whether or not the primary examiner agrees that the limitations omitted or varied from the copied claims are "immaterial limitations." 37 CFR 1.205(a).

[16].646 F.2d 513, 209 USPQ 370 (CCPA 1981). A subsequent Hester v. Allgeier opinion, ____ F.2d _____, 215 USPQ 441 (CCPA 1982, is not relevant to the issues discussed here.

[17].646 F.2d at 521-22, 209 USPQ at 378; footnote omitted. Hester v. Allgeier was reaffirmed and extended (albeit in directions not relevant here) in Stoudt v. Guggenheim, 651 F.2d 760, 210 USPQ 359 (CCPA 1981), and Hester v. Allgeier, ___F.2d ___, 215 USPQ 441 (CCPA 1982).

[18].An ex parte decision favorable to the appellant would, of course, be subject to reconsideration inter partes in the event that the patentee moved to dissolve the ensuing interference on the ground of no-interference-in-fact, just as ex parte decisions by the Board of Appeals on first paragraph of 35 USC 112 issues are subject to reconsideration inter partes in the event that a party to the interference which was not before the Board of Appeals moves to dissolve on that ground. See generally Sze v. Bloch, 59 CCPA 983, 987, 458 F.2d 137, 140-41, 173 USPQ 498, 500-01 (1972).

[19].646 F.2d at 521, 209 USPQ at 378.

[20].See also Godtfredson v. Banner, 503 F. Supp. 642, 646 n.7, 209 USPQ 202, 207 n.7 (DDC 1980).

[21].See generally Gholz, Extraordinary Writ Jurisdiction of the CCPA in Patent and Trademark Cases, 58 JPOS 356 (1976), 69 FRD 119 (1976).