*1 Application of Rudolf WIECHERT. Appeal No. 7636.
United States Customs Court Appeals. and Patent
Jan. *2 City, Striker, York for
Michael New S. appellant. C., Washington, Schimmel,
Joseph D. Washington, C., (Jack Armore, D. E. counsel) of Pat- ents." Judge, WORLEY, Chief
Before MARTIN, RICH, SMITH Judges. ALMOND, Judge. RICH, is from the This Appeals affirm- Board Patent Office rejection claims ing the examiner’s 98,026, filed application serial No. 1-3 of “la-Methyl 24, 1961, Ster- March been 25 have 11-18 and oids.” Claims allowed.
Introduction to certain la- invention relates dihydrotestosterones their methyl strong 17-acylates andro possess genic Claim anabolic activities. generic application, compound all 1. A claims the formula: reads: *3 group consisting
wherein X hydrgen selected from the and halo- gen; wherein group consisting and wherein R is selected from the acyl addition, derived wherein phatic from lower ali- the examiner cited the fol- carboxylic acid. lowing patent “to show state of Appealed claims 2 are directed to and 3 art”: that embodiment of invention where- Ringold May 3,032,552 al. [II] et X substituent structural (Filed Apr. 5, 1955) hydrogen formula atom. claim All of the are allowed claims directed Ringold The examiner contended that making compounds, processes for dihydrotestcsterones [I] discloses them, halogen. X wherein is a 1-desalkyl of the com- derivatives rejected appealed claims were Ring- pounds appellant. claimed the examiner under U.S.C. process for old is concerned with [I] standpoint obvious “from the struc- 2-methyl-dihydrotesto- production chemistry” in of a sole refer- tural view *4 compounds sterones and shows ence: starting following as structural formula Ringold 2,908,693 al. Oct. [I] et materials: hydrogen represents the differ lower considered R examiner where alkyl group atoms. than carbon by appellant’s of less properties shown ences claimed that “the examiner stated The compounds merely de “differences of affidavit closely to the so related are gave gree “no of kind” and rather than * * * compounds prior as to be art In weight” to affidavit. affirmative * * *.” obvious Ringold addition, cited examiner affidavit Appellant submitted showing prior art [II] as Langecker1 shows, words which 1-methyl substituent aware that “1-methyl dihydro- examiner, that properties of the would enhance the strong ana- 7.5 times testosterone bolically Ringold “parent compound.” re [II] androgeni- strong times and 7 l-methyl-19-nor-A 4-3- to certain lates Ap- compound.” prior art cally as the ketones, l-methyI-19-nor include su- that the in essence pellant contended 4-androstene-17|3-ol-3-one (1-methyl- A compounds his novel perior properties testosterone), their and the method of re impart patentability thereto preparation. portion particular Papesch, CCPA F.2d Prague and, affidavit, was, Langecker Hedwig 1934 to at time of 1. Dr. professor Ex scientific firm of advisor an associate Schering assignee A.G., Berlin, Germany, Pharmacology Pharma perimental University application at bar. cognosy German Ringold [II],2 presumption come “the of obviousness.” However, purpose, added: states: the board then for the above examiner compound pres- compounds We further note that The novel androgenic set forth in lines 60 to 70 are novel column sent invention [Ringold Ringold having al. reference the anabolic et hormones at least characterizing position in- activity is a isomer of both the testosterone I] enhanced, having compounds stant 17-ol and 17-ester and in some instances androgenic (Empha- nothing persuasive rec- and there is lesser effects. ord to com- ours.) indicate that the instant sis pounds patentable thereover. are affirming board, in the examiner’s [Emphasis ours.] rejection 1-3, claims considered Ringold [I], closely “position compounds isomer” of related The claimed specifically examiner prior-art compounds to be ob- relied board, by the and noted for the first time in the art and vious to those skilled following formula: over- has the structural the affidavit did not found came will show that the two the above formula dered, board termed the two where the location of ring alkyl group 2 to 12 carbon atoms. and R" group After the board’s decision details of a R considerably represents hydrogen or an represents history hydrocarbon of less than 7 4-ring the CH3 of this with portion *5 hydrogen nucleus. more “position isomers.” carboxylic group A differ that of claim application be- comparison carbon atoms complicated. on the Thus, mainly in was a lower described acid of prose- ren- acyl left We of the Board of ment on of the claims. argument the case were heard sections, “nightmarish” I. Merits We have divided this “merits,” come now “Part in it, during on the merits and a part that is to situation. Ringold for Appeals panel oral Rejections the different benches. say opinion I,” [7] the reason that the argument, dealing composition rejection Based into two hearing reargu- as a fully above, Part II of cution are set forth in As indicated the examiner re- say opinion, jected appealed it to infra. Suffice claims basis appellant present 1-desalkyl that counsel for of the so-called derivatives of print- Ringold not included [II] is later furnished to us Of- copies patent were ed record but fice. 1-methyl dihydrotestoster- compound new effectiveness the claimed purpose Ringold compound, While same as the old [I]. shown in ones convincing reason- clear sub- evidence affirmed the examiner’s Board ing, stantially greater observation effectiveness is the additional need- it made [Emphasis Ringold position iso- ed. discloses added.] [I] compounds claimed mer of the Again, Grier, In re 342 F.2d patentability of is also a bar to isomer large CCPA held that a we differ- up these appellant’s take will claims. We degree (3-fold increase) per- ence order. issues in that evidence, in suasive tervailing the absence coun- attempted Appellant overcome evidence, of unobviousness. rejection the submission Carabateas, examiner’s In See re F.2d Langecker examiner’s affidavit. showing CCPA of six and where +hat admitted the board Answer before nine times effectiveness insuffi- was held com- the claimed shows patentability the affidavit cient to establish because ef- pounds times as to 7.5 to be about 7 the record there contained “other evi- compound. How- prior (our art emphasis) compelled fective as the ever, dence” board, found examiner, holding of obviousness. overcome insufficient the affidavit bar, are im the case at we has shown since affiant the reference improvement pressed by the 7-fold alleged merely im- properties but new activity and, in the of valid coun absence properties. The provement in the' same tervailing evidence, find the claimed we pos- properties improvement in the same compounds unobvious. There compounds is prior art sessed nothing any record which reference of and the examiner labeled suggest improvement, degree than let alone would rather “differences activity. improvement kind.” a 7-fold Appellant that obviousness contends apparently attempted to The examiner compound decided a novel only cit- rebut the thrust ing Ringold the affidavit showing *6 comparison its structural from a art as the [II] prior com- art the that of formula with 1-methyl aware that the substituent properties of the pound, from all but properties of the would parent compound. the enhance Ap- supra. Papesch, compounds. In re in The statement an- pellant the 7-fold then submits examiner, Ringold upon relied the [II] activity anabolic drogenic and 7.5-fold support quoted above, clearly does not compounds activity consti- for his shown place, proposition. In the first pat- proof of unobvious “clear tute Ringold his com- states that [II] greater effectiveness.” entable pounds ac- have “at the anabolic least tivity” prior art testosterone the have appellant’s contentions think We * * * en- “in some [have] instances re- board’s merit and the androgenic effects.” or lesser hanced 1- rejection on the spect based hardly phrases character- These be could Ringold desalkyl compounds [I] teaching that these activities ized as therefore reversed. all, in- alone increased at let would be Lohr, re In indicated Furthermore, As we the fold. creased several pos 1274, it is 388, 50 CCPA Ringold 317 F.2d refers to [II] cited statement in show patent the where obtain to sible l-methyl-19-nor-testosterone and there substantially greater effec ing proves compound showing that such 19-nor : tiveness compounds and the claimed behave substituents are fashion when closely similar re- compound so new aWhen There- or deleted added to therefrom. compound to prior as art to a lated support fore, Ringold sought does [II] structurally obvious allegation of greater the examiner. alleged patented based state, alleges m to cer As we had occasion solicitor’s brief in In re a different factual situation tain inconsistencies between the two Hughes, F.2d 1355: tables in the affidavit 52 CCPA between original application affidavit concept pro- seems to basic alleged ly However, filed. these incon applicant process an cedural due pointed sistencies out or ad were statu- at least be informed the broad to or the verted either the examiner claims, tory rejecting his basis regard attack, on board. Hence we this the issues that he what determine credibility opposed to the suffi produce are on which can or should he ciency affidavit, be a new issue evidence. argument rather than a and there new present case, rejection first In the Ny properly fore not us. In re before appellant advanced the board left gard, CCPA 1032. F.2d opportunity an a show- without make ing Appellant of unobviousness. raised issue now turnWe oppor- quests provide that we such “position first noted isomer” tunity by remanding the case to the opinion. lan The board’s board’s board. noting guage, above, the iso quoted rejection applicant’s An attention and re mer, appears to us to be ground sponse naturally por focused on that appealed are claims obvious, specifical compounds tion of the reference which is claimed ly pointed disclosed out the examiner. More view U.S.C. § below, where, appellant important, here, isomer. For to be stated reasons unexpected ground rejection depends showing on a find we be a support pointed properties patentability, specifically out for which was and, comparison under the conclusion which results the first time the board appel unexpected prac case, properties cannot facts we believe that compounds opportunity tically for all lant should be afforded be made might particu rejection. respond mentioned in a view to that so, do we remand lar reference.3 Under circum failure to such board’s rejec proceed stances, further we conclude that when a board for entirely ings. factually Yale, on an 347 F.2d tion is Cf. In re based existing portion of an reference different CCPA op appellant afforded an should be involves Position isomerism showing portunity unob to make similarity structural which is to be close portion of the vis-a-vis viousness other taken into consideration with all reference. *7 applying of ob facts in test relevant the Question Composi- The the II. of In Meh 103. re viousness under section n Board tion Patent the of Office ta, 859, How F.2d 52 CCPA 1615. Appeals of ever, also all facts must other relevant initially argued considered, appears to here on This case was be as the board sitting Judge Kirkpatrick that 10 March been aware it stated have when nothing by designation persuasive place of record to the Chief “there is Judge 294(d). compounds pursuant 28 U.S.C. indicate that the instant § course, argued patentable” over Of At time the case was the isomer. that nothing Appellant so indicate the to our there record to merits. also called is pointed request first out for reconsidera- since isomer was attention a the us, tion,4 upon in the record relied the board. contained before appreciated applicant, particular point 3. the the This seems to be claimed part must be 106(b) relied on itself Rule Office as its nearly practicable. provides, alia, inter that: complex Appellant’s original says “ap- 4. When a or shows brief here reference is pellant request that or describes inventions other than filed for reconsidera- a taking following which, wholly appeal. What adverse of this to the transpired, following: summary, decision of is the and unanimous 1964, appellant pointed out 30 October response 1. The 3 Dec. 1964 rendering the decision that the board Request for Patent Office above Federico, consisted of Examiner-in- Reconsideration entitled “Commis- acting Rosdol, Chief, and Stone and by the First sioner’s Decision” and was Appellant pointed Examiners-in-Chief. opens It Assistant Commissioner. Supervisory Exam- out that a Stone was statement, petition “This is a re- Rosdol, Pri- presumably, a iner. was questing of the Board mary expressly dis- Examiner. While Appeals rendered October avowing objection any the abilities affirming this case decision of the acting Examiners-in-Chief, it was primary and that examiner vacated urged by appellant that the board was hearing set the case be for before an- improperly § under 35 U.S.C. constituted other board.” The decision was: acting 75 in not more than language quoted clear from member Examiner-in-Chief could be a 2, supra] see note hearing appeal— USC [from three-man board expression primary ex- “such appoint- that the regularly must two that there “patent examiner distinguished temporarily aminer” refers to (as ed grade” previous- primary examiner designated) Examiners-in-Chief. ly the examiner not to referred Request asserted for Reconsideration grade. supervisory higher Since of the board the adverse decision higher grade than examiner is “nullity” the board was a because primary examiner, the board improperly Appellant re- constituted. properly consti- decided this case was quested for case set “be accordingly petition tuted and hearing properly constituted before a denied. Appeals.” Board appellant filed 2. On 14 Dec. 1964 Request for Reconsideration Rule “Petition to Commissioner” points no re- asks for to no error acting asking Commissioner, un- vision of board decision. (Rule power rule-suspending der his filing peti- 183), (a) permit action no further The record shows prior Appeals reconsideration, (b) in this Board to waive the tion for ** printed con- record “with- could tion other than the board itself printed paper opinion. head- with the U.S.C. tains ing, prepared draw” its See also 35 Office, paragraph, “Re- in the Patent last of first § reading: sentence Reconsideration, Appeals quest November “The grant rehearings.” has sole Board of (b) 25(3) power calls Rule Our 1964.” headings simplifying title to a short inquiry by Paragraph the Patent us so far as and date 35 U.S.C. brought here, applicable ou the fact reads: Office was, paper filed title on the considers Whenever actual necessary Patents the Commissioner to maintain the work “Petition Hearing current, Board of he before Board of for a New designate any patent Appeals.” examiner of *8 1, primary grade higher, required Rule Patent Office examiner As requisite having ability, paper Com- “Hon. the to serve was addressed: the Patents, Washington, periods D. ex- C.” for of as examiner-in-chief missioner 20, stamp ceeding of Nov. An examiner Mail Room each. six months It bears stamp qualified Appeals of of to act Board shall be and a Appeals. Board of a member of the 1964. Nov. primary appears ex- be directed more than it to Not one such face itsOn requests Appeals it of the Board aminer shall be a member Board of since the to appeal. Appeals hearing [Em- be “with- of an the of the decision that appear phasis no one ours.] would that and drawn” anything about, permit fil- or to to not asked to do of Rule 304 third sentence on, days ing appeal deci- take other action the al- after the based this leged (c) unlawful board. petition, to extend the constitution of on said the sion filing petition and the time for new Having made of the fore- been aware filing appellant wished to of an affidavit going situation, factual court set ground alleged answering of new file reargument by or- down for board, rejection by (d) to extend and the Wiechert, der In re dated 10 June filing appeal the for the time 361 F.2d 53 CCPA the board’s decision. argument following to limited to the be questions: three of 22 3. A Commissioner’s Decision requests con- for want 1. Is this court authorized to denied Dee. 1964 all extraordinary sider, ap- showing present proceeding, in the “an situa- challenge pellant’s composition required by in the the tion” Rule showing why Appeals was the board the Board of whose decision absence of a appealed? to reconsider requested decision its here provided 304. Rule within the time any, authority, permits 2. What if desig- the Commissioner Patents “Petition 4. Dee. 1964 another On 24 Ap- Board nate as members of a argued an extra- to Commissioner” peals paragraph 1 of 35 U.S.C. ordinary shown and had been situation 7, more than one examiner-in-chief appellant have asked could not designa- serving capacity in such board to review with- same decision its pursuant tion of the admitting properly out the board was paragraph 2 of 7? 35 U.S.C. § constituted. Appeals 3. Was Board 5. Decision The Commissioner’s appealed rendered the here petition 24 Dec. 1964 denied filed validly constituted under 35 U.S.C. §§ day. same 3, 7? appeal This taken 29 Dee. 6. by appellant Briefs filed and were eight 1964, by Appeal, rea- Notice of Solicitor, Office, Patent and oral U. S. alleging annexed thereto sons argument to the 3 Oct. 1966 limited held rejection respect only error with to the questions. judges hear- above The five making reference, direct claims regular ing reargument were otherwise, previously asserted Judge Martin of this court. members unlawful constitution of board. By thereafter, con- 5. died November papers above referred to are All Judge parties, sent the Chief Appel- included in the record before us. Judge Kirkpatrick participating are of what lant’s brief contains recitation decision of the entire case. lay transpired Office Judge Judge, Kirkpatrick The Chief request us, basis ques- the view the writer are of namely, if we do not find the 1, above, tion should be answered pealed allowable, remand claims we negative questions and that 2 and 3 appel- case to “so to afford the board considered, therefore not should opportunity lant an submit in an affi- fully more forth below. reasons set davit described tests hereinabove dealt We reach the merits as therefore to have this affidavit evaluated part opinion. of this adjudication prior Patent Office Judge this case Hon. of Customs Court Almond’s views are that Appeals.” question and Patent This affida- is the 1 should answered in the aff “2”, irmative,6 vit referred to in above. We answer Judge mean, course, Almond’s stated view is that “this tive. He does not that a jurisdiction court would lack sub- decision of a Board of would not *9 ject appointment ju- subject matter” if the of one be matter of which we have of the members of the board was defec- He risdiction. means there would be 936 agree is 35 7 authorized over-
2
U.S.C.
solicitor’s somewhat
§
emphatic
supplemental
board as herein constituted and
statement
in his
3, therefore,
question
“Yes.”
answer to
is
brief that:
on that
He reaches
merits
basis.
unchallengable,
The stark
naked fact
Judge
by
ap-
answer
is that
Smith's view
shown
record is that
2,
question
“Yes,”
question
challenge
pellant
1 is
no
has uttered
this
“None,”
“No,”
question
composition
and to
where-
to the
of the Board
Court
regards
Appeals
fore
as
the board’s
properly
he
con-
that can
nullity
appeal
a
and would dismiss the
sidered
this Court. There is
appeal
without consideration of
merits.
reason
in the case at bar
* * * which, directly,
indirectly, or
Question
The Answer to
1.
impliedly raises an issue
*
* *
composition
present
of the Board.
proceeding,
In the
on the facts
legality
not an is-
recited,
the Board is
above
we should not and cannot
challenge,
case.
if
sue
this
it be
legality
composition
consider
challenge,
Court’s,
appel-
a
is
not
principal
of the board for three
reasons:
(1)
lant’s.
question
was not raised on this
appeal by
having
appellant;
(2)
raised
narrowly
broadly
this
or
However
question
Office,
in the Patent
he
construed reasons
court
have
arguing
abandoned it
not
it before us
a
peal
past,
in the
the total absence
(except
doing
as we
insisted on his
remotely
bearing,
im-
reason
even
reargument);
(3)
our limited
alleged
pres-
plication,
on an issue
statutory authority precludes our consid-
Le
cannot be overlooked.
ent
a case
question.
eration of
reasons
These
Page’s, supra.
amplified.
will now be
brought
By
out
of facts
reason
“(2),”
point,
we
next
discussion of the
(1)
pointed out, appel
As above
asking
appellant’s
not
action in
consider
lant
failed to file
reason of
ruling on
us to review the
Office
raising
question
in this court
composition to
been
the board’s
have
board’s constitution.
That
is there
issue
quite deliberate.
fore not
us.
before
35 U.S.C.
142. We
§
(2)
are limited
uniform
This court has
statute
to the render
ing
ly
points
an issue
decisions
sound rule that
“confined to the
followed the
argued
set
appeal”,
forth in the
in this
is
reasons of
raised below which
properly
Ample explanation
court,
U.S.C.
144.
if
it has
of our
even
been
long-established
appeal,
position
brought
is
point
reason of
here
a
LePage’s
regarded
Inc.,
will be found in
In re
and will not
as abandoned
455,
court
F.2d
50 CCPA
our function as a
and In re
It is
Grus
considered.
chwitz,
issues,
disputed
create
F.2d
to decide
CCPA
Baird,
also the
52 CC
See
cases listed in
writer’s
them.
In re
348 F.2d
dissenting
opinion
1747;
Lorenz,
In
305 F.2d
latter case. We
PA
re
Lines,
Inc.,
no decision of a Board of
73 S.Ct.
344 U.S.
jurisdiction
Supreme
(1952),
Court
which our
could attach.
Per-
937
*
* *
LeBaron,
remanding
proper
2);
in
(footnote
is
In re
CCPA
extraordinary
of
the
view
situation
F.2d
42 CCPA 956.
existing
fully
case,
in this
dis-
as more
record, briefs, and
clear from the
It is
apparent
and
cussed above
from the
arguments
appellant did not
that
oral
Transcript
of Record.
legality
present
question
the
the
composition
is-
as an
to us
board’s
the
significance
that
this
is
statement
set
for
to decide
the
sue
us
before we
challenge
the
reason of the
below to
reargument.
merely
us
told
He
case for
ensuing peti-
constitution
board’s
and the
below, in
he
about
the contention
made
denials, appellant never
tions and
suc-
very
tense,
perhaps
past
and
the
the
for
asking
in
the
to reconsider
ceeded
good
not
that he knew it was
reason
proce-
pursued
its
He
a
decision.
never
jurisdiction
that
within our
to consider
get
the
dure
into
record
which would
the
issue.
after
affidavit
additional
tests made
appellant
response to
first
that
the
decision
in
indication
board’s
and
composi
alleged
ground
rejection
dropped
issue of
in
the board’s
new
the
the
the
coming
asking
opinion.
us
tion in
to this
is the absence
he
court
board’s
Now all
is
“(1)”
appeal,7
did,
and
of a reason of
as noted
to do as
result
what he
what
a
reading
did,
even clearer from a
case
above.
It is
the Patent Office
is to take this
considering
history
recita
his
brief as whole. After the
into account
his
suggestion
“1”
find
tion of the
described under
do not
events
to remand
we
if
through
above,
of other
“6”
the
concludes:
claims allowable on the
brief
his
basis
arguments.
asking
pass
is
us
He
not
described
the circumstances
Under
For
on
constitution
of the board.
apparent
Tran-
above
regarded
shows,
all the
he
it at
brief
Record,
script
respectfully
it
sub-
is
argument
time of
initial
as a dead
appli-
mitted
in the event
that
that
fact,
appears
he
In
it
issue.
to us
cation
not found allowable
regarded
long ago
it as dead as
Hon. Court of
and Patent
Customs
filing
final
of his
“Petition to Commis-
Appeals
presently
record
based
made
sioner” on 24 Dec.
in which he
re-
before
Court this case should be
this statement:
Appeals
manded to the Hon. Board of
appellant
opportu-
afford
as to
of the
It
after the
nity
to submit
affidavit
De-
Assistant Commissioner
First
tests described hereinabove
de-
[tests
denying
petition of
cember
of record]
scribed
brief
but
ap-
November
that counsel
have
and to
this affidavit
evaluated
considering
any
plicant had
basis for
adjudi-
prior
Office
original
Appeals hod-
Board of
cation of this ease
Hon. Court
properly
there-
constituted
been
Appeals.
and Patent
Customs
submitting
request
fore
suggested
Note that
even
its
reconsider
same Board of
remanded to
different
[Emphasis
decision.
ours.]
the one
board than
which decided
nothing prior
brief,
event,
we can find
ease.
In the
“Conclusion”
rehearing
setting
in-
appellant
our
the case for
summarized on the remand
appel-
dicating any
part
necessary
quest,
desire on
deem it
to con-
we
if
legality of the
pat-
pass
proposed
us
on the
sider the
lant to have
affidavit
find
alleged
board,
refer-
entability
which we
new constitution
view of the
order,
board,
per
ground
rejection
prior
curiam
red to in our
made
challenge.”'
“appellant’s
saying,
year
appellant’s
happens
half before
who
counsel
decided about
holding
herein,
filing
appeal
personal-
rea-
signed
Appeal
the Notice
dismissing
inadequate
ly very
sons of
conscious
the reasons
requirement
appeal.
peal
he was counsel
supra,
Gruschwitz,
appellant
in In re
*11
statement,
true,
to make it clear that
it was not
will
We wish
which is
we
not
challenge
ordinarily
court and that what-
this
interfere in matters of Patent
solely
challenge
practice.
made was
the
ever
was
Office
We find them beside
pursued
point
question
further.
Patent
and not
the
the
Office
here
not
is
practice.
of Patent
matter
Office
It is a
pursue
appellant
to
Had
wished
being
of whose
to
decision we are
asked
remedy,
proper
the matter
his
further
review,
board’s or the Commission-
peti
on
decisions
jurisdiction
er’s. We have
to
review
court,
being appealable
not
to this
tions
former
but not
latter.8
(3) below,
pointed
out under
would
by mandamus
District
have been
Conclusion
Court.
v.
United
ex rel. Steinmetz
States
rejection
by
examiner,
af-
416,
Allen,
543,
192
24
48 L.Ed.
U.S.
S.Ct.
board,
firmed
is
reversed.
(1904);
United
555
Butterworth
v.
respect
case is remanded with
Hoe,
50, 55
States ex rel.
112
S.Ct.
U.S.
ground
rejection
board’s
of
added
25,
(1884);
parte
of this court will not be agreement quote entire which I here recently stated, Fischer, As we in In re embody opinion: in this 230, 231, 1211: 360 F.2d 53 CCPA * * * ap- judicial I am not concerned with whether nature pellant jurisdiction proceedings court, raised the in this no matter at issue stage, longer question. either or before what is no Office States, court, issue Lurk v. U.S. or with whether United Appeal, (1962) 1459, 8 is covered his Reasons of S.Ct. L.Ed.2d [82 671] Manson, appellant and Brenner or with whether abandoned v. 383 U.S. (1966). too to re- 16 L.Ed.2d the issue. well-settled S.Ct. [86 69] Supreme Court, quire juris- As citation of that stated subject never of this work diction of the matter bulk court’s involves the arising pending disposition in a of cases waived case. This is the under unvarying gen- Constitution, III of rule in courts of Article even arising jurisdiction, eral it should cases under Federal law and plicable special in this cases to which the United States is a force court jurisdiction. party. These cases and controversies limited disposed ju- are and must be in a It would also of no con- be matter * * * [Emphasis dicial manner. appellant, Commissioner, cern if added.] agreed parties and counsel for both all “principal reasons” ad- Three jurisdiction this court has majority support position: vanced to subject appeal. matter of this (1) parties not raised on was cannot before a Federal court by appellant; appeal appellate jurisdiction their confer jurisdiction consent; Congress do this court no can mere appeal for “An our consider the merits has confined so. Since patent an inferior court or tribunal jurisdiction parte cases ex jurisdiction of a appellate of which has cause of a “decision review appellate jurisdiction Appeals” confers no on the under Board section court”, Appeal Error 4 C.J.S. & § should consider believe we (1957). jurisdiction questionable Our as to this issue issue whether jurisdiction of panel present as far as the extends “board” appellate legally Article III Federal court. under section so constituted appellate jurisdiction conceivably court has “[T]he render it could a valid jurisdiction the lack determine on behalf of the “Board pp. 160-161, panel court.” Id. Appeals.” the lower If could the “board” illegal appellate court composi- citations An omitted. not do because of its jurisdiction acquire tion, jurisdiction cannot which lacks this court would lack subject its decisions otherwise. Because the stat- matter jurisdiction depends statute, here ute. consent, agreement, stipulation, waiver to which we The basic consideration operate or abandonment to con- cannot me, effect, give is set must it seems jurisdiction. Appeal fer C.J.S. & following from 5 forth in the statement Error 42-44 §§ Appeal & Error Want C.J.S. agree underlying I do (1958): with the Jurisdiction majority view of deter- jurisdiction Inasmuch as lack of presence of mination of the absence or appellate any de- court renders *14 jurisdiction in this has been sense might make on the cision which it by Instead, stricted 35 U.S.C. it § juris- nullity, a if such of merits lack my is that: view patent, readily is or can be as- diction duty appellate court The has the an examination certained question jurisdiction record, * * * determine the of the it dismissal warrants ig- motion, not (citations omitted, on its and it will own 9 columns jurisdiction of cases). nore a want because of question is not or discussed the raised thought The our decision on the that (Citations party. omitted, either may nullity appeal of this be is merits cases). Appeal 15 4 columns C.J.S. majority requires appalling. the Yet the Ques- & 345 Determination of Error § proceed precisely court this end. tions of Jurisdiction. majority have the What we reviewed and majority opinion, nullity. In 2 of footnote the decision thereon well be Judge generalization there that is the alleged jurisdictional defect here injected Almond has confusion into this readily “can be ascertained an ex- by maintaining juris- matter we have composi- amination of the record.” subject my Lest diction over the matter. tion of the is stated in the record board “confusing,” similarly views be found Further, and the statute is us. before juris- precisely type I shall delineate appellant has raised the issue below as to approaching I In diction to which refer. legality However, of the board. I well this task am Justice aware majority proceeds upon assumption “Jur- admonishment that Frankfurter’s expressing contrary in that view “a of too isdiction” is indeed coat verbal point creating is this issues act- many L. colors.” United v. A. States ing scope outside vested Lines, 33, Inc., Tucker Truck U.S. 344 accept prem- I court. not do this 39, (1952) 67, 70, 97 54 73 L.Ed. S.Ct. ise but remain the view that the issue opinion). (dissenting jurisdiction existed in from in which I the moment the members of the Jurisdiction sense panel shall were have it and use it here is the Commis- used being power true, my hear and the con- This determine sioner. it view given appeal troversy presented, of cir raised the first time on “since in a set jurisdiction subject Labor cannot be In re National Re matter cumstances. parties”. Board, 486, 494, or conferred 58 S.Ct. waived lations U.S. 234, (1938). Appeal A more Error L.Ed. 1482 C.J.S. & §§ general objection Here, course, definition is that 21 C.J.S. an (1940): made below. Courts § jurisdiction in a principle, of a court no distinction be- see power to and de- Federal Cir- sense its hear court and the broad tween this controversies, concerning more and in a termine cuit Courts adjudi- power appel- its restricted sense that each is a court of limited fact particular provid- jurisdiction. case. has cate late ed, courts that 28 U.S.C. “The § Relations Labor In In re National jurisdiction have shall Board, supra, issue was whether peals all decisions of the dis- from final power to Appeals was without Court States courts the United trict * involving controversy given determine * are Numerous decisions state- After the above the Labor Board. proposition support that available to opin- concerning jurisdiction, ment jurisdic- appeal courts have both ion continues: duty whether tion determine * * * jurisdiction, A court they power to and deter- have the hear term, examine use of the another controversy sought pre- mine the power whether jurisdiction sented, need the issue of upon circumstances it in the conferred parties, raised power is but if it finds such disclosed parties jurisdiction, cannot confer granted jurisdiction lacks jurisdiction lower lack of subject from and must refrain matter requires appeal dis- court rights any adjudication connec- 28 U.S.C.Annot. missed. See 494, 58 tion therewith. 304 U.S. 7, 8, 12, 13, 256, 294, *15 require the to citation of authorities. by filed the labor of record had not been required The court board as law. consideration, The tran- basic Appeals of found that the Court considerations, all other it seems scends power to the contro- without determine jurisdiction me, our does not to is that versy. reviewing extend to merits of the de- legally incompetent a cisions rendered jurisdiction as is defined Whether appeals. of as board “Decisions” which only power to valid review decisions legal nullity a matter of a are law are power to is as the whether it viewed beyond scope powers of our of re- only subject matter which review Judg- See, g., view. e. of Restatement decision, from a valid same inures 7, (f). ments Comment § Judge support result is reached. of Almond, majority opinion it would seem to the better be honor fails to The inuring subject Instead, from view that matter it this basic consideration. illegally gives controlling pro- constituted board “decisions” effect to technical beyond power appeals of re- is our cedural considerations. To me such con- with, quarrel best, nor view. Thus I have siderations are subservient Judge in, restricting otherwise, guise I Almond’s do find confusion under the by illegally (as appellate appellate con- conclusion that decisions review courts “subject they unlawfully matter” stituted boards should lest accused of be jurisdiction expanding powers review, to re- over which we lack 21 their jurisdiction (1940)), majority view. And insofar as the C.J.S. Courts § may actually depends statute, expanded appellate it be issue on a here unwilling everything accept anything Com- this board court view being beyond “decision,” determines appeals missioner denominates merely jurisdiction legality our it carries regardless of the because board. the label of decision. Commissioner’s inevitable as ma- This conclusion is gratuitously jority to the demonstrates majority theory it Under its the solution to Patent Office that appli may well that some dissatisfied insofar review court right dilemma his under exercise cant will recognize Court, simply go District is 145 to to the is concerned U.S.C. § of the D.C. where review Commissioner’s of Patents as the may setting illegal up an board action in challenges pass and to review gained. However, here review composition appeals. boards right given 141 also is 35 U.S.C. § majority clearly suggests that According majority, applicant. to following of action will this course there the board de review is limited what by a be a “decision” board as to never applicant’s cided. This seems to limit an legal competency, and hence no its own rights statutory subject him and appellate an review basis delay multiple proceed expense of This, this court. matter seems ings. majority require, here would me, approves proposition the novel applicant, it, I desir see au- the extent the Commissioner’s ing a de district court trial novo thority determined the Com- wishing merits, a review on the but missioner and he dictate what we here, prosecute two actions the merits notwithstanding illegality can review simultaneously. proceeding de novo appealed. the board decision is whose in the district court involve would position unable to am reconcile legality the basic consideration that “Ad- appeal issue would concern the here ministrative determinations must have decided such board. 35 U.S.C. See in law must be within the a basis Guys 141, 1542: Cf. Two 28 U.S.C. § § ** * granted authority. agency An Harrison-Allentown, from McGin Inc. v. finally may not its decide the limits of 1959). ley, (3rd F.2d 954 Cir. statutory power. judicial That func- reasoning of the seems to me that Security Nierotko, tion.” Social Board v. seriously appellant’s majority impairs an 358, 637, 643, 327 U.S. 66 S.Ct. right beyond court, to this (1946). Also, L.Ed. 718 “The determina- statute, I find in the see limitations given tion extent of U.S.C. “The Court of Customs delegated agency by jurisdic shall have for the of him in left whom au- (1) tion of of: decisions thority Holly is vested.” Addison v. Hill Manifestly, Appeals”. the Board of Co., 322 U.S. 64 S.Ct. means valid decisions. statute *16 L.Ed. 88 1488 While Appeal Reasons recognize of the administrative inconveni- adoption on of the ence which would result Is our decision the issue my views, question composition be of of the foreclosed me is one principle expressly expediency. appellant of failed to rather than cause appeal ? The in his reasons of comes down this: can the Commis- delineate it by agree. interpret majority a not sioner holds that it is. I do decision so his au- designate thority general errors as The rule is that those boards may jurisdiction assigned specified properly this be to divest court of review, appellate see Con this issue in an from a on considered Organizations desig- gress allegedly improperly Mc Indus. v. of a board 1395, My Adory, 472, 65 89 him? nated view is that it is 325 U.S. S.Ct. beyond (1945); Appeal authority & 5 L.Ed. 1741 C.J.S. the Commis- (1958). However, thus to or limit Error 1218 sioner determine ex- § ordinarily applied general jurisdiction. rule is tent of court’s I am
944 jurisdiction. judge Ap- questions of 5 a C.J.S. commissioner assumes to act peal (1958). authority objection And “Want & Error 1221 under lawful and no § may regarded jurisdiction authority as funda- is made be to his when he exer- noticed, power prescribed on mental error which will be cises within the limits assigned being authority review, law, as error.” without cannot assailed be Appeal appeal. Appeal & Error 1239b. Thus on 4 5 C.J.S. Error C.J.S. & § (1957). appellate notice its own 258h court should The rule otherwise is § jurisdiction, g., authority v. see e. White where there is a want want be- Crandall, 70, 272, judgment 143 105 Fla. 137 So. cause the is void for want jurisdiction. controlling cited at 5 C.J.S. 871 authorities Ibid. The So. 48, Appeal determining at fn. or the & Error 1239b in whether author- § court, ity jurisdiction person acting lower exists whether want citing g., 49, authority desig- e. id. at fn. decisions has been selected see prescribed from states. nated and in the 16 manner Judges (1947). law. 48 lOle C.J.S. § opinion reader majority refers The judge problem has 455, of whether Inc., 50 LePage’s, 312 F.2d In re authority long- has oc under lawful authority acted 852, for “our CCPA concerning involv curred most often in situations position” established ing special e., judges, who acts i. assign questions the rea- failure special appointment. The rule virtue appeal. An examination sons of special of a is that where the selection LePage’s, Inc., we opinion shows judge the law is not accordance with jurisdiction- then that least considered at judge proceed any there is no and the entire may time.” raised “at matters al nullity. g., ing See, Judge him is a e. before 456, at 854. at 50 CCPA F.2d 312 Napal’s Heirs, 94 F.2d Annoni BLas v. all con- at time was “not Rich at that 1938). (1st principle in Cir. of reasons [of the absence vinced commonly recognized as defect, more volved is ‘jurisdictional’ de- appeal] is a In or “de facto” doctrine. the so called power if priving to act we us judge, a de facto der that there at F.2d do so.” 312 choose jure be filled. there must be de office to CCPA Shelby County, 118 Norton v. U.S. Gruschwitz, 320 F.2d In re (1886). L.Ed. 178 6 S.Ct. majority cited CCPA legal And there is no where authority, the decision adhered to we person special judge, the selection Although my LePage’s, it is view Inc. judge attempting de to act is neither a composition of question of the jure judge pro nor a de facto any reasons the board transcends ceedings are null and void. C.J.S. present peal, record seems necessary Judges amply qualifies then ad- test consequences are as follows: by Judge that: Rich in dissent vocated * * * Following rule that there really significant intendment “The jure officer if a de cannot be a de facto court we are a the statute is that discharging the functions officer to act in review and regular question, if the the office originate grounds but are new which we * * * judge presiding and assumes to passing to restrict ourselves cause, special particular act in the judge legality of decided what been irregularly appointed, who as- 408, 50 CCPA at 320 F.2d at below.” act, is not even a de facto sumes to judge. *17 1508. * * * p. at Id. Legal Competency the Board The considering valid re- Before whether a may Returning lationship between considera- be established now to the basic judges special panels, special tion, de- and I think the decision here in issue the Supreme legally incompetent appropriate to consider the of a board? it cision Zdanok, recognize general where decision in Glidden Co.v. I rule that Court’s
945
Attorney may
permitted
1459,
530,
82
8 L.Ed.2d
States
be
S.Ct.
370 U.S.
public
upset
(1961)
the com-
behalf of the
an order
which also decided
671
upon
authority,
panion
As
Frad
of Lurk v.
States.
issued
defective
United
Judge
188,
Kelly,
my colleagues
know,
Jackson,
v.
302
312 [58
U.S.
S.Ct.
well
litigant
court,
282],
private
in-
82
or
this
was
L.Ed.
a retired member
dinarily may
companion
He
case.
was
not. Ball v. United
volved in the
designated
preside
States,
118,
a criminal
140
128-129
U.S.
S.
[11
over
765,
761, 764,
trial in
District Court of the District
Ct.
35 L.Ed.
377].
validity
and
of this
of Columbia
designation
course,
obtain, of
does
rule
questioned in
was
the Court
alleged
authority
when the
operates
defect
granted
Appeals,
of
by
D.C.
was
Certiorari
limitation on this
also
814, 815,
Supreme
(368
Court
U.S.
Ayr
appellate jurisdiction.
Court’s
56,
22)
7
limited
82 S.Ct.
L.Ed.2d
States,
Corp.
Collieries
v. United
shire
judgment
question
ei-
“whether the
1168,
331
132
91 L.Ed.
[67
U.S.
S.Ct.
respective par-
ther
ticipation”
vitiated
was
court);
(three-judge
United
1391]
judges.
of the named
370
Emholt,
L
States v.
judges
filed in
course of the
was
judicial business,
Court has
proceedings before them in either
alleged
“jurisdic
treated the
defect
General,
who
case.
sub-
Solicitor
agreed
and
to consider it
tional”
arguments
and
mitted briefs
for the
though
(cid:127)
raised
direct review even
States,
upon
has
United
seized
opportunity.
practicable
at the earliest
suggest
peti-
that the
circumstance
g.,
E.
v.
American Construction Co.
precluded by
should be
the so-
tioners
Co.,
Jacksonville, T.
R.
& K. W.
question-
called de
doctrine from
facto
387-388,
U.
S.Ct.
[13
S.
ing
designations
validity of
these
765,
think
consider
sion,
judges
“decisions”
boards
Office boards.
2-member
and Patent
eral
statutory
the law were
and without
authori-
established that where
void
has been
designated
controversy
ty.
requires
deter
The
a 3-
a
that
prescribed panel
appeal,
federal
US
a
member board to hear the
78
mined
PQ
composed
judgment
panel
(Bd.App.1947).
parties
judges,
The
had
of a
the
difficulty
provided by
appreciating
must be
is-
than
law
that
otherwise
American-
v.
sue was whether an
lie
vacated. United States
would
Foreign
composition.
Corp., 363
80 S.Ct.
a defect in
board’s
SS.
U.S.
Judge
par
designate
Medina
solution
Herein
was
different
hearing,
ticipated in an
en banc
U.S.C.
board.
46(c).
The decision was
rendered
decisions
I find it clear
from the
Judge
Because the
Medina retired.
after
American-Foreign
Ayrshire
that
SS.
provided
en
a “court
banc
statute
judges,
panel
not constituted
of federal
judges
circuit
shall consist
all active
authority.
according
law, acts without
circuit”,
“a
found that
court
panel
of the Board
Should
judge
power
retired circuit
is without
differently?
I think not
be treated
participate,”
at
363 U.S.
80 S.Ct.
appears
in the
to have been settled
judgment
at
and the
was vacated.
Shelby, supra.
leading
of Norton v.
Significantly,
the court noted that
Supreme
had before
Court
Therein
having only
judges
policy of
active circuit
legal
question
effect of
it the
major
doctrinal
trends
determine
of commission-
actions
a state board
given
competence
should be
effect. The
Supreme
it was
Court stated
ers. The
Judge
questioned.
Medina was
necessity
passing”
from the
“relieved
Rather,
question
was
whether
question
existence
of the “lawful
panel
lawfully composed. Here,
was
authority
county commis-
arid
infra,
discussed
there exists a definite
sioners,”
at
policy
temporary
examiners-in-
highest
de-
had
as the
the state
court
necessary
only
chief be
when
passed
law
the state
termined that the
in view of
work load and that
legislature
creating
null
was
the board
regularly
point
inject
be heard
examiners-in-chief
I
and void.
would
appointed.
that maintain
this is the
us:
the lawful existence
is before
Ayrshire
Corp.
In
Collieries
v. United
panels
Board
of certain
States,
947 hearing appointment law, examiner the office never never became examiner?) (comparable patent persons con- ato into Some came existence. trary office, they to terms Adminis- certain of the pretended that held the recognized Act as pre- trative Procedures set forth the law never their but irregularity opinion, supreme tensions, was not such court of an nor did the deprive the “of pretensions would which Commission such the state. Whenever court, they power jurisdiction, so that or even in that were considered objection timely any legal its order absence of were declared to be without nullity.” foundation, should be set aside as a and the commissioners usurpers. U.S. at S.Ct. at 69. Even held to be were timely objection Tucker would objection was have been honored! Here cited which Numerous cases are appellate not made in an court apart which, expressions are read used time, first as in Tucker. seemingly cases, facts of the from the give position support to coun- dealing Also, is clear we are not But, in connection when read sel. according appointed persons to with here facts, ap- they seen will be to with the Act; the Administrative Procedure we invalidity, irregularity, ply dealing persons who, are here with unconstitutionality of the mode or regular appointment, virtue of appointed party or elect- pointed by President, by “the and with legally existing office. None ed to consent of the Senate.” advice the doctrine that of them sanctions They independent 35 U.S.C. are an § office under can be there de body facto whose tenure is not controlled government, a constitutional the Commissioner. are entitled the acts incumbent I do therefore Tucker not find the de as valid acts of a to consideration dispositive * * * of the issue raised officer. facto guid- I here. should look for think we raised that has been Since involving having persons ance from cases illegally board constituted and the stature, higher, comparable, more i. but desig- authority no examiners, e., judges federal and not boards, I see how nate such fail to we can question or involved was where the issue timeliness, or behind abandonment hide designate authority the existence of assign failure it as error. panels of the exercise and the lawfulness relationship ex- One last remains entity. power by panel as amined. Should the be different result regret required to I I been have not the cases did involve a because above jurisdictional aspect delve into the panel involved? The herein length.- the fault case at Whether such majority opinion infers that are here we inability to suc- lies in an articulate dealing appointment” “invalid cinctly complexity question, or the and refers the reader to United States v. firmly majority errs believe Lines, Inc., L. A. Tucker Truck U.S. reasoning support con- in its of its clearly 73 S.Ct. This legality clusion of the board situation not the the court before us. before challenge has been raised as to the com- petence appointment member I do issue can be While not believe the repeat, are, the board. We concerned avoided, I issue is also believe that with the of the Commissioner important so it should be decided designate boards, not individual “judicial ingenuity” should not be members, and the lawfulness boards Clay way escape used to “find a it.” designated. Office, Ltd., Insurance 363 U.S. v. Sun ‘ 207, 214, 4 L.Ed. The decision Tucker has some value S.Ct. (dissenting (1960) opinion). but for a reason. It held that 2d 1170 different give meaning. Interpretation it a 35 U.S.C. 7 different But meaning the limited of words will be I will consider the issue of the now *20 disregarded when it is obvious from agree validity I of the board. do not legislature the act itself in- Judge of 35 Almond that the terms tended in a that it be used different unambiguous. full 7 are A U.S.C. § meaning. than sense its common principle statement of rule or relied by Judge in 2 Almond is found Suther- First, I do not find 35 U.S.C. 7§ (3rd land, Statutory Construction § “plainly expressive of an intent not ren- 1943) ed. and reads as follows: dered dubious the context of the unambigu- Second, clear and para- 4702. Statutes act.” I find that the main existing law. graph meaning ous—The of section 7 restricts the exception of the stated therein and that following Although rules seem exception, as construed the Com- unsatisfactory au- to the delusive missioner, general repugnant is to the they repeated thor, fre- have been purview Further, of the section. judicial decisions, quently it is in the legislative history imports the true mean- only fair record them here: to ing exception attributed to the legisla- of the the intention “When section 7. apparent from the face ture is so ques- can be no the statute that there statutory The rules of construction are meaning, there is tion as to its frequently numerous and certaining in conflict. As- room for construction.” “legislative intent” can be term, most difficult. As to this latter interpret “It is not allowable to what Justice Frankfurter once stated “Some interpretation.” has no need of Reading Statutes”, Reflections on the “There is no safer nor better set- (1947) 47 Col.L.Rev. : interpretation tled canon of than that * * * years All I these have avoid- language unambigu- when is clear and speaking “legislative ed of the intent” ous it must be held to mean what it my guard and I shall continue to be on against using plainly expresses.” objection it. The to “in- are, course, appro- These rules tention” was in a indicated letter priate when the words of a statute are recipient Mr. Justice Holmes which the plainly expressive of an intent not ren- kindly my put disposal: dered dubious the context of. Only day ago or two —when interpreting act. The court the act counsel talked of the intention according must declare it to the words legislature, enough I was indiscreet they expres- the act fact say I don’t care what their in- sive of the sense and intent of the act tention was. want to know any interpretation would other * * * what the words Of mean. course interpretation. thwart that phrase express often is used to thought exactly a conviction not out One who contends that section of you particular —that construe a literally an act must not be read must considering expression by clause or show either that some other section of the whole dom- instrument expands the act or mean- restricts its may purposes express. inant that it ing, repugnant that the section itself is residuary In fact intention is a general purview act, or gather up clause intended what- pari the act considered in materia with other aids to in- ever there legislative acts, other with the his- terpretation particular beside tory subject matter, imports a dictionary. words and the language meaning. different If unambiguous plain, means, If and uncontrolled that is what the term it is parts beclouding other of the act or other acts better to use a charac- less upon subject Legislation aim; the same court can- terization. has an magic interpretation mischief, tic to be a kind of to obviate some seeks body whereby inadequacy, a whole of law is made supply an effect spring phras- change policy, plan out of a few formulate a words aim, jurists policy es. government. But most modern are out- That growing nitrogen, superstitious drawn, out awe of the like language printed magic potency. air; and its word it is evinced in the light meaning statute, of a statute consists as read system consequences pur- of social manifestations other external judge or of the all pose. must it leads solutions to That what ought possible questions effectuate, social that can and he *21 seek sys- arise it. These or tests that solutions led off the trail to be design. consequences subjective tems of cannot be deter- have overtones solely used, anything mined from the words but are concerned We require knowledge con- subjective. a of the social do not delve into the We draftsmen, legislators is to be ditions to which law mind of or their ** * plied as of as well the circumstances committee members. or * * * which led to its enactment. statute, is aim of what What is the sought policy relying effected what justified in Thus I feel while Frankfurter do the words mean? Justice statutory “con- rules of on traditional further commented: fully support I believe struction” which purpose policy meaning my Often or con- of the as to the conclusions my directly displayed exception trols is not in draw I also to section particular enactment. can- Statutes considerations advanced conclusions from intelligently eye read in- not be if the for too often writers above wholly closed to rules terpretation considerations evidenced on which rests statutes, applied. affiliated or the known are legislative temper opinion. Thus, meaning terms What is the lightly example, for it is not “any patent examiner 35 U.S.C. 7§ Congress sought presumed that in- higher”. grade primary or examiner “very fringe rights.” sacred This meaning Further, of the is the what improbability will a factor in de- primary terms, than one more such “No termining language, though whether Board a examiner be member shall standing alone, should be so read if hearing appeal.” Do was used to a effect such drastic designate indi- a title or second terms change. designate they de- class vidual or do meaning statute, As to the of a Professor Is there first terms? fined stated, M. R. once in “The Cohen Process used?' the terms connection between Legislation,” of Judicial “Law literally do or taken terms be Should the (1933), Order” as the Social follows: having they patent examiners mean that substantially equal expertise meaning a level is the statute: What primary slightly examiner interpret above The rule that must courts singled special meaning treatment? for are out rather the statute than operate legislature words, does the statute of the is fre-' other intention having given level quently implied to insure boards conceived as if it wholly ability de- experience or is it the words a statute are sufficient job pendent latter every If the titles? determine arises reorganiza- being correct, accepted This under it. would lead to revival stage job Office in the Patent tion titles of the strict law which the nearly patent exam- all strictly meaning can insure that literal words designa- “qualified” unjust for would be iners followed no how or ab- matter host, acting A consequences. examiners-in-chief. tion surd Doubtless com- above many juris- of considerations believe there who still pel granted] must, the conclusion that 35 U.S.C. 7 is not ents should not be instance, “clear on its face.” the first be exercised department charged with this branch foregoing considerations but un- public may of the But service. as it derscore what seems to me to be the thought proper not be to intrust its patent ambiguity language department, exercise to the it is final statute before us. As such it seems to provide deemed advisable required ascertain, me we are if we occasional tribunal to which an can, meaning what the of the words must [Emphasis be taken.3 added.] prohibitions be. Should the in section 3. Report take of the select committee to game” 7 become but a “name in which condi- into consideration the state and ambiguous “primary term examiner Office, and the laws tion higher” Commissioner, allows the relating issuing patents changing responsibilities the names and new and useful inventions and discov- Congress, Session, personnel, of Patent Office 24th eries. 1st Sen- to circumvent April 28, ate Document No. 1836. authority spelled the limitations on his Reprinted at 18 J.P.O.S. out in section 7 ? *22 contemplated by The review this Act problem requires an initial con- appeal was an to a of board three arbi- background sideration of the historical of a trators called “board of examiners.” present appeal procedure in the Pat- appointed These three “arbitrators” were aids ent Office. Such a consideration Secretary of for each case. understanding State in the entire and significant It is to note that in this first placing proper it in its frame of refer- appellate procedure, “arbitrators” considered, ence. find When we appointed by were not nor subservient problem long standing a to have been to the Commissioner of for present controversy Patents their one. The viewed in authority to act. This came this context is little more than another directly Congress through gambit appears from Sec- in what to have been retary of continuing These “boards of ex- State. more or a less contest between given authority aminers” were to conduct and Commissioners of Patents hearings and, by majority vote, concerning judicial a to re- independent an or verse the decision of quasi-judicial the Commissioner review the Commission- part. refusing in in patent Patents whole or Their er’s decisions a to an govern proceed- ably carefully applicant. decision was to An further written and ings. history documented of this contest was prepared Fed- now Examiner-in-Chief procedure provided the Act (who happens erico to have been the proved and be cumbersome appointee Presidential on the board Commissioner recommended of. Patents involved) in here an article entitled changes certain made in it which were Appeals,” “Evolution of Patent Office by Congress in the Patent Act March 838-920 J.P.O.S. have provided 1839. This Act instead freely drawn from article this provided of the arbitrators in the Act of following portions opinion. As directly appeal lay an would to the points out, appeals Mr. Federico from D. Chief Justice the District Court of charged the actions of the officials C. hear and deter- He was directed to granting patents were not con- appeal pro- mine the “on the evidence templated by the Patent Acts of 1790 duced before the Commissioner.” Statutory provisions and 1793. 2, 1861, The Act of March 12 Stat. peals appeared as such first in the Patent plan appeals further modified the July 4, Act 1836. The Senate Com- appeal providing for an within resulting initial mittee which introduced the bill report: in the Act stated in its the Patent Office. this Act Section system provided appeals a of two within power It is obvious that [to office, pat- to a patents the examiner fuse in those cases where events, examiners-in-chief, appeal is allowed from and such of three board decisions of of Pen- appeal the Commissioner from this board to another Office, sions, Revenue, Internal Land of Patents. Commissioner Affairs, Comptrollers Indian his pointed Mr. ' out Federico As Treasury, notwithstanding the great pecuniary article: interests involved fact statute As matter decisions, and the their fact merely law further into enacted liberal no one those Bureaus is such grown developed practice had which provision made within through necessity, period up, over a as in the Patent Office. Office appeal. years. There was Commissioner, of ex- and also board tendency jurisdic- 5. The they aminers, time for some before Accordingly tion is to itself. extend appear in the law. year judges every encroached have states: Mr. Federico also upon du- more more executive only the of 1861 was Thus the Act The law ties of the Commissioner. development Ap- gave culmination of the which in a cases. few during preceding years. place peals took taken sustained many; board The Act established law the until it is asserted that grown up Commissioner, had judge, the Office and not the appellate At Office, and made it an tribunal. head separate appeal from same time and any he is to interfere authorized board the Commissioner was to overrule the enacted. Previous Act the latter order rule which the *23 effect for the Commissioner attempt in acted or make to execute. appeal separate him an and a in to appeal from board to the the Commis- matters If it said that these be except possibly did exist sioner ought judgment of the not to rest in might personally re- Commissioner Commissioner, is: the answer consider case. sup- of his a. He because is selected changed examiners, status familiarity posed business with the statutory a result of creation Office, and Patent transacted in the appeal from their should decision likely right is, therefore, be more be noted. judge, appointed with- than the who Basically, system re- knowledge mechanical out reference to until it further mained law was learning patent law. in by revised the Act of 1927. the Commissioner b. The fear that strong early as As 1870 there awas might err, a further demand would abolishing appeal to for movement judge, appeal provision from the for judges Office. outside infinitum, are since both and so ad report year 1869, In his Commis- for human. sioner of Patents Fisher summarized of Patents c. The Commissioner against he “now what termed the competent ought decide to be as appeal and to the useless mischievous” arising questions in the conduct his Mr. sets in courts. Federico forth of other the heads his office as are by Commissioner article case stated departments; and like in Fisher the form of “ten counts.” pertinent present consid- to the “counts” appeal from the Commis- d. An fol- which read as eration are 5 and provided, would is in fact sioner exist, lows: appeal present were even if the abolished; indeed, decision even the propriety to be 2. There seems no pro- judge final. It summary is not appeal from an execu- in act March judicial department; in sec. at all vided to a tive applicant may in file bill the Patent Office should not equity any having cog- unless, in circuit court be reversed in view of all thereof, patents evidence, thorough nizance “where has a court whatever, refused reason conviction that there was no reason- by either the Commissioner of Patents able basis for the decision. Justice,” the Chief and the com- agree earlier did not with the plainant may obtain decree authoriz- procedures appeal critics of the ing pat- the Commissioner to issue the July 8, 1870, an out- Act retained ent. appeal parte pro- side ex cases and appeal vided that taken to the interesting inject point It is at this Court the District of Columbia sit- complaints thus Com- voiced ting changes en banc. made stilled missioner Fisher have not been appeal procedure. the internal office appeal procedure actions where appeal procedure The resultant became of the Commissioner of Patents refus- complicated, costly consuming and time ing subjected patents applicants is prior and numerous studies were made appellate outside the Patent review to the Act of March 1927. This Act Thus, Fisher’s Office. major change made a in the Board of theory that the Commissioner is “more Appeals which, as outlined Mr. Fed- likely right judge” than a can be article, erico in his was: philosophy said to be the which under- recently report lies the released of The the Patent Office the two Within President’s Commission on the Patent appeals, to the Board of Examiners- System. XIII fol- Section contains the and from in-chief the latter lowing : Commissioner, replaced were single single being appeal, recog- The Patent should Office a Board of constituted having legal nized as technical Commissioner, Assistant Com- expertise, important deciding ques- missioners, and the Examiners-in- patentability. tions of While a empowered Board Chief. This viewing certainly legal court will have appeals from hear the adverse actions expertise, general perhaps techni- upon applications pat- of examiners knowledge, possess cal it seldom will ents, and from decisions in interfer- particular technical skill the art *24 specifies ence eases. each The act with which a Patent Office examiner appeal heard shall be at least three equipped. Further, only it is after Appeals. members of of the Board both the examiner and the Board of Appeals have concurred in the foregoing, refusal From the it seems that there of a claim that the matter comes before public been an has insistent demand reviewing court. Congress recognized Such concurrence pro- has to rejected by should not be type independent ap- the court vide for of some is, judgment, unless the action in peal its from the of decisions the Commis- clearly erroneous. sioner of Patents which demand seems not to have been shared all the Com- This recommendation should settle Congress missioners of Patents. must “scope review,” conflict over public have considered this demand to be defining responsibility the court’s to importance persisted pro- in to have be review of the Patent Office deci- viding independent appeals for in even sion, rather than substitution of its face criticisms such as those voiced judgment. own The court would de- by Commissioner Fisher. termine whether the Patent Of- fice had clearly reasonable basis for its deci- One in detects this recital of sion, not whether a background persistence different decision historical logically could have been independence reached on demand for of the tribunal per- the same record. appeals The burden of to hear de- applicant, suasion would be on the and cisions the Commissioner of Patents refusing providing independent appellate patents applicants. in for an The con- to type cept independence the Patent Office. in such review within even culminated within the Patent Office is paragraph of second section 7 The clearly and in Act of articulated excep- provision states an a newer and provided presi- March 1927 which for requirements of 3. section tion to appointment dential of the examiners-in- special appointment It concerns chief, with the advice and consent acting examiners-in- circumstances of Senate. requiring chief Presidential without pointment In- confirmation. Senate against background It is this historical stead, acting such examiners-in-chief meaning and that we must evaluate designated by the Commissioner impact of the terms used in 35 U.S.C. specially cir- under the stated therein end, To shall consider now § par. exception This cumstances. history provision. of this gives thus Commissioner section 7 acting limited to name exam- History 85 U.S.C. 7§ iners-in-chief and limits the use he Congress enacting 35 U.S.C. § designating particular make of them in provided, general policy, as a matter Appeals. panels of the Board of It be- for a ex- review adverse decisions of therefore, necessary, examine comes upon applications patents, aminers for background history and of this sec- appeals consisting a board of of the Com- paragraph ond of section 7 to determine missioner, the assistant commissioners exception whether intended the provided the examiners-in-chief and precedence stated take over therein in this section that: change long general standing per- The examiners-in-chief shall be independent appellate plan of we review legal knowledge competent sons of clearly paragraph 1 find of sec- stated ability. Commissioner, scientific The tion 7. commissioners, and the assistant exception provided par. 2 of shall examiners-in-chief constitute present appeared section first Appeals, which, Board of on written Cong., in H.R. 1st 79th Sess.H.R. appeal applicant, review shall Cong., Sess., p. Rep.No. 79th 1st upon adverse decisions of examiners purpose fol- of the bill as stated applications appeal patents. Each lows: shall be heard at three mem- least in- purpose bill is to of this Appeals, bers of Board of Patent Office the size crease hearing members empowering Appeals Board designated by the Commissioner. designate Patents power Board sole time, time, or from time grant rehearings. law primary more examiners A reference to 35 U.S.C. 3 shows office serve of that examiners each official thus named an official periods of time examiners chief *25 “appointed by President, by and with days any exceeding in calendar not year. the advice and consent the Senate.” Beginning 2,1927, with the Act March noting bill, support after of the Congress provided appeal boards board, appeals to the number of increased entirely persons must consist whose H.R.Rep.No. following appears in authority depended upon to act Presiden- p. 2: at appointment tial confirma- Senate training By and ex- reason of their tion, assuring independent an tribunal. law principal perience, examiners paragraph peculiarly The first serve fitted to section are examiners * * * Also, changed not been in substance since in chief. as examiners may properly on the It therefore considered services their it is believed that stating general policy opportunities for provide will Board gain knowledge desig- them more than one of shall wider these be a practices obtaining in of the nated examiner. divisions own, Patent Office other than their subsequently The above bill amended generally and of the arts and sciences passed by both the Senate and the House they develop exemplified Representatives. Conf.Rep.No. See pending applications patents, for as 2695, Cong., 79th 2nd Sess. opportunities well as for them to dem- above, It is clear from the and neither ap- onstrate their abilities future party argues otherwise, pointments that under the as full examiners in chief. Congress gave law above the Commis- pertinent portion bill reads: place sioner the Provided, primary designated by That the examin- examiner-in-chief him un- (35 exception ers and the law examiners of the Pat- der the to R.S. 476 U.S.C. 2) given any appeals. ent Office shall be authorized to on serve board of § chief, as examiners in but no such ex- The limited nature the first ex- shall aminer thirty days so serve for more than readily apparent. ception section any year calendar temporary duration and de- It was signed only by then direction of the Commis- backlog help eliminate the sioner of Patents. acting appeals Each ex- board. bill, passing The above after the House his aminer-in-chief was limited as to Representatives, period was sent to the required Sen- of service and to sit with regular ate where the bill was amended to read two board members. Each board as follows: hearing majority contained designation of members whose was inde- notwithstanding provisions That authority. pendent of the Commissioner’s
of section 476 of the Revised Statutes policy independent of an review (U.S.C., 2), title sec. the Commis- preserved. sioner of ignate the Patent Office was Patents is authorized to des- principal examiners of the ex- (60 The above law 35 U.S.C. Stat. grade having higher, aminer 7) expired August 7, 1949. In the requisite ability, to serve as examiners year Cong., Sess., same 81st 1st S. desig- in chief and such examiners so provided was introduced. This for a bill fully qualified nated shall be to act as permanent increase in the number of appeals members of the board of con- providing examiners-in-chief without by section 482 of stituted the Revised designated examiners-in-chief. After (U.S.C., 7): Pro- Statutes title sec. passing Senate, the bill was amended vided, That no such examiner shall so pro- Representatives House of ninety days serve for more than vide for examiners-in-chief. year: provided And calendar fur- finally provision enacted stated: ther, That not one such more than Section 482 of the Revised Statutes among shall be the members examiner (35 adding 7) is amended U.S.C. hearing appeals board of following paragraph: peal. Commissioner, “The when his dis- 2. This Act shall take effect Sec. necessary main- cretion considered approval and ex- shall the date tain the work of the board years pire three after date. current, may designate any examiner Cong., Sess., S.Rep.No. 79th 2nd grade high- primary examiner repeated H.R. the above statements in er, having ability, requisite to serve stated, expressly p. 2: 1030 and *26 periods as examiner in chief for exceeding not * * * each, any by three mem- six months are heard Cases Appeals designated quali- and the so shall be of the Board examiner bers provides that not fied to act as a member of the board amended measure Congress, pri- troduced into each state that appeals. more than Not changes language among have been “some mary shall examiner Thus, independent made” in section 7. hear- members anything of a research fails to ing reveal appeal.” 11. Stat. Congress intended, definitive nature that 4, approved March This bill was change except pointed out, as above Cong., 1617, H.R.Rep.No. legal 2nd provided 81st effect of the exception purpose Sess., paragraph stated that in the second of section 7. the Commission- was to allow amendment legislation concerning The final section designate “from er examiners-in-chief originated 1958, in 1958 In and 1959. appellate until work time to time 1864, Cong., Sess., in- 85th 1st was S. tem- and then discontinue current expanded troduced which the number Cong. designations.” porary U.S.Code permanent board members from nine to Serv.1950, report p. con- 1942. The also not more fifteen and also estab- than supporting offered reasons tained the compensation lished a for cer- new rate act, quoted previous respect to the Concerning tain Patent Office officials. supra. proposed increase in board members is no indication ap- There evidence of the increased number of view change 2557, peals board, intended H.R.Rep.No. to the previous not Bill did Sess., Cong. law. Senate Cong., & 85th 1st U.S.Code designated provide examiners-in- 5332, 1958, p. states: Admin.News provision chief and the House added the * * * With this increase [in referring tempo- by amendment, only peals], necessary it will be However, rary passed in 1946. act designating practice of continue the previous stated law whereas temporary other examiners to serve on a could serve “one such examiner” duty Appeals Board of tours board, “not more law stated number but also to increase the primary could serve examiner” than one serving. highly this measure is While on a board. adjusting man- as a means of desirable 1952, 7 was enacted. 35 U.S.C. § peak periods power to take care of language changed para. 2 was fluctuating workload, felt provide more than one such that “[n]ot large num- such a there should not be may primary examiner” serve on board. temporary One rea- ber of members. provide preliminary did not draft removed son is that these men are duties, examiners-in-ehief. See disadvan- their other Proposed tageously Revision and Amendment of affects the work examina- Comm, Laws, Preliminary Draft, they from which tion in the divisions Judiciary temporary H.R. In H.R. drawn, course and of Cong., pro- Sess., 81st 2nd it was members could not be as efficient desig- serving vided could permanently. the Commissioner is ac- those grade permanent cordingly nate “of proposed examiners-in-chief higher” Appeals GS-13 or and “not more than members of the Board grade raising shall” one such GS-13 examiner not more than increased Cong., be on a board. In H.R. 82nd more than from 9 to the number Sess., 1st the second bill introduced into above data submitted 15. While the changed Congress, language not be 15 members shows that presently appearing carry in section 7. work of the on the sufficient Cong., present H.R.Rep.No. 1923, 2nd in- 82nd Sess. Board of Cong., filing S.Rep.No. appeals, 2nd 82nd creased level Sess., Cong. membership permanent Admin.News U.S.Code & of 15 mem- commenting p. 2394, considerably on H.R. the num- bers will reduce CongJ Sess., temporary in- 82nd bill members 2nd the third which need ber *27 concerning assigned, bill, and will allow for the House the above 19,199: possibility Cong.Rec., task of re- at that when the Part ducing backlog applications Members, number, three sit pending before examiners is ac- hearing panel, both oral and written complished appeals the number of filed argument. panel The studies the brief may decrease to such an extent as to arguments, rendering and its decision. being capable handled them designated more No than one member alone, possibly an occasional panel. can sit on a One writes designation. temporary The bill is second, speaks with the then decision — of 15 that the total number worded person on submits the third filled the workload need not be when panel. great This takes a deal of time so warrants. delays. with much detail and extended relating temporary provision They last are have the word — designations since this is is retained then taken to the Court of Customs very useful occasional assistance and Patent and suit de for testing provides and also a means of nova can taken to the District [sic] * ** prospective members. new Court of the United for States District of Columbia. Concerning salary increase the re- port states: and the This is a difficult work enjoy reputation Board must * * * posi- Appointments to these highest personal reputation in- for recommended the Presi- tions are honesty tegrity judicial in an of- the Senate. dent confirmed economy importance in of first fice responsibilities duties and com- highest enjoys It of the Nation. appointment executive bined with kind of and secrets. The confidences quirements positions indicate these legal rep- finest minds of international pro- that salaries in excess those practice this tribunal. utation before employees vided career civil service [Emphasis added.] justification appropriate. Further Congressman The basis for Libonati’s proposed in the bill is for the salaries desig- statement that “No more than among unique positions are these panel,” nated member can sit professional positions in Government testimony found Robert C. they require the combination Watson, Patents, then Commissioner of highest level, judicial and scien- Judiciary who testified before the House proper dis- attainment tific July 30, Subcommittee No. assigned charge responsibilities spell Commissioner Watson was asked to to them statute. appeal procedure out the in the Patent quasi-judicial duties Office, including panels. selection Appeals are the Board members Commissioner Watson stated that at that exacting in the most difficult regular desig- time 9 and 10 members required law Office. nated members constituted the class from in chief be scien- the examiners panels were selected. He ex- tifically competent and trained law. plained panel comprised great sig- unusually work Their regular designated members and one importance in the tech- nificance expressly pointed member and out development nological and industrial appoint he could not mem- * * * Nation. of this panel bers serve on a 3. Mr. Sam Kingsley, interest are the comments W. further then Personnel Officer of Of Office, Congressman made Libonati1 the Patent and Mr. Leo P. Mc- Illinois, ranking Judiciary the time a V. Libonati member of the House 1. Roland Com mittee. *28 peals board, Cann, are the most and exact- of the an examiner-in-chief difficult ing required testified, in the Patent further It is elaborated who also Office. eligible increasing appointment, necessity num- for be of to the scientifically permanent examiners-in-chief examiners-in-chief. of ber competent and trained in the law. New testimony is Commissioner Watson’s employees possessing this career of 2557, supra, in H.R. wherein reflected professional combination abilities of indicating figures num- are set forth possess high judicial also level of acting persons members of as board ber judgment required per- successful for figures through 1957. The from legal formance of scientific (1958) range high from a of 20.4 required decisions them. Recom- report “The The states low 11.0 mendations to the President for serving patent appeal of men number pointments members new averaged during per period work temporary Board are made after year.” assignments detail to determine regu- concerning salary professional competence In bill pro- posed appointee. [Emphasis lar examiners-in-chief added.] Cong., introduced, 1845, 86th 1st was S. There can about amending H.R.Rep.No. Sess., section 7. acting temporary need for examiners- Sess., Cong., 86th 1st U.S.Code practical reality in-chief and the of hav- Cong. 1959, p. 2834, states & Admin.News ing appointed by them the Commissioner part: when circumstances are such as to Appeals A member of the Board of require appointment. appealed patent reviews cases however, posed, The basic issue here category of sciences and techno- providing temporary whether for such logical may involve claims arts which acting examiners-in-chief, the mean- competent where definitions ing permits the Commis- the statute exact contribution to the art ex- concept sioner erode of an its basic ceptionally difficult to make. His de- independent quasi-judicial his review of highly complicated cisions involve practical operation decisions. The matters, including interpretations of a system given since the very advanced, technical character authority has been Cles- observed lating developments to the latest article, ner and Clesner their electricity, mechanics, diverse fields of Board of Patent Office— electronics, chemistry, electrochemis- stating: (1958), 40 J.P.O.S. 298 try, physics, drugs, physics, etc. atomic * * * heavy exceptional require His decisions Due to the workload knowledge primary of, experience there have been instances of and seasoned legal serving acting with, prior precedents, examiners decisions examin- years. Board, for four decisions of the U. ers-in-chief out five S. Appeals, present Court of Customs and At the Board consists of more acting appointed and decisions of the other Federal members than mem- ju- courts. bers. This the intent defeats independence may pos- Board dicial being presiden- sess its members study responsi- A the duties appointees [Emphasis tial life. required examiners-in-chief, bilities added.] together high professional with the qualification requirements The above is all the informa- available their appointment posi- I tion have found as to the intent of executive to those concerning designated tions, exam- serve accentuate the inade- quacy of Classification Act salaries of iners-in-chief the uses to be made quasi-judicial summary, only $13,970. duties them. it seems clear Congress regarded designated Ap- the members the Board examiners- temporary proposed appointee. as a measure to re-
in-chief tence of the backlog and, such, responsibility duce ultimate for decision of regarded appeals was, think, exception to be an them to be vested in those general governing appoint- provisions examiners-in-chief act whose *29 delegated 35 ments of examiners-in-chief under was to them of Presi- reason regular composition appointment, dential 3 and the and who thus U.S.C. were § para- independent the first boards of of the as the Commissioner graph appears power authority It also source of of 35 U.S.C. 7. their and to Congress equally that considered that examiners- act. It seems that the stat- clear designated by majority Commissioner ute the cannot mean that a or all in-chief backlog only any appeals when a the should be utilized members board of practice would and should consist of examiners-in-chief des- existed that regularly ignated appointed ex- cease the Commissioner. when cope could with aminers-in-ehief policy All and the internal evidence peal underlie These considerations load. foregoing in seem to considerations proposed present to all the amendments clearly Congress me to did establish that clearly that section and indicate any not au- intend to sanction scheme of but an paragraph of section second thorizing boards, majority a of whose exception the first to section 3 to desig- members were examiners-in-chief Congress paragraph also section nated also Commissioner. view, appears have of the since to been changes seems me in to that clear provision permitting inception of language permit made in 7 do section designate examin- Commissioner “primary more than one examiner” act- ers-in-chief, patent exam- not all that ing by designation as an examiner-in- grade higher primary or iners of the any chief to serve on one board. suitably qualified as to serve would be I this, think, shall now consider Assistant Com- em- I examiners-in-chief Congres- significance Reynolds’ interpretation phasizes missioner of the para- the second any sional enactment of ex- statute under which number very places graph def- of section 7 which designation aminers-in-chief, acting by of the on the' extent inite limitations given Commissioner, may of the act on his des- to use Commissioner’s long one of board so as more than ignated on boards examiners-in-chief grade. primary I them examiner for elim- appeal. the need In addition to As shall consider the statutes. first backlog, inating Patent Office forth, it clear above set seems utilizing designated purpose for stated Congress provided intended appears have also examiners-in-chief designated examiner-in- that but one “trying-out,” probationary as a been any given chief act on could board were, ascertain which period, as it provision panel. serving suitable were so the examiners designated examiners-in-chief was added for Presiden- consideration further amendment the House a Senate regularly appointed appointment as tial sponsored as without discussion bill clearly Congress examiners-in-chief. change contem- to whether a in law was recognized an exam- duties of Only reading plated. of the literal na- quasi-judicial were iner-in-chief supports the con- 1950 law in vacuum ture; must be examiners-in-chief underlying clusion Assistant Commis- scientifically competent and trained Congress Reynolds’ sioner law; appointments of new and that changed policy its reversed made can best be “pri- applied members limitation that appointee prospective designated mary as exam- after service examiners” designated apply and did not if the temporarily examiner-in- iners-in-chief grade had a during examiner-in-chief an evaluation time chief. "higher” primary compe- examiner than professional made charged grade. agree with its administration is or- Assistant I cannot with Congress dinarily given great weight Reynolds in- S. v. —U. Trucking change Amer. Asso. 310 U.S. to so this limitation tended ig- , requires S.Ct. 84 L.Ed. [60 To do so one to 1345] the statute. — disagreeing negate contrary expressions reason exists for nore and modifying Congress interpretation placed and 1958-59. in 1952 upon Office, the statute the Patent employed the first exemplified by the Commissioner’s primary expression “such examiner” in application. decision in the involved been able to the statute. have not * * * change made ascertain whether was “change English” Trucking Supreme or whether that In American phrase agreed meant include as a class with the Interstate Com- Court *30 designated by the au- examiners-in-chief Commission’s decision its merce “primary thority from examiner limited to Commissioner statute was under the grade higher.” securing safety operation. In or answer arguments urging opposite con- The Revisor’s note refers opinion states, struction, con- the court’s changes changes lan- made “some cerning legislative intent, “in fact guage” suggest and does not way.” points other 310 evidence changes made in the substantive were Here, 548, 60 at we U.S. S.Ct. section. presented attempt are with an to ex- conflicting authority, pand in face of evi- thing clearly appears One which is that statutory limitations, by dence Congress at all times has considered des- by placed on the statute ignated class, construction examiners-in-chief, as a utilizing Reynolds. temporary expedient Assistant Commissioner be a persons unproven ability by and its rec- Moreover, previous we are not bound ognition many regardless them, jurisdiction cases in which exercises of might grade, unqualified for Presi- questioned. power to act was not Brown appointment dential under section 3 States, 370 U.S. Shoe Co. v. United examiners-in-chief. 307, 363, 510 82 8 L.Ed.2d S.Ct. (1962). precedents
I shall next consider which exist as to the construction of argues hold The solicitor also parte Beyerstedt, In Ex section 7. 103 improperly the board to be constituted USPQ (Bd.App.1952) 189 the board held upon patents a cloud” would “cast only prohibited that section 7 more than sulting from decisions of other boards primary designated examiner as an similarly consequence This constituted. acting examiner-in-chief on a board. argumentative is and no at best authori- This decision arose under the terms for our ties have been cited considera- opinion of the 1950 law and the determining tion it is rele- whether any investigation board does not reveal jurisdiction. vant to the issue of As congressional policy as to or intent. The dealing earlier, stated arewe here joined by designated decision was two jurisdiction an issue as to which we regular examiners-in-chief, with no choice have but to consider this issue. writing opinion. member consequence The ultimate of the deci- illegally sions of such constituted forty boards I also note some decisions cited responsibility Commissioner, is the solicitor in his brief wherein two gave problem. whose acts rise to the members sat the board. challenge validity No On the effect of made in so- board was those cases. The finding jurisdiction of lack of in relation argues: licitor previous judgments and decisions cer that, guidelines It is submitted since the con- tain found in Chicot Coun agency ty Bank, struction of a statute Dist. v. Baxter State U.S. (1940). type L.Ed. Board of 60 S.Ct. review previously ignored. de- Supreme had must Court not be To do so is to legislate jurisdictional judicial statute administrative clared legitimate fiat and court had acted this is not a which the district function either of Ashton Cameron v. Patents unconstitutional. Dist., logical Imp. or of County 298 U.S. this court. Pursued to its Water conclusion, interpre- 80 L.Ed. Commissioner’s 56 S.Ct. final paragraph tation of the to set aside second of 35 Chicot refused judgment before U.S.C. could rendered create boards of and decision composed entirely held unconstitutional. examiners-in-chief statute juris- designated by were without the Commissioner district courts of Pat- While only limitation, according after ents. such matters diction to entertain interpretation, the Commissioner’s Ashton, judgments had become all desig- that not more than one of the so binding on all Ashton were final before “pri- nated examiners-in-chief at- subject parties to collateral mary grade. significant, examiner” retrospect, district tack. Viewed think, designation of an ex- jurisdiction but did have court “primary aminer as examiner” title of analysis, stated, after extensive court grade higher ad- determined always past be erased cannot “The regulations ministrative *31 judicial U.S. at 308 declaration.” new given particular Office. The name from judgments 374, at 318. Previous 60 S.Ct. time to time to the functions the mem- were thus valid. examining corps bers de- been by by ap- termined the Commissioner designa urges that The solicitor propriate Acting order. administrative of “discretion.” tion of a matter boards examiners-in-chief the Commis- v. However, Trade Comm. in Federal interpretation designat- sioner’s could be Co., 51 S. Raladam 283 U.S. having ed from class of examiners (1931) the 587, 590, 1324 75 L.Ed. Ct. suggests may they a title which that Supreme stated: Court grade higher primary have than the * ** grade. examiner Under the decision powers be cannot Official Reynolds Assistant Commissioner a valid neces- beyond and terms extended composed board of could be grant. If sary implications having persons expertise little more than they desirable, must powers be broader primary long they examiner so have They Congress. can- by be conferred “higher” grade. This could be in name by merely administra- assumed be perhaps remotely and be but asso- officers; they created can nor tive ciated and with functions skills re- proper exercise by in the courts quired of one who becomes an examiner- judicial functions. of their appointment. in-chief Presidential lip merely pay ignore or cannot We Entire could boards be selected from examiners-in- the fact service to “higher” designated these classes of ex- appointed the President chief are aminers-in-chief whose sole and of the Senate and consent the advice act from derived the Commissioner. class á they must selected concept What then becomes of the legal knowl having competent persons appeal Office should Patent Compare ability. edge and scientific by boards, majority be decided whose Examiners Trial Ramspeck v. Federal members are authorized act reason L. Conf., 73 S.Ct. U.S. appointment of Presidential and Senate A.L. (1953); v. United States Ed. 872 Throughout legisla- confirmation? Inc., Lines, U.S. Truck Tucker history pertinent exception tive S.Ct. expressed in section 7 it is evident Congress provide intended to an inde- safeguards enact- provided pendent appeal and end quasi-judicial to this independent to insure ed pri- not more than one examiner 64 CCPA mary grade on a could be Application NEAVE, of Arthur S. Jr. apparent. given panel. The reasons Appeal No. 7664. primary lowest has the examiner experience perhaps of ex- level United States Court of Customs pertise qualified on the Appeals. to serve those and Patent appeal Appeals. Board of Since Jan. from a decision made another taken primary reason- examiner it seems both logical require that the
able majority composed mem- of a
board be qualifications so act have
bers whose President with
been determined
the advice consent the Senate independently
who act of the Com- Manifestly, wherein lies an
missioner.
independent majority if a or the review expertise, are of the board lacks
whole acting close on a trial basis and under the
scrutiny Commissioner, and are equal step title removed or
but person decision is under whose Independent by superi-
review? review expertise
ors with is in effect lost. requirements
think the basic of an in-
dependent appellate simply review would interpretation
not be met under the here
advanced Assistant Commissioner
Reynolds upholding legality question. Further,
board here interpretation,
his the limited
now vested the Commissioner would beyond anything I
be extended
have been
able to ascertain was intended
Con-
gress.
fact, my
view
Washington,
Laurence,
D.
&
Laurence
contrary to the intent demonstrated.
Sherman,
Laurence,
(Dean
I.
Herbert
C.
Finding
Ias
do on the record before
counsel),
C.,
D.
Washington,
improperly
us that
the board
below
pellant.
constituted in
violation
the second
Washington,
Schimmel,
D. C.
Joseph
paragraph of 35
I
U.S.C.
would find
C.,
ap
Washington,
Armore,
(Jack
valid decision was rendered
D.
E.
pellant’s appeal from the decision of the
counsel)
of Pat-
for the
primary
purported
examiner. The
deci
ents.
sion entered
the board in this case is
Judge,
WORLEY,
legal nullity.
Chief
me,
Before
It seems to
there
duty
fore,
AL-
RICH, MARTIN,
our clear
to dismiss the
SMITH
lacking
jurisdiction
appeal we are
Judges.
MOND,
proceed
to a consideration
Ayrshire
Corp.
Collieries
v.
decision.
Judge.
SMITH,
States,
132, 144,
United
U.S.
S.
defining
appeal,1
single