111 F.3d 890 (Fed. Cir. 1997), 90/003373, In re Mac Dermid

Docket Nº:90/003373
Citation:111 F.3d 890
Party Name:In re Mac Dermid
Case Date:April 15, 1997
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 890

111 F.3d 890 (Fed. Cir. 1997)

42 U.S.P.Q.2d 1479


No. 96-1491.

Reexamination No. 90/003,373.

United States Court of Appeals, Federal Circuit

April 15, 1997

James R. Cartiglia, St. Onge, Steward, Johnston & Reens, L.L.C., Stamford, Connecticut, filed a Response to Appellee's Suggestion for Hearing In Banc. With him on the response was William J. Speranza.

Nancy J. Linck, Solicitor, Patent and Trademark Office, Washington, D.C., filed a Suggestion for Hearing In Banc for appellee. With her on the suggestion were Albin F. Drost, Deputy Solicitor, and Craig R. Kaufman and Kevin T. Kramer, Associate Solicitors.


The Commissioner has suggested initial in banc hearing in this case because the Commissioner believes that our precedent holding that we review fact findings of the Patent and Trademark Office's (PTO) Board of Patent Appeals and Interferences in patentability decisions for clear error should be overruled and a more deferential standard based on the Administrative Procedure Act (APA) should apply. We conclude that a precondition for in banc hearing is not met in this case.

In In re Kemps, 97 F.3d 1427, 1429-31 & nn. 5, 6, 40 USPQ2d 1309, 1312-13 & nn. 5, 6 (Fed.Cir.1996), we stated that a precondition that must be met before the court can decide the standard of review issue is that the resolution of the review standard not be "irrelevant to the determination of the case." In Kemps, we declined to reach the applicability

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of the APA because the PTO fact findings were upheld under the less deferential "clearly erroneous" standard of review. It was therefore irrelevant whether a more deferential standard of review should apply; the same result would necessarily...

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