33 F.3d 1526 (Fed. Cir. 1994), 92-1381, In re Alappat

Docket Nº:92-1381.
Citation:33 F.3d 1526
Party Name:31 U.S.P.Q.2d 1545 In re Kuriappan P. ALAPPAT, Edward E. Averill and James G. Larsen.
Case Date:July 29, 1994
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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33 F.3d 1526 (Fed. Cir. 1994)

31 U.S.P.Q.2d 1545

In re Kuriappan P. ALAPPAT, Edward E. Averill and James G. Larsen.

No. 92-1381.

United States Court of Appeals, Federal Circuit

July 29, 1994

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Alexander C. Johnson, Jr., Marger, Johnson, McCollom & Stolowitz, P.C., Portland, OR, argued for appellants. With him on the brief was Peter J. Meza. Also on the brief was Francis I. Gray, Tektronix, Inc., Wilsonville, OR. Allen M. Sokal, Finnegan, Henderson, Farabow, Garrett & Dunner, of Washington, DC, argued for amicus curiae, Federal Circuit Bar Association. With him on the brief were Gerald H. Bjorge, Herbert H. Mintz and George E. Hutchinson.

Fred E. McKelvey, Solicitor, Office of the Sol., Arlington, VA, argued for appellee. With him on the brief were Lee E. Barrett and Richard E. Schafer, Associate Sol. Of counsel were Albin F. Drost and John W. Dewhirst.

Herbert C. Wamsley and Richard C. Witte, Intellectual Property Owners, Inc., Washington, DC, were on the brief for amicus curiae, Intellectual Property Owners, Inc.

Richard H. Stern, Graham & James, Washington, DC, was on the brief for amicus curiae, Seagate Technology, Inc. Also on the

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brief was Edward P. Heller, III, Patent Counsel.

Fred I. Koenigsberg and Nancy J. Linck, Cushman, Darby & Cushman, Washington, DC, were on the brief for amicus curiae, American Intellectual Property Law Association. Also on the brief were Harold C. Wegner and H. Ross Workman, Wegner, Cantor, Mueller & Player, Washington, DC. Of counsel was William S. LaFuze.


RICH, Circuit Judge, with whom:

as to Part I (Jurisdiction): PAULINE NEWMAN, LOURIE and RADER, Circuit Judges, join; ARCHER, Chief Judge, NIES and PLAGER, Circuit Judges, concur in conclusion; and MAYER, MICHEL, CLEVENGER and SCHALL, Circuit Judges, dissent; and

as to Part II (Merits): PAULINE NEWMAN, LOURIE, MICHEL, PLAGER and RADER, Circuit Judges, join; ARCHER, Chief Judge, and NIES, Circuit Judge, dissent; and MAYER, CLEVENGER and SCHALL, Circuit Judges, take no position.

Kuriappan P. Alapatt, Edward E. Averill, and James G. Larsen (collectively Alappat) appeal the April 22, 1992, reconsideration decision of the Board of Patent Appeals and Interferences (Board) of the United States Patent and Trademark Office (PTO), Ex Parte Alappat, 23 USPQ2d 1340 (BPAI, 1992), which sustained the Examiner's rejection of claims 15-19 of application Serial No. 07/149,792 ('792 application) as being unpatentable under 35 U.S.C. Sec. 101 (1988).


This court must determine whether the Board's reconsideration decision constitutes a valid decision over which this court may exercise subject matter jurisdiction pursuant to 28 U.S.C. Sec. 1295(a)(4)(A) (1988) and 35 U.S.C. Sec. 141 (1988). As discussed below, the legality of the Board panel which issued the reconsideration decision is in question, thus raising the issue of the validity of the decision itself and consequently our authority to review that decision. Therefore, before addressing the merits, it is appropriate that we first determine that the decision was rendered by a legally constituted panel to ensure that a jurisdictional cloud does not hang over our holding on the merits. See In re Bose Corp., 772 F.2d 866, 869, 227 USPQ 1, 3-4 (Fed.Cir.1985). 1

Although Alappat does not contest the validity of the Board's reconsideration decision, jurisdiction cannot be conferred on this court by waiver or acquiescence. Coastal Corp. v. United States, 713 F.2d 728, 730 (Fed.Cir.1983). This court therefore has raised the issue of jurisdiction sua sponte, as is its duty. See Mansfield, Coldwater & Lake Mich. Ry. Co. v. Swan, 111 U.S. 379, 382, 4 S.Ct. 510, 511, 28 L.Ed. 462 (1884); Wyden v. Commissioner of Patents & Trademarks, 807 F.2d 934, 935, 231 USPQ 918, 919 (Fed.Cir.1986); see also 5 WRIGHT & MILLER, FEDERAL PRACTICE AND PROCEDURE Sec. 1393 (1990). To this end, this court, having decided to hear the case in banc, issued an Order on December 3, 1992, requesting briefing on the following three questions:

(1) When a three-member panel of the Board has rendered its decision, does the Commissioner have the authority to constitute a new panel for purposes of reconsideration?

(2) If the Commissioner lacks such authority, is the decision of such a new panel a decision of the Board for purposes of 28 U.S.C. Sec. 1295(a)(4)(A)? If not, does this

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court have jurisdiction to reach the merits of the appealed decision?

(3) What is the relationship, if any, between the "reconsideration" action taken in this case and "rehearings" by the Board provided for in 35 U.S.C. Sec. 7(b)?

Consistent with our discussion below, we hold that the answer to the first question is yes. Consequently, we need not address the second question. As to the third question, we hold, for the reasons explained later, that the "reconsideration" by the Board was a "rehearing" as provided for in 35 U.S.C. Sec. 7(b) (1988).

  1. Background

    In an Office Action mailed December 5, 1989, the Examiner finally rejected claims 15-19 under 35 U.S.C. Sec. 101 as being directed to non-statutory subject matter. Alappat appealed this rejection to the Board pursuant to 35 U.S.C. Sec. 134 (1988), and a three-member panel made up of Examiners-in-Chief Lindquist, Thomas, and Krass reversed the Examiner's non-statutory subject matter rejection in a decision mailed June 26, 1991. The Examiner then requested reconsideration of this decision, pursuant to section 1214.04 of the Manual of Patent Examining Procedure (MPEP), stating that the panel's decision conflicted with PTO policy. The Examiner further requested that such reconsideration be carried out by an expanded panel.

    An expanded eight-member panel, acting as the Board, granted both of the Examiner's requests. The expanded panel was made up of PTO Commissioner Manbeck, PTO Deputy Commissioner Comer, PTO Assistant Commissioner Samuels, Board Chairman Serota, Board Vice-Chairman Calvert, and the three members of the original panel. On April 22, 1992, the five new members of the expanded panel issued the majority decision now on appeal, authored by Chairman Serota, in which they affirmed the Examiner's Sec. 101 rejection, thus ruling contrary to the decision of the original three-member panel. The three members of the original panel dissented on the merits for the reasons set forth in their original opinion, which they augmented in a dissenting opinion.

    The majority stated that its reconsideration decision was a "new decision" for purposes of requesting reconsideration or seeking court review of that decision. It did not, however, vacate the original three-member panel decision. Instead, the majority indicated that the original, three-member panel decision was only "modified to the extent indicated." Alappat, 23 USPQ2d at 1347. That "modification" was, however, a de facto reversal of the original panel's decision, affirming instead of reversing the examiner.

  2. Discussion

    (1) The Legality of the Board's Rehearing Panel

    When statutory interpretation is at issue, the plain and unambiguous meaning of a statute prevails in the absence of clearly expressed legislative intent to the contrary. See Mansell v. Mansell, 490 U.S. 581, 592, 109 S.Ct. 2023, 2030, 104 L.Ed.2d 675 (1989); Hoechst Aktiengesellschaft v. Quigg, 917 F.2d 522, 526, 16 USPQ2d 1549, 1552 (Fed.Cir.1990). In this case, the composition of the Board and its authority to reconsider its own decisions, and the Commissioner's authority over the Board, are governed by 35 U.S.C. Sec. 7, which reads:

    (a) The examiners-in-chief shall be persons of competent legal knowledge and scientific ability, who shall be appointed to the competitive service. The Commissioner, the Deputy Commissioner, the Assistant Commissioners, and the examiners-in-chief shall constitute the Board of Patent Appeals and Interferences.

    (b) The Board of Patent Appeals and Interferences shall, on written appeal of an applicant, review adverse decisions of examiners upon applications for patents and shall determine priority and patentability of invention in interferences declared under section 135(a) of this title. Each appeal and interference shall be heard by at least three members of the Board of Appeals and Interferences, who shall be designated by the Commissioner. Only the Board of Patent Appeals and Interferences has the authority to grant rehearings.

    35 U.S.C. Sec. 7 (1988) (emphasis added).

    For the reasons set forth below, we hold that Sec. 7 grants the Commissioner the

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    authority to designate the members of a panel to consider a request for reconsideration of a Board decision. This includes, as in this case, the Commissioner designating an expanded panel made up of the members of an original panel, other members of the Board, and himself as such, to consider a request for reconsideration of a decision rendered by that original panel. The Board's reconsideration decision therefore constituted a valid decision over which this court may exercise subject matter jurisdiction.


    At the outset, we note that Sec. 7(a) plainly and unambiguously provides that the Commissioner, the Deputy Commissioner, and the Assistant Commissioners are members of the Board. Section 7(b) plainly and unambiguously requires that the Commissioner designate "at least three" Board members to hear each appeal. By use of the language "at least three," Congress expressly granted the Commissioner the authority to designate expanded Board panels made up of more than three Board members. 2

    There is no evidence in the legislative history of Sec. 7, or Title 35 as a whole, clearly indicating that Congress intended to impose any statutory limitations regarding which Board...

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