Graves, In re, 95-1199

• Decision Date: 09 November 1995
• Docket Number: No. 95-1199,95-1199
• Citation: 69 F.3d 1147,36 USPQ2d 1697
• Parties: In re Michael Ben GRAVES.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1147

69 F.3d 1147

36 U.S.P.Q.2d 1697

In re Michael Ben GRAVES.

No. 95-1199.

United States Court of Appeals Federal Circuit.

Nov. 9, 1995.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

Dec. 14, 1995.

Michael B. Graves, Los Angeles, California, submitted pro se.

Nancy J. Linck, Solicitor, Office of the Solicitor, of Arlington, Virginia, submitted for respondent. With her on the brief were Albin F. Drost, Deputy Solicitor, James T. Carmichael and Joseph G. Piccolo, Associate Solicitor.

Before RICH, Circuit Judge, MICHEL, Circuit Judge, and NIES, Senior Circuit Judge. ^*

RICH, Circuit Judge.

Michael Ben Graves (applicant) appeals from the 30 September 1994 and the 20 January 1995 decisions of the United States Patent and Trademark Office Board of Patent Appeals and Interferences (Board) (Appeal No. 93-4456). In its 20 January decision, the Board denied the applicant's request that the Board change its 30 September decision. In its 30 September decision, the Board affirmed the examiner's final rejection of claims 4-6 of application Serial No. 07/870,452, entitled "Power Interconnect Tester." The Board affirmed the rejection of claims 4 and 6 under 35 U.S.C. Sec. 102(b) as being anticipated by Rockwell et al., U.S. Patent No. 4,399,400 (Rockwell), and affirmed the rejection of claim 5 under section 102(b) as being anticipated by Coben, U.S. Patent No. 4,814,693 (Coben). We affirm.

BACKGROUND

The claimed invention is a device and method for testing electrical systems by applying signals, checking for the continued presence of those applied signals, identifying points or wires that are shorted, recording such data, and comparing that data to previously recorded data to check for the presence of errors. Independent claims 4, 5, and 6 are the only claims remaining in the application.

We must resolve two primary issues: first, whether we have subject matter jurisdiction; second, since we conclude that we do have jurisdiction, whether the Board correctly upheld the examiner's rejections.

The applicant appealed the examiner's final rejection of claims 4, 5, and 6 to the Board under 35 U.S.C. Sec. 134. ¹ The Board issued its first decision on 30 September 1994, affirming the examiner's final rejection of all three claims. After the Board entered its first decision, the applicant, pursuant to 37 C.F.R. Sec. 1.197(b), ² filed with the Board a request for reconsideration of the 30 September decision. On 4 January 1995, before the Board entered its decision on the applicant's request for reconsideration, the applicant filed with the Commissioner of Patents and Trademarks (Commissioner) a notice of appeal to this court. On 20 January 1995, the Board entered its reconsideration decision, which denied the applicant's request to modify its 30 September decision.

DISCUSSION

I Jurisdiction

Since the applicant filed a notice of appeal after filing a Rule 197(b) request for reconsideration with the Board and before the Board had rendered a decision on that request, we must decide two related jurisdictional issues: first, whether the Board had jurisdiction to render its decision on the applicant's request for reconsideration after the applicant had filed the notice of appeal, and second, whether we have jurisdiction to hear the merits of this appeal. The Commissioner's brief concedes that we may have jurisdiction.

A. The Board's Jurisdiction

In In re Allen, 115 F.2d 936, 28 C.C.P.A. 792 (CCPA 1940), ³ one of this court's predecessors concluded "that upon the filing of a notice of appeal from an appealable decision, and reasons of appeal, ⁴ with the commissioner, the subject matter of the appeal is transferred to this court, and that thereafter until the appeal has been disposed of by us the tribunals of the Patent Office have no jurisdiction to grant a motion for reconsideration of the decision appealed from, even though such motion was made before the filing of such notice of appeal." Id. at 941, 28 C.C.P.A. at 798 (emphasis added) (footnote added). But cf. Loshbough v. Allen, 359 F.2d 910, 912, 149 USPQ 633, 634-35 (CCPA 1966) (discussing some functions that the Board may perform despite the applicant's having filed a notice of appeal and overruling In re Allen to the extent it would prohibit the Board from performing those functions); In re Grier, 342 F.2d 120, 123, 144 USPQ 654, 657 (CCPA 1965) (after an applicant has filed a notice of appeal in an ex parte case, the Board still may "exercise a purely ministerial function in its administrative capacity"). Thus, if the Board's 30 September 1994 decision was an "appealable decision" at the time the applicant filed his notice of appeal, that filing may have vested this court with jurisdiction and divested the Board of jurisdiction to render its decision on the then-pending Rule 197(b) reconsideration request. Under the facts of the present case, however, the applicant's mere filing of the notice of appeal did not instantly vest jurisdiction in this court.

On 4 January 1995, when the applicant filed the notice of appeal to this court, more than two months had passed since the Board had issued its 30 September 1994 decision. Thus, the notice was too late if based upon the 30 September decision. ⁵ In other words, on 4 January, the 30 September decision was no longer an "appealable decision" in the sense contemplated in In re Allen. Consequently, the applicant's mere filing of the notice while his Rule 197(b) request for reconsideration was pending did not deprive the Board of jurisdiction to further consider the request since no appealable Board decision existed at the time the applicant filed the notice. We conclude that the Board had jurisdiction to enter its reconsideration decision on 20 January 1995.

B. The Federal Circuit's Jurisdiction

We next must determine whether the applicant's 4 January notice of appeal was effective to give this court jurisdiction. We always have jurisdiction to determine our jurisdiction. See In re Alappat, 33 F.3d 1526, 1530, 31 USPQ2d 1545, 1546 (Fed.Cir.1994) (in banc) (discussing this court's duty to ensure it has jurisdiction). The issue here concerns whether the applicant filed his notice of appeal too early to be effective. The deadline for filing a notice of appeal based upon that 20 January decision expired 21 March 1995, i.e., two months and one day after 20 January. Thus, the applicant filed the notice of appeal not only before the deadline, but also more than two weeks before the Board rendered the only decision on which the appeal could be based under the facts of this case.

Timeliness of an appeal of an agency order to this court is governed by Federal Rule of Appellate Procedure (FRAP) 15(a), which merely states that the appeal must be filed "within the time prescribed by law." Fed.R.App.P. 15(a). The applicable section of the Code of Federal Regulations, section 1.304(a)(1), ⁶ is also unclear as to the date before which an applicant may not file an effective notice of appeal to this court. In the absence of a clear legislative command we will not, on the facts of this case, deny the applicant the right to appeal a final Board decision to this court.

When an applicant files a notice of appeal after filing a Rule 197(b) request and before the Board has rendered its decision in response to that request, and when no appealable decision exists when the applicant files the notice of appeal, the mere filing of the notice does not deprive the Board of jurisdiction to render its reconsideration decision and the applicant has filed the notice "within the time prescribed by law." We, however, cannot exercise jurisdiction over the appeal before the Board enters its reconsideration decision on the Rule 197(b) request.

The notice of appeal in the instant case ripened into an effective appeal on 20 January 1995 upon the disposition of the applicant's request for reconsideration, wherein the Board refused to modify its original opinion. Our jurisdiction to hear the appeal was, in effect, suspended until the Board acted upon the Rule 197(b) request for reconsideration and rendered its reconsideration decision. ⁷ We conclude that, under the facts of this case, we have jurisdiction to consider the merits of this appeal.

II

The Rejections Under 35 U.S.C. Sec. 102(b)

Anticipation under section 102(b) is a factual determination, which we review under the clearly erroneous standard. See, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 390, 21 USPQ2d 1281, 1283 (Fed.Cir.1991) (citing In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed.Cir.1990)). What a prior art reference teaches is also a question of fact that we review under the clearly erroneous standard. See, e.g., In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed.Cir.1995) (citing In re Beattie, 974 F.2d 1309, 1311, 24 USPQ2d 1040, 1041 (Fed.Cir.1992)). "A finding is clearly erroneous when, although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed." United States v. United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746 (1948).

A. The Rejection of Claims 4 and 6

Our first task on the merits is to decide whether the PTO's rejection of claims 4 and 6 under section 102(b), as being anticipated by Rockwell, was proper. Claims 4 and 6 read as follows:

4. A test system and method for testing the integrity of the interconnections of electronic systems by testing for continuity from each point on the interconnect of an electronic system under test simultaneously to multiple selected power, ground and other connection points or wires, comprising the steps of:

(a) controllably applying a test signal sequencially [sic] to each point on the interconnect of the electronic system under test;

(b) simultaneously monitoring the selected multiple connection points or wires for presence of the test signal which is applied sequencially [s...