APPLICATION OF MEAD, Patent Appeal No. 78-524.
| Decision Date | 07 February 1978 |
| Docket Number | Patent Appeal No. 78-524. |
| Citation | 569 F.2d 1128 |
| Parties | Application of Dennis E. MEAD. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
James M. Wetzel, John H. Moore, Cook, Wetzel & Egan, Ltd., Chicago, Ill., Richard G. Young, Beveridge, DeGrandi, Kline & Lunsford, Washington, D. C., for appellant.
Sol. U. S. Patent and Trademark Office, Washington, D. C., for Patent Office.
Having considered appellant's MOTION TO SUPPLEMENT THE RECORD and EXTEND TIME TO FILE TRANSCRIPT, appellant's MEMORANDUM in support thereof, and the RESPONSE in opposition thereto by the Commissioner of Patents and Trademarks, in this appeal of a decision of the Board of Appeals (board) affirming the examiner's rejection of appellant's present reissue application —
The Court finds: (1) appellant seeks to supplement the record by insertion of his original Patent No. 3,667,590 and its file history, and reissue application serial No. 393,539 (now abandoned) and its file history; (2) though the motion does not so state, the materials sought to be inserted were a part of the "evidence produced before the Patent and Trademark Office," on which this Court is statutorily required to "hear and determine" this appeal. 35 U.S.C. § 144.
Though the Commissioner's RESPONSE states that the materials sought to be inserted were not "part of the record considered by the examiner or the board," these materials were required to be "carefully studied" by the examiner. MPEP 1401.09. As an integral element of the Patent and Trademark Office, the Board of Appeals has before it the "evidence produced before the Patent and Trademark Office." We are cited to no rule or procedure within the Patent and Trademark Office which would indicate that the board does not have before it all of the materials which had been before the examiner.
An orderly judicial process precludes this Court from resting a reversal or affirmance of the board's decision on materials not considered by the board. To determine, however, whether materials are so controlling as to have required board consideration, those materials must be presented to the Court. If the Court concludes certain "evidence produced before the Patent and Trademark Office" should have been considered by the board in the interest of justice, it would be necessary to remand the case for consideration of that evidence. We will not attribute to the board a desire to control the final result by an arbitrary election to consider some...
To continue reading
Request your trial
-
Holmes v. Kelly
...F.2d 483, 53 CCPA 1345, 149 USPQ 841 (1966). 8 A motion to strike these portions was denied earlier. 9 37 CFR 1.207; In re Mead, 569 F.2d 1128, 196 USPQ 811 (CCPA 1978). ...
-
Application of Mead, Appeal No. 78-524.
...its file history, and reissue application serial No. 393,539 (now abandoned) and its filed history * * *," In re Mead, 569 F.2d 1128, 1129, 196 USPQ 811, 812 (Cust. & Pat.App.1978), alleging " `intent to claim' was the dispositive issue before the board * *." Id. at 1130, 196 USPQ at 813. T......
-
BASF Wyandotte Corp. v. Polychrome Corp.
...In re Hutton, 568 F.2d 1355, 196 USPQ 676 (CCPA 1978)) and evidence which the PTO's own rules require it to consider (In re Mead, 569 F.2d 1128, 196 USPQ 811 (CCPA 1978)). However, the certified record does not include items that were never submitted with the intention of becoming evidence ......