In re Dien

• Citation: 680 F.2d 151
• Decision Date: 29 July 1982
• Docket Number: Appeal No. 81-614.
• Parties: In re Chi K. DIEN, By Harmon Colors Corporation.
• Court: United States Court of Customs and Patent Appeals

680 F.2d 151

In re Chi K. DIEN, By Harmon Colors Corporation.

Appeal No. 81-614.

United States Court of Customs and Patent Appeals.

June 4, 1982.

Reconsideration Denied July 29, 1982.

Earl L. Tyner, Jacksonville, Fla., for appellant.

Joseph F. Nakamura, Sol., and Harris A. Pitlick, Associate Sol., Washington, D. C., for Patent and Trademark Office.

Marvin C. Soffen and Edward A. Meilman, New York City, for intervenor.

Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges.

RICH, Judge.

This appeal is here on the rejection of all claims of application serial No. 877,745, filed February 14, 1978, by Harmon Colors Corporation, appellant, to reissue its U. S. Patent No. 3,342,823, granted September 19, 1967, on application serial No. 64,307 filed October 24, 1960, for "Preparation of Quinacridones."¹

We are not now considering the merits of the rejection because the case is before us on the question of our jurisdiction to hear the appeal, which issue is raised by the contested motion of the Commissioner of Patents and Trademarks (PTO) to dismiss this appeal on the ground of lack of subject matter jurisdiction in this court because of the essential nature of this case. The motion to dismiss is granted.

In current terminology, this application is a "no defect" reissue application filed pursuant to the "Dann Amendments." In more precise legal terms, appellant filed its application for reissue pursuant only to 37 CFR 1.175(a)(4),² for the purpose of submitting to the PTO the claims of its issued patent together with several items of "prior art" for the purpose of having said claims reexamined in the light of said items. The application for reissue contains only the specification and claims of Patent No. 3,342,823 without change. The declaration of the reissue application, made by W. C. Parle as Vice President of Harmon Colors Corporation, is in compliance with paragraph (a)(4) of Rule 175 and with no other provision of the rule. In other words, no defect in the patent is alleged nor is any change in the patent sought. In the declaration of Mr. Parle, aside from the formal paragraphs, the listing of the several items of prior art, and the power of attorney contained therein, the significant statements read as follows:

THAT I have become aware of prior art relevant to patentability not previously considered by the U. S. Patent and Trademark Office which might cause the U. S. Patent and Trademark Office to deem the original Letters Patent No. 3, 342,823 wholly or partly inoperative or invalid, and which was not disclosed to the U. S. Patent and Trademark Office, and there was no deceptive intent in failing to make such a disclosure;

* * * * * *

THAT said prior art was not known to me prior to the issue date of U. S. patent 3,342,823, and was brought to my attention recently as support for a contention by a licensee³ under Letters Patent No. 3,342,823 that the patent is invalid.

THAT if the U. S. Patent and Trademark Office so deems the Letters Patent No. 3,342,823 to be wholly or partly inoperative or invalid, I hereby request that Harmon Colors Corporation be permitted to amend said patent and be granted a reissue patent on the subject matter as described in the accompanying reissue application.

It will be observed from the last paragraph above quoted that any change to be made in the patent in order to justify its reissue⁴ under the reissue statute, 35 U.S.C. § 251,⁵ is reserved for future action, following a statement from the PTO that for some reason it deems the patent to be "wholly or partly inoperative or invalid."

Action Taken in the PTO

Harmon Colors Corporation (Harmon) filed with its "application for reissue" a "Statement of Position" and thereafter several declarations and exhibits. Sun Chemical Corporation, the licensee under the patent which had produced the prior art referred to in the Parle declaration, filed a protest pursuant to 37 CFR 1.291 arguing the unpatentability of the patent claims. The examiner issued a final rejection of all claims, relying on 35 U.S.C. §§ 102(a), 102(g), and 103, all in accordance with the usual routine of application examination. Harmon then appealed to the Board of Appeals which, with a full opinion, "affirmed the rejections of claims 1-19 under 35 U.S.C. § 102(a) and 35 U.S.C. § 103 and reversed the rejection made under 35 U.S.C. § 102(g)."

This Appeal

Harmon took its present appeal to this court in due course and filed its record and brief. The PTO filed its brief. Sun Chemical Corporation obtained leave to intervene and filed a brief. The case was orally argued on the merits. A few days before the case was reached for argument, however, the PTO moved to dismiss, which motion we are now deciding. The parties and the intervenor were given further time to brief the motion.

This is but the first to be reached of several cases in the same posture in this court, one of which is No. 81-616, In re Van Dorn, wherein a brief amicus curiae was filed on behalf of Van Dyk Research Corporation and SCM Corporation by their respective attorneys acting jointly. The PTO motion to dismiss in all of the cases is essentially the same and states that the PTO is in agreement with said amicus brief, a copy of which it annexes to its motion as representing its argument for dismissal, incorporating pages 6-25 of the brief "by reference" into its motion.

Appellant herein has filed a brief in opposition to the motion to dismiss and intervenor has filed a brief supporting the PTO position as well as a reply to appellant's opposition. In reaching our present decision, we have also examined all of the many briefs filed in the Van Dorn and other cases.

Perusal of all of these briefs on the PTO's several motions to dismiss appeals to this court reveals a most interesting turnabout by that agency which has resulted in confusion reminiscent of parts of the Mad Hatter's Teaparty in Alice in Wonderland.⁶ The PTO introduced paragraph (a)(4) into its rule pertaining to reissue applications, treated this application as an application for a reissue patent, examined it as such, issued rejections of claims, permitted an appeal to the Board of Appeals, and the board rendered a decision affirming two of the three examiner's rejections. Having considered the Van Dorn amicus brief, it now argues that an application filed pursuant to Rule 175(a)(4) "is not `an application for (reissue) patent' and appellant is not an `applicant' * * *." Further, it says not every decision of the board is a "decision" within the statutes conferring jurisdiction on this court, that while both the examiner and the board used the term "rejection," they were not really making a rejection but "merely advising appellant of the error in the patent that might be corrected by reissue," and that "no reissue patent could ever issue regardless of what the examiner and/or the board did." In conclusion, the PTO sums up the effect of what happened within its doors as follows:

What appellant has really requested in his application filed pursuant to 37 CFR 1.175(a)(4) was an advisory opinion from the PTO of what might be done by appellant in view of the prior art not cited during the prosecution of the original patent. The PTO, through the examiner and the board, has given such an opinion. Appellant cannot validly argue that "in effect the examiner has denied the patentability of the claims."

* * * * * *

The PTO has no jurisdiction over a patent once it has issued. McCormick Harvesting Machine Co. v. Aultman, 162 sic, 169 U.S. 606 18 S.Ct. 443, 42 L.Ed. 875 (1898). Thus, any opinion rendered in appellant's application filed pursuant to 37 CFR § 1.175(a)(4) can have no legal effect on the parent patent.

Appellant recognizes that this Court is an Article III Court, that it only has jurisdiction where there is a "case or controversy", and may not properly render advisory opinions. Emphasis ours.

Those opposing the motion to dismiss argue, of course, that the words of the statutes and rules are to be given their literal meaning and that a decision of the board reviewing the examiner's rejection of claims with which the applicant is dissatisfied is appealable to this court under 35 U.S.C. § 141.⁷

OPINION

To recapitulate, semantics aside, the controlling facts are that: (1) the reissue application specification and claims are identical with the patent specification and claims; (2) the applicant has pointed to no error or defect in the patent and has not alleged that it is inoperative or invalid in part or in whole; (3) the examiner, with whom the PTO Board of Appeals has agreed, has given his opinion that all of the patent claims are invalid over prior art; (4) the patentee-applicant for reissue has as of this time made no move to amend its patent or to comply with any provision of Rule 175 other than paragraph (a)(4); and (5) the patentee asks this court, by what it assumes to be an "appeal" from a "decision" of the board, to review the opinion of the examiner, item (3) supra, as modified by the board decision.

On the foregoing analysis of the facts, at this juncture in the so-called reissue application, it appears to us that all that has happened is that the patentee, appearing here on the assumption it is appealing a decision by the board under 35 U.S.C. § 141, has obtained from the PTO an advisory opinion that the claims of its patent are invalid in view of prior art which it and the intervenor have submitted to the examiner. In doing this pursuant to a practice sanctioned by Rule 175(a)(4), the patentee has in no way complied with the provisions of 35 U.S.C. § 251 or the other provisions of Rule 175 so as to be entitled to examination of its application as one seeking a true reissue of its patent. Although it has now learned that the examiner does in fact "deem the patent inoperative or invalid" (Rule 175(a)(4)), it has not yet acted on that advice and we must decide the motion on the basis of the facts as the...