Loshbough v. Allen

• Decision Date: 09 January 1969
• Docket Number: Patent Appeal No. 8243.
• Citation: 160 USPQ 204,404 F.2d 1400
• Parties: Richard C. LOSHBOUGH, Appellant, v. Kenneth C. ALLEN, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

160 USPQ 204, 404 F.2d 1400 (1969)

Richard C. LOSHBOUGH, Appellant, v. Kenneth C. ALLEN, Appellee.

Patent Appeal No. 8243.

United States Court of Customs and Patent Appeals.

January 9, 1969.

Owen & Owen, Carl F. Schaffer, Toledo, Ohio (Allen Owen, Vincent L. Barker, Jr., Toledo, Ohio, of counsel), for appellant.

Marechal, Biebel, French & Bugg, Lawrence B. Biebel, Dayton, Ohio (Nathaniel R. French, Mario A. Martella, Dayton, Ohio, of counsel), for appellee.

Joseph Schimmel, Washington, D. C., for Commissioner of Patents.

Before WORLEY, Chief Judge and RICH, SMITH, ALMOND and BALDWIN, Judges.

On Petition For Writ of Mandamus

ALMOND, Judge.

The matter here before us is related to an appeal by Loshbough from the decision of the Board of Patent Interferences awarding priority to Allen in Interference No. 93,427 involving counts 1 through 5. It is not the merits of that appeal which we consider at this time but, instead, a Petition for Writ of Mandamus brought by Loshbough. The request for relief is couched in the following terms:

Richard C. Loshbough, appellant before this Court, hereby petitions that this Honorable Court issue a Writ of Mandamus to the Honorable Commissioner of Patents requiring that the Commissioner direct the appropriate official or tribunal within the Patent Office to suspend proceedings in Interference No. 93,427 and to afford the parties an opportunity to be heard on the question of patentability of present and proposed counts in order that further interference proceedings with respect to priority of invention will be directed to patentable subject matter.

As background, the board rendered its decision on priority in the present case on October 29, 1965 and, on December 23, 1965, Allen filed before the board a Motion to Amend and Suspend the Interference, requesting that the interference be amended by canceling therefrom all five counts, on which priority was awarded to him, and substituting a proposed new count. The basis for the motion was "the belief of the party Allen that the present counts do not adequately distinguish the patentable subject matter common to the disclosures of both parties," from Swedish patent No. 173,332 which has an effective date of November 15, 1960 and is a statutory bar to both parties as to date. Allen stated that the motion was not brought during the motion period because Allen and his attorneys "were not advised of the disclosure of the Swedish patent until after the testimony of both parties had been completed."¹

On December 27, 1965, Loshbough filed a Notice of Appeal to this court from the board's decision on priority.

In a decision dated January 6, 1966, the board stated that it was "bereft of jurisdiction" to consider Allen's motion by reason of the jurisdiction of the interference having been transferred to this court as the result of Loshbough's Notice of Appeal. Loshbough then, on January 21, 1966, petitioned the Commissioner of Patents to request the court to remand the case to the Patent Office for consideration of Allen's motion. The Assistant Commissioner denied the petition on February 3, 1966, holding that Allen had not made an adequate showing to excuse his failure to file the motion earlier² and taking the position that reopening the interference on the merits would not be in order for that reason even if the Patent Office did have jurisdiction.

Loshbough next filed a motion before the court for remand of the case to the Patent Office for consideration of Allen's motion on the merits. In a per curiam decision dated May 12, 1966, Loshbough v. Allen, 359 F.2d 910, 53 CCPA 1214, the court remanded the appeal to the Board of Patent Interferences "for that board to consider the motion pending before it, which it refused to consider because we had jurisdiction of the case, and to take whatever further action it may deem advisable."

The board, on August 8, 1966, denied the Allen motion, holding that it had no authority to reform or redeclare the interference. The board also observed that Loshbough had "filed nothing indicating his views on the merits" of the matters raised by Allen and noted "relevant statements" in the Assistant Commissioner's previous denial of the motion. Allen then filed a paper entitled "Petition to the Commissioner or for Reconsideration by the Board of Interference Examiners" in which he requested "action on Allen's motion to amend by the Commissioner or by the Primary Examiner" and that request was joined by Loshbough. The Assistant Commissioner, on September 19, 1966, denied that petition on the grounds that the board had given such reconsideration as was required by the court's remand and that the Allen motion was not entitled to consideration on the merits for the reasons given in his previous decision. Loshbough then filed a second appeal to the court.

On January 3, 1967 Loshbough filed before the court a Motion of Appellant to Reverse and Remand. In Loshbough v. Allen, 373 F.2d 747, 54 CCPA 1113, the court denied that motion, but ruled:

However, since further proceedings under rule 259 appear necessary to a disposal of the present controversy in a judicial manner, the cases are remanded to the board with the express direction that it take all necessary and appropriate action consistent with this opinion.

The court's opinion also quoted Rule 259 of the Rules of Practice of the Patent Office, reading:

259. Recommendation by Board of Patent Interferences. The Board of Patent Interferences may, either before or concurrently with their decision on the question of priority, but independently of such decision, direct the attention of the Commissioner to any matter not relating to priority which may have come to their notice, and which in their opinion establishes the fact that no interference exists, or that there has been irregularity in declaring the same, or which amounts to a bar to the grant of a patent to either of the parties for the claim or claims in interference. The Commissioner may suspend the interference and remand the case to the primary examiner for his consideration of the matters to which attention has been directed if such matters have not been considered before by the examiner, or take other appropriate action. If the case is not so remanded, the primary examiner will, after judgment on priority, consider such matters, unless the same shall have been previously disposed of by the Commissioner.

On May 5, 1967, the Board of Patent Interferences handed down a "Decision on Motion to Remand." There the board observed that the opinion of the court remanding the case expressly stated that:

* * * the board should determine whether, "in their opinion," the Swedish patent "establishes the fact" that it "amounts to a bar to the grant of a patent to either of the parties," Rule 259.

Further observing that Allen has never "forthrightly and unquivocally asserted that the claims corresponding to the present counts are unpatentable to either party because barred by the Swedish patent" or applied the language of the claims to the disclosure of that patent "as would have been required of him in a motion timely filed within the usual motion period under Rule 232," and noting that Loshbough "has expressed no opinion on this matter" of patentability, the board stated that "consistent with `the orderly procedure' which the court characterized as `vitally necessary * * in the Patent Office,'" it believed "that the parties should have submitted unequivocal statements of their views with respect to the question of patentability of the present counts over the Swedish patent (No. 173,332), to aid us in the determination we are now called upon to make." The board further stated:

However, we have considered the case as it is now before us and we have exercised such discretion as the court has stated "must be exercised." We find that the Swedish patent No. 173,332 does not establish (in the language of Rule 259) "the fact" that it "amounts to a bar to the grant of a patent to either of the parties" on the basis of at least one of the counts in interference, i. e. count 5. Accordingly, we would not be justified in making a recommendation to the Commissioner. The award of priority with respect to a patentable invention remains in effect and is adhered to.

In summary, Allen\'s motion under consideration is granted to the extent that we have considered the merits thereof and have determined that a recommendation to the Commissioner under Rule 259 is not justified * *.

It is at this point that the present Petition for Writ of Mandamus, filed March 29, 1968, appears in the chain of events. Upon being supplied with a copy of the petition by the court, the Commissioner brought a motion to intervene and that motion was granted by the court on April 22, 1968. The court subsequently, on September 3, 1968, set the case for oral argument on the petition, suggesting that the parties, in their briefs and oral arguments, discuss particularly the following questions:

1. Is the Writ of Mandamus which appellant seeks "necessary or appropriate" in the aid of the jurisdiction of the Court of Customs and Patent Appeals within the meaning of 28 USC 1651(a)? If so, what effect, if any, do the provisions of 35 USC 141-145 have on the issuance of the Writ of Mandamus?

2. Is the Writ of Mandamus which appellant seeks "agreeable to the usages and principles of law" within the meaning of 28 USC 1651(a)?

3. Is the Commissioner of Patents the proper party to whom the Writ of Mandamus should be directed? If so, does the Commissioner of Patents have the authority, by statute or otherwise, to direct the "appropriate official or tribunal within the Patent Office to suspend proceedings" in the subject interference?

The petition itself divides the issue it raises into three parts, urging that (1) the court has power to issue a writ of mandamus, (2) the interference should be suspended and the parties given an opportunity to be heard on the...