Smith v. Mossinghoff
| Decision Date | 22 January 1982 |
| Docket Number | No. 81-1154,81-1154 |
| Parties | , 213 U.S.P.Q. 977 Jerold B. SMITH and The Cardinal Corporation, Appellants, v. Gerald J. MOSSINGHOFF, Commissioner of Patents and Trademarks, Appellee. |
| Court | U.S. Court of Appeals — District of Columbia Circuit |
Before ROBINSON, Chief Judge, WRIGHT, Circuit Judge, and JACK R. MILLER, Judge. *
Opinion for the court filed by Judge MILLER.
This appeal is from the order and judgment of the district court granting motion of defendant-government ("Commissioner") to dismiss a mandamus action of plaintiffs-appellants ("Smith") to require the United States Patent and Trademark Office ("PTO") to revive an abandoned application for a patent and to issue a patent thereon. 1 Abandonment was finally determined by a decision of the Deputy Assistant Commissioner of the PTO dated September 17, 1979, responding to a renewed petition under 37 CFR 1.137 2 to revive the application. We affirm.
The basis of the PTO's determination was that Smith had not provided "sufficient grounds for establishing unavoidable delay in prosecuting (his) application within the meaning of 35 U.S.C. § 133 and 37 CFR 1.137." 35 U.S.C. § 133 provides:
Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Commissioner in such action, the application shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the Commissioner that such delay was unavoidable.
It is uncontested that Smith failed to take action until twenty-two days after the time had expired.
In its opinion, the district court set forth the following summary from the administrative file of Smith's patent application:
Dates Events
Dec. 6, 1976 Plaintiff filed patent application serial
#748,001 entitled SOLVENT
RECOVERY SYSTEMS
Nov. 1, 1977 Patent Office advised plaintiff that
all claims pending in application had
been examined and rejected
Feb. 3, 1978 Plaintiff filed an amendment to the
application
Mar. 16, 1978 Patent Office advised plaintiff that
all claims were still rejected. The
rejection was made FINAL and
plaintiff was given a period of three
months in which to respond or the
application would become abandoned.
June 7, 1978 Plaintiff requested an extension of
one month in response time giving
as a justification "inability to
respond...due to extensive out-of-
state travel."
June 12, 1978 Request for extension approved.
June 13, 1978 Plaintiff and his attorney met with
the patent examiner. Agreement
with respect to the claims was not
reached.
July 14, 1978 Plaintiff amended application again.
Aug. 31, 1978 Patent Office advised plaintiff's
attorney that he had six months
"FROM THE DATE OF THE
FINAL REJECTION" to respond.
Sept. 19, 1978 Application became abandoned due to
plaintiff's failure to respond within
the six months period.
Oct. 10, 1978 Plaintiff filed PETITION TO
(22 days late) REVIVE claiming failure to observe
time limit was "due to excusable
confusion over the time to file a
response."
Dec. 20, 1978 Patent Office denied petition to
revive noting that the "record is
inadequate to establish unavoidable
delay within the meaning of 35 U.S.C.
133."
Jan. 9, 1979 Plaintiff's attorney wrote
Commissioner of Patents describing errors in
filing made by his office and urged
again the revival of the application.
Plaintiff's attorney argued that the
delay was unavoidable due primarily
to confusion among his staff
regarding the significance of the notice and
secondarily to the inability of counsel
to review it himself due to a
deposition and trial in another matter.
Feb. 20, 1979 Patent Office dismissed petition
pointing out that the record still did not
support a finding that the delay was
unavoidable.
May 3, 1979 Plaintiff's attorney submitted further
material to the Patent Office.
May 30, 1979 Patent Office considered latest
material submitted and concluded that
there was no adequate verified
showing of a cause for unavoidable delay.
The petition was dismissed.
July 5, 1979 Plaintiff requested reconsideration of
dismissal of his petition.
Sept. 17, 1979 Patent Office reconsidered and
reaffirmed its denial of the petition.
August 15, 1979 Plaintiff filed this civil action #80-
2071.
Smith has not offered objection to this summary or to the district court's further findings that the six months' statutory period (measured from the date of the final rejection) for prosecuting the application did not run until midnight September 18, 1978, since September 16, 1978, fell on Saturday; that it was admitted by Smith's attorney that he personally knew of the notice (that the period for response was six months from the date of final rejection) on or before September 18 and still took no action; and that "final rejection" is a term of art well known and understood by competent practitioners before the PTO. The district court also found that since Smith's attorney had until midnight of September 18, 1978, to act (37 CFR 1.7), he had sufficient time to take appropriate action.
The district court set forth the following summary of Smith's submissions in support of his position that failure to prosecute the application until twenty-two days after the time had expired was unavoidable for purposes of 35 U.S.C. § 133 and 37 CFR 1.137:
The district court concluded that unavoidable delay under 35 U.S.C. § 133 was not established by internal filing errors of Smith's attorney, or by the attorney's preoccupation with other legal matters or with moving his residence, or by the attorney's inadvertence or mistake, citing Potter v. Dann, 201 USPQ 574, 575 (D.D.C.1978); further, that Smith was bound by the acts of his attorney since he chose him as his representative and could not avoid the consequences of the attorney's acts or omissions, citing Link v. Wabash Railroad Co., 370 U.S. 626, 633-34, 82 S.Ct. 1386, 1390, 8 L.Ed.2d 734 (1962). Noting that the PTO's advisory action was "both clear and explicit" in stating that the period of response was extended to run 6 months "FROM THE DATE OF THE FINAL REJECTION," the district court observed that "(i)t is hard to see how one could comprehend the first part of the quoted sentence and ignore the underlined portion." Finally, the court concluded that the excuses offered by Smith were "insufficient to justify overturning the Patent Office's decision."
OPINIONA threshold issue raised by Smith is whether this case should be remanded for an evidentiary hearing because, he argues, "the trial judge granted summary judgment to the Commissioner of Patents on the bare record and without holding an evidentiary hearing and absent a motion by either party."
Although the Commissioner's motion of October 20, 1980, was labeled a "MOTION TO DISMISS" pursuant to Rule 12(b)(6), Fed.R.Civ.P., it was, in effect, a motion for summary judgment under Rule 56, Fed.R.Civ.P., since it was accompanied by, inter alia, a "statement of material facts" comprising five pages of the record, along with the file history of the involved patent application which includes the matters summarized earlier in this opinion. The motion was also accompanied by six pages of "POINTS AND AUTHORITIES" clearly directed to the merits-whether Smith's delay in prosecuting his application was unavoidable. The sufficiency of the petition for writ of mandamus in stating a cause of action appears to have been assumed.
On November 6, 1980, Smith filed an opposition to the "motion to dismiss" and requested leave of one month to file a memorandum of points and authorities. Leave to December 6, 1980, was granted. His memorandum clearly recognizes that the Commissioner's motion was directed to the merits and states:
In the present case, the Commissioner of Patents is not supporting his motion of insufficiency of the complaint (sic, petition) but instead ... his ruling that the delay in this case was not unavoidable.
Indeed, Smith's memorandum declares that the "ISSUE" is-
Whether the delay in responding to the final rejection ... was unavoidable due to an error in computation of time for response.
Although the memorandum addresses the standards for granting a motion to dismiss, it also is directed to the issue of unavoidability of delay, citing, inter alia, Commissariat A L'Energie Atomique v. Watson, 274 F.2d 594, 124 USPQ 126 (D.C.Cir.1960); Potter v. Dann, 201 USPQ 574 (D.D.C.1978); and In re Decision Dated February 18, 1969, 162 USPQ 383 (Comm'r Pats. 1969). Nowhere does Smith's memorandum dispute the Commissioner's statement of material facts or the file history of the involved patent application.
Accordingly, we conclude that Smith had notice and a reasonable opportunity to respond to what was, in effect, a motion for summary judgment; further,...
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