Rule 124 of the Patent Office which provide that no appeal can
be taken from a decision of a primary examiner affirming the
patentability of the claim or the applicant's right to make the
same, is not void as contrary to the provisions of § 482, 483,
4904, 4910, 4911, Rev.Stats., or § 9 of the Act of February 9,
1893, 27 Stat. 436. Those statutes provide only for appeals upon
the question of priority of invention, and appeals on other
questions are left under the power given by § 483, Rev.Stat., to
the regulation of the Patent Office.
26 App.D.C. 8 affirmed.
The facts are stated in the opinion.
Page 203 U. S. 478
MR. JUSTICE McKENNA delivered the opinion of the Court.
This is a petition for mandamus, filed in the Supreme Court of
the District of Columbia, requiring the Commissioner of Patents to
direct the Board of Examiners in Chief to reinstate and take
jurisdiction of the appeal of petitioners from the decision of the
primary examiner refusing to dissolve an interference between a
patent granted to Lowry and an application for a patent by one
William L. Spoon. The Supreme Court granted the mandamus. Its
judgment was reversed by the Court of Appeals.
The question in the case is whether the rule of the Patent
Office which denies an appeal from a ruling of a primary examiner,
upon motion to dissolve an interference, is contrary to the Revised
Statutes, and therefore void. Rule 124 provides that "from a
decision of a primary examiner affirming the patentability of the
claim or the applicant's right to make the same, no appeal can be
taken."
Plaintiffs in error attack the rule as inconsistent with the
sections of the Revised Statutes which provide for interferences.
These sections are inserted in the margin.
*
Page 203 U. S. 479
The facts are as follows: Lowry was granted a patent for a bale
of fibrous material January 29, 1897. An interference was declared
between his patent and application of one William Spoon, to which
interference Lowry was made a party. He
Page 203 U. S. 480
moved to dissolve the interference upon the ground, among
others, that Spoon's press was inoperative. The primary examiner
granted the motion, and Spoon appealed to the Board of Examiners in
Chief, who confirmed the decision. Upon petition of Spoon, the
Commissioner of Patents remanded the case to the primary examiner
for further consideration, and the latter officer, upon the filing
of additional affidavits, decided that Spoon's application
disclosed an operative device. From this decision, an appeal was
taken to the Board of Examiners in Chief, which was dismissed by
that board for want of jurisdiction. Thereupon Lowry petitioned the
Commissioner to direct the board to issue an appeal. The petition
was denied, the Acting Commissioner remarking:
"The rule prohibiting an appeal from a decision upon a motion
holding that a party has the right to make the claim of the issue
is in accordance with the practice which has prevailed in this
office for many years, and has the support of all decisions of the
courts which have been rendered on the subject. There seems to be
no reason for regarding it as inconsistent with the statute. It
seems very clear that the decision in this case is not a final
adverse decision, since it is not a ruling that Lowry is not
entitled to his patent. That is a matter which may be determined in
the further proceedings, and therefore it is clear that the
decision relates to a mere interlocutory matter."
"The petition is denied."
Lowry filed another petition, appealing to the Commissioner "in
person" to direct the Board of Examiners in Chief to entertain his
appeal. The petition was considered and denied. In passing on the
petition, the Commissioner said:
"Under the express provisions of Rule 124, there is no appeal to
the examiners in chief from such decision rendered on an
interlocutory motion. It is believed that there is nothing in that
rule inconsistent with law, and that therefore it has the force of
law. The right of appeal in interferences given in general terms in
the statute is a very different thing from the
Page 203 U. S. 481
right of appeal on all motions in the interference. To permit
appeals on motions would multiply litigation and extend the
proceedings in interferences beyond all reasonable limits. It would
work great hardship to parties. The appellate tribunals of this
office are no more required to give cases piecemeal consideration
than are the appellate courts. The whole case should be ready for
appeal when the appeal provided for by the statute is taken."
"
* * * *"
"It is to be particularly noted that there has been no decision
as to the rival claims of the parties to this interference. It has
not been decided which party is entitled to the patent. If it
should at any time be decided that Spoon is entitled to the patent,
Lowry will have the right of appeal, but until such final decision
is rendered, the statute gives him no right of appeal."
"It would seem upon general principles of law that Lowry could
then present for determination by his appeal any question which, in
his opinion, vitally affects the question which party is entitled
to the patent. The only ground upon which he can reasonably claim
the right of appeal on this motion is that the question vitally
affects his claimed right to a patent, and if it does that, he can
raise it at final hearing and contest it before the various
appellate tribunals, including the Court of Appeals."
"The refusal to permit the present appeal on motion is therefore
not a denial of an opportunity to have the matter reviewed by the
several appellate tribunals mentioned in the statute."
And further:
"No good reason is seen for changing the provisions in Rule 124
here in controversy, which was adopted and approved by a long line
of Commissioners of Patents, among whom have been some of the
ablest patent lawyers in the country, and which rule has been
acquiesced in by patent attorneys practicing before the office for
the last quarter of a century. "
Page 203 U. S. 482
There is quite a sharp controversy between the parties as to the
effect of the ruling of the Commissioner. Plaintiffs in error are
apparently convinced that the ruling of the primary examiner
involves a fundamental right which, if not decided on Lowry's
appeal, will be forever foreclosed to him for review. A different
view is expressed by defendant in error. However this may be, we
think the question in the case is in quite narrow compass. The
statutes involved are not difficult of interpretation. The
determining sections are 482, 483, 4904, and 4909. Plaintiffs in
error put especial stress upon sections 482 and 4909. Section 482
provides for the appointment of examiners in chief,
"whose duty it shall be, on the written petition of the
appellant, to revise and determine upon the validity of the adverse
decisions of examiners . . . in interference cases."
Section 4909 provides that
"every party to an interference may appeal from the decision of
the primary examiner or of the examiner in charge of interferences
in such case, to the Board of Examiners in Chief."
The contention is that this section gives the right of appeal
unreservedly and any limitation of it by a rule is void. Such might
not be the result, even if there was no qualification of those
sections in other sections. As said by the Commissioner:
"The right of appeal in interferences given in general terms in
the statute is a very different thing from the right of appeal on
all motions in the interference."
It certainly could not have been the intention to destroy all
distinctions in procedure. But we are not left to inference. The
statute is explicit. It limits the declaration of interferences to
the question of priority of invention. Section 4904 provides that,
in case of conflict of an application for a patent with a pending
application or with an unexpired patent (as in the case at bar),
the Commissioner shall give notice thereof, "and shall direct the
primary examiner to proceed to determine the question of
priority of invention." (Italics ours.) And it is provided
that the Commissioner shall issue a patent to the party adjudged
the prior inventor unless the adverse party appeals from the
decision of the primary examiner
Page 203 U. S. 483
or examiners in chief, as the case may be. The history of the
sections and the rules are gone into at length by the Court of
Appeals in its opinion. We need not repeat the discussion. It
answers the detailed reasoning of plaintiffs in error. We concur
with the views expressed, that the statutes provide only for
appeals upon the question of priority of invention. Appeals on
other questions are left to the regulation of the Patent Office
under the grant of power contained in § 483.
Judgment affirmed.
MR. JUSTICE PECKHAM and MR. JUSTICE DAY dissent.
*
"R.S. Sec. 4904. Whenever an application is made for a patent
which, in the opinion of the Commissioner, would interfere with any
pending application, or with any unexpired patent, he shall give
notice thereof to the applicants, or applicant and patentee, as the
case may be, and shall direct the primary examiner to proceed to
determine the question of priority of invention. And the
Commissioner may issue a patent to the party who is adjudged the
prior inventor unless the adverse party appeals from the decision
of the primary examiner, or of the Board of Examiners in Chief, as
the case may be, within such time, not less than twenty days, as
the Commissioner shall prescribe."
"R.S. Sec. 4909. Every applicant for a patent or for the reissue
of a patent, any of the claims of which have been twice rejected,
and every party to an interference may appeal from the decision of
the primary examiner, or of the examiner in charge of interferences
in such case, to the Board of Examiners in Chief, having once paid
the fee for such appeal."
"R.S. Sec. 4910. If such party is dissatisfied with the decision
of the examiners in chief, he may, on payment of the fee
prescribed, appeal to the Commissioner in person."
"R.S. Sec. 4911. If such party, except a party to an
interference, is dissatisfied with the decision of the
Commissioner, he may appeal to the Supreme Court of the district of
Columbia, sitting in banc."
"Sec. 9. (Act of February 9, 1893, 27 Stat. 436, c. 74) That the
determination of appeals from the decision of the Commissioner of
Patents, now vested in the general term of the Supreme Court of the
District of Columbia, in pursuance of the provisions of section
seven hundred and eighty of the Revised Statutes of the United
States, relating to the District of Columbia, shall hereafter be,
and the same is hereby, vested in the Court of Appeals created by
this act, and in addition, any party aggrieved by a decision of the
Commissioner of Patents in any interference case may appeal
therefrom to said Court of Appeals."
"R.S. Sec. 482. The examiners in chief shall be persons of
competent legal knowledge and scientific ability whose duty it
shall be, on the written petition of the appellant, to revise and
determine upon the validity of the adverse decisions of examiners
upon applications for patents and for reissues of patents and in
interference cases, and, when required by the Commissioner, they
shall hear and report upon claims for extensions, and perform such
other like duties as he may assign them."
"R.S. Sec. 483. The Commissioner of Patents, subject to the
approval of the Secretary of the Interior, may from time to time
establish regulations, not inconsistent with law, for the conduct
of proceedings in the Patent Office."