The opinion
LANE, Judge
(dissenting).
I conclude that the decision of the Board of Patent Interferences awarding priority to appellees should be reversed and that the case should be remanded to the Patent Office for a determination of the entitlement of appellees to a reissue patent under the provisions of 35 U.S.C. § 251 . I agree with the conclusions of the majority concerning appellees’ support for the counts, and I agree that the interests of justice are served by presently reviewing and supporting the board’s holding on that question. However, I do not believe that the decision of the board in the form of an award of priority can be affirmed where priority has been awarded before a complete determination of all issues timely and properly raised. See Vandenberg v. Reynolds, 44 CCPA 873, 879, 242 F.2d 761, 765 , 113 USPQ 275 , 278 (1957). Leaving the further course of action to the Patent Office in the manner indicated in the majority opinion seems to me to be unsatisfactory since appellants, faced with a judgment of priority against them, will have no means of compelling examination of the reissue question. That is an inappropriate procedural posture in which to put the appellants, and one which could be readily avoided by reversing and remanding.
Since appellants have not contested the board's holding to the effect that the reissue oath question is not ancillary to priority and therefore not within its jurisdiction, I would agree that this is not an appropriate case for us to review that jurisdictional question. I do feel, however, that reflective current thinking in this area is needed. I am not convinced that there is sound underlying basis for precluding review by the board and this court of a decision respecting the sufficiency of a reissue oath, although there is admittedly a long precedential history of that proposition, the most recent expression of which appears in Pritchard v. Loughlin, 53 CCPA 1339, 360 F.2d 250 , 149 USPQ 676 (1966). The court in that case saw no reason to depart from the established rule.
The rationale of the cases holding reissue challenges not to be ancillary to priority is that they are not in actuality matters of patentability suitable for ex parte consideration and unrelated to the interference proceeding. Patentability in general has long been held not to be ancillary to priority. See Glass v. DeRoo, 44 CCPA 723, 239 F.2d 402 , 112 USPQ 62 (1956). Accepting this principle, it is nevertheless noted that in Norton v. Curtiss, 57 CCPA 1384, 1389, 433 F.2d 779, 783 , 167 USPQ 532 , 535-36 (1970), decided subsequent to Pritchard, this court held fraud to be a matter ancillary to priority. The theory expressed in Norton is that if fraud were proved, the party that committed it would lose its right to have the interfering claims present in its application and would therefore lose its standing as a party to the interference. We reaffirmed the Norton holding in Langer v. Kaufman, 59 CCPA -, -, 465 F.2d 915, 920-21 , 175 USPQ 172 , 175-76 (1972), observing a distinction between fraud and other grounds of unpatentability. It is clear, however, that fraud on the part of a party to an interference falls within the broad scope of patentability.
From a jurisdictional standpoint, inability to present interfering claims because of an insufficient reissue oath appears indistinguishable from inability to present claims because of fraud. In each situation, the charges, if true, render one of the parties incapable of presenting interfering claims from which it follows that the party is not a proper party to the proceeding.
Whereas analysis of a specific contention under the jurisdictional standard of ancillarity in the past has focused on the relationship of the contention to a contention of unpatentability, I suggest *1197 that in the future the focus might as logically be the relationship of the contention to a contention of fraud. Most importantly, there does appear to be a need to reexamine the jurisdictional questions present in an interference in light of the potential changes flowing from Norton and Langer.
As for the present case, I would reverse the board’s decision and remand the case to the Patent Office for consideration of the reissue question by the appropriate official or tribunal.