# Tofe v. Winchell > Court of Customs and Patent Appeals · March 31, 1981 · 645 F.2d 58 URL: https://www.frixlaw.com/law-library/cases/8913070 ## Case - **Full name:** Andrew John TOFE v. Harry S. WINCHELL - **Court:** Court of Customs and Patent Appeals - **Decided:** March 31, 1981 - **Citations:** 645 F.2d 58; 209 U.S.P.Q. (BNA) 379; 1981 CCPA LEXIS 230 - **Precedential status:** Published - **Opinion:** Concurrence by Markey - **Judges:** Markey, Nies - **Cited by:** 7 later opinions in the Frix Law Library ## Citator (automated) - No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases. - Full citator and citing cases: https://www.frixlaw.com/law-library/cases/8913070 ## Opinion text MARKEY, Chief Judge, concurring in result. I concur in the view that the best mode issue must be held ancillary to priority. I do so solely on the basis of a perceived need for consistency in the law. Over the years, this court has continually expanded the list of issues it has considered ancillary to priority, for example, (1) whether an application was altered after its execution, Vandenberg v. Reynolds, 44 CCPA 873, 877, 242 F.2d 761, 764 , 113 USPQ 275 , 277 (1957); (2) right to make a count, Stalego v. Heymes, 46 CCPA 772, 774, 263 F.2d 334, 335 , 120 USPQ 473 , 475 (1959); (3) fraud, Norton v. Curtiss, 57 CCPA 1384, 1389, 433 F.2d 779, 783 , 167 USPQ 532 , 536 (1970); (4) interference in fact, Nitz v. Ehrenreich, 537 F.2d 539, 543 , 190 USPQ 413, 416 (CCPA, 1976); (5) best mode when claiming benefit under 35 U.S.C. § 120 , Weil v. Fritz, 572 F.2d 856, 866 , 196 USPQ 600, 608 (CCPA, 1978); (6) patentable distinctness, Hester v. Allgeier, 646 F.2d 513 ,-USPQ-(CCPA, 1981). The considerations here set forth do not appear to have been argued to the court in its “ancillary to priority” cases. Hindsight is always easy, but in retrospect it does appear that the court could as well have held none of the listed issues ancillary to priority. It could have interpreted the statute, 35 U.S.C. § 135 , as meaning only what it says, that is, that “The question of priority of invention,” and only that question, “shall be determined by a board of patent interferences.” That holding would have kept interference practice simple, by maintaining a clear line of distinction between a naked determination of who was first to invent 1 and a determination of who, if anyone, was entitled to a patent. In a very real sense, the court’s “ancillary to priority” holdings have been directed to “who shall decide.” Issues such as support for a count, interference in fact, and patentable distinctness, could have been viewed as required preliminary decisions, that is, as ancillary not to priority but to the very existence of an interference. The decision on such issues could have been left to, or referred by the board back to, the examiner. Issues touching defects in an application, such as whether an application was belatedly altered, fraud in the application, and whether an applicant disclosed the best mode known to him at the time of filing, could have been viewed as governing the right to a patent and referred by the board to the Commissioner, or left for later decision by the examiner, who “will” consider such questions “after judgment on priority.” Rule 259. 2 Whether an application is defective is critical, not just ancillary, to the right to a patent. It may also be viewed as involved in the requirement that there be at least two applications (or an application and a patent) available for interference, that is, as going to the jurisdiction of the board. Thus defects in an application may be ancillary to an interference. Only a very broad definition of the term “ancillary,” however, can support the view that defects in an applica *65 tion relate to, or are “ancillary” to, the question of who was the first to make the invention. Rule 259 appears, in somewhat ambiguous terms, to render numerous matters ancillary to priority and therefore decidable by the board of interferences. It says “The Board of Patent Interferences may ... direct the attention of the Commissioner to any matter not relating to priority which may have come to their notice, and which in their [sic] 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.... ” If the board is to arrive at an “opinion” on the matters listed in Rule 259, it would seem that it must fully consider those matters. That the Rule describes such matters as not “relating” to priority would appear to indicate that such matters are not “ancillary” to priority. At the same time, however, the Rule’s indication that the board “may” direct such matters to the Commissioner establishes that it need not do so. Coupled with the Rule’s reference to the board’s reaching an “opinion” that a matter “establishes the fact that” certain conditions are true, the board’s discretion to refer or not refer would appear to include discretion to decide that matter. 3 The day may come when it will be appropriate to call a halt to the designation of additional matters as “ancillary to priority” and to the concomitant expansion of the role of the Board of Interferences. 4 To designate this as that day would, in view of Weil v. Fritz, supra, be to create an anomaly wherein the question of whether best mode is ancillary to priority would depend on whether the involved application was the first in a series. I would, accordingly, overrule whatever remained of Thompson v. Dunn, 35 CCPA 957, 166 F.2d 443 , 77 USPQ 49 (1948) after Weil was decided. Having determined that best mode was not ancillary to priority the board had no reason to and did not determine whether Winchell had disclosed the best mode known to him at the time of the application. It declined to refer the issue to the Commissioner, stating no reasons for so declining. The board’s actions leave the question of whether best mode was disclosed undeter-minable on appeal. 5 The court has determined that best mode is an issue to be decided by the board because it is ancillary to priority. It does not, in my view, follow that the board must itself make the decision in every case on whether an applicant has disclosed the best mode known to him on the filing date. Like other such matters, the issue is one at the threshold. Rule 259 is still alive. Perhaps a procedure may develop under which the board may suspend the interference and refer the question to the Commissioner. If the Commissioner decides that best mode was disclosed, the board may adopt the Commissioner’s decision as its own. The issue would thereby be preserved for appeal here as part of the board’s, not the Commissioner’s, decision. Similarly, if the Commis *66 sioner decided that best mode was not disclosed, the resulting rejection on 35 U.S.C. § 112 would be appealable here. If that rejection were reversed, the interference would presumably be revived. In all events, until the court elects to overrule its past “ancillary to priority” cases, the holdings therein must not only “govern further proceedings” in the involved cases, 35 USC 144, but, in deference to stare decisis, those holdings should govern in like cases. This being a “like case,” the court is impelled, in my view, to hold best mode ancillary to priority. . Or conceive and exert due diligence unto a reduction to practice. . § 1.259 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 indepen- 1 dently 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. . No criticism of the Rule is intended or implied. The extent to which its make-up was influenced by this court’s decisions is unknown. . And a halt to the concomitant expansion of this court’s role in reviewing the board’s decisions. The day may also come when either the court, or the Congress, may overrule all past decisions requiring the board to decide any question beyond that of who was the first inventor. Because the procedural matrix created by this court’s past decisions involves numerous parties, the drastic reformation resulting from such action would benefit from input by all affected parties. Hence it should not, in my view, be taken at this time by this court. . The concern that the question could never be raised in the PTO by an interference party may be ameliorated under new rules entitling any person to require reexamination of an issued patent. The interference loser would have to wait until his opponent’s patent had issued. Justice would not, however, be impinged. The loser, not being the first inventor, would not be entitled to a patent. If reexamination disclosed fatal defects in the interference winner’s application, his victory would be pyrrhic, his patent being properly rendered useless. --- Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/8913070. Public record. Not legal advice.