In re Ornum

BALDWIN, Judge,

dissenting.

I cannot agree with the majority position that 37 CFR 1.321(b) (Rule 321(b)) is valid. I am of the conviction that the regulation is invalid and unenforceable and that appellants’ terminal disclaimer is effective to overcome the obviousness-type double patenting rejections of claims 1-3, 6, and 7 *949 (assuming such rejections are justified). Thus I would reverse the double patenting rejections and, by necessity, reach the 35 U.S.C. § 102 (c) rejection which I would reverse for the reasons set forth below.

Appellants challenge the validity of Rule 321(b) arguing that it is contrary to law in that it goes beyond the rule-making authority of the Commissioner of Patents and Trademarks (Commissioner) and it extends the Commissioner’s authority to govern post-patent issuance conduct of patentees. These arguments are persuasive.

Initially, it is noted that there exists no express statutory grant to the Commissioner of authority to require inclusion of the non-alienation provision of Rule 321(b) in a terminal disclaimer filed to obviate a rejection based on the judicially created doctrine of obviousness-type double patenting. Thus, such authority must be found in 35 U.S.C. § 6 (a) which states in pertinent part that the Commissioner may “establish regulations, not inconsistent with law, for the conduct of proceedings in the Patent and Trademark Office.” 1 Norton v. Curtiss, 57 CCPA 1384, 1400, 433 F.2d 779, 791 , 167 USPQ 532 , 542 (1970). Additionally, this court has long held that such regulations have the force and effect of law when not inconsistent with the statutes. See, e.g., Norton v. Curtiss, supra.

In light of the specific criteria set forth in 35 U.S.C. § 6 (a), Rule 321(b) with its requirement of maintaining common ownership of certain patents after issuance is invalid on two accounts. First, the non-alienation requirement is directly contrary to and, thus, inconsistent with 35 U.S.C. § 261 which states that “[applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.” Second, the post-issuance restriction of Rule 321(b) cannot be considered as relating to anything concerning “the conduct of proceedings in the Patent and Trademark Office.” 35 U.S.C. § 6 (a) (emphasis added). The Commissioner has exceeded his authority by attempting to govern-by regulation the acts of patentees and the enforceability of patents. Thus, Rule 321(b) is without support under 35 U.S.C. § 6 (a) and must fail.

As to the first point, the majority (while stating that it has sufficiently answered the appellants’ argument that the regulation is contrary to statute) completely ignores the free alienability provisions of 35 U.S.C. § 261 . With respect to the second point, the majority apparently believes that any regulation promulgated under 35 U.S.C. § 6 (a) can satisfy the “for conduct of proceedings in the Patent and Trademark Office” (PTO) by merely having some nominal relationship to application processing within the PTO no matter how strongly the regulation may directly effect the enforceability of patents after issuance by the PTO, at which point the PTO’s jurisdiction over the subject matter ceases.

Additionally, the rule must be considered suspect as being arbitrary since the only rationale given for the rule had been discarded by this court two years prior to the PTO’s rule-making process. The proposed Rule 321(b)’s rationale, as set forth in “Notice of Proposed Rule Making” (Notice), 35 Fed.Reg. 20011 (1970), was to “prevent harassment of an alleged infringer by multiple parties due to subsequent different ownership of multiple patents granted as the result of filing a terminal disclaimer to overcome a double patenting rejection.” The rationale, clearly and absolutely rejected by this court in 1968, In re Jentoft, 55 CCPA 1026, 392 F.2d 633 , 157 USPQ 363 (1968), but now resurrected by the majority here, presumes not only that infringement will occur, but also that, even if assignees act in bad faith, courts would be impotent to redress or prevent such problems. Furthermore, as noted in Jentoft and true today, it does not appear that courts are beset with harassment problems arising when patents directed to genus exist separate from patents directed to species of the ge *950 ñus. Thus while the harassment possibility-may be less remote in the present situation due to the actuality of divided ownership, possible harassment is not such an unmanageable horror sufficient enough to breathe life into an otherwise ultra vires rule-making action on the part of the Commissioner.

In the Notice, footnote 5 of In re Griswold, 53 CCPA 1565, 365 F.2d 834 , 150 USPQ 804 (1966), is cited for support and as this court’s approval of the non-alienation language of Rule 321(b). While the court in Griswold spoke highly of the non-alienation language, it gave the terminal disclaimers no effect. Additionally, in the later decided Jentoft case, this court found a terminal disclaimer without non-alienation language effective to overcome an obviousness-type double patenting rejection implying no such non-alienation language was or should be required. Thus, Griswold cannot be construed as a basis for support of Rule 321(b).

The majority endorses the solicitor’s attempt to contrive some support for Rule 321(b) by combining dictum from an opinion of this court (In re Braithwaite, 54 CCPA 1589, 379 F.2d 594 , 154 USPQ 29 (1967)) with part of the rationale of an 1892 Supreme Court case (Pope Mfg. Co. v. Gormully Mfg. Co., 144 U.S. 248 , 12 S.Ct. 641 , 36 L.Ed. 423 (1892)). However, as discussed below, such a position cannot save Rule 321(b) from a holding that it was promulgated without authority.

In Braithwaite, this court held that a terminal disclaimer was effective to overcome an obviousness-type double patenting rejection even where the claims of the reference patent and the application are “overlapping,” i.e., in generic-specific relationship. In doing so, the court remarked “[w]hen a terminal disclaimer causes two patents to expire together a situation is created which is tantamount for all practical purposes to having all claims in one patent.” 54 CCPA at 1598, 379 F.2d at 601 . In Pope Mfg. Co., which concerned plaintiff’s standing to sue for patent infringement, only one of four claims of a patent was “assigned” to a Mr. Kilpatrick who subsequently conveyed his interest to plaintiff. Stating that “the monopoly granted by law to the patentee is for one entire thing, and that in order to enable the assignee to sue, the assignment must convey to him the entire and unqualified monopoly which the patentee held * * * and that any assignment short of that is a mere license” ( 144 U.S. at 250 , 12 S.Ct. at 642 ), the court held that the “so-called assignment” to Mr. Kilpatrick was a “mere license” and did not vest legal title to the one claim in him or his assigns (i.e., plaintiff) or give him the right to sue for infringement.

Combining the two cases, the solicitor argues and the majority agrees that appellants are attempting to do indirectly that which they cannot do directly under Pope Mfg. Co., supra. However, I find the use of a remark in Braithwaite, supra, coupled with statements in Pope Mfg. Co., supra, to limit an inventor’s right of alienation of his property, 35 U.S.C. § 261 , unfounded and not persuasive.

As to Braithwaite, it must be kept in mind that, in reality, there exist, separate and distinct, a patent and an application which may issue into another patent in these situations, and not one patent containing all the claims.

With regards to the Pope Mfg. Co. case, its holding and reasoning have little relevance to the situation at hand. First, the case has nothing to do with ultra vires rule-making action of the Commissioner. Second, the assignment of U. S. Patent No. 3,935,893 (’893 patent) to General Motors Corporation in the present situation was for the entire rights in the patent, a wholly different situation than in Pope Mfg. Co. Furthermore, the decision was handed down long before the doctrine of obviousness-type double patenting was well defined, 2 long before Congress authorized the filing' of *951 terminal disclaimers, 3 and long before courts had recognized that terminal disclaimers would obviate such rejections. 4

Since I would hold Rule 321(b) to be an unenforceable regulation and since appellants’ terminal disclaimer under consideration 5 meets the statutory requirements of 35 U.S.C. § 253 6 and the regulation implemented thereunder, 37 CFR 1.321(a), 7 the terminal disclaimer is effective to overcome the obviousness-type double patenting rejections of claims 1-3, 6, and 7. See, e.g., In re Eckel, 55 CCPA 1068, 393 F.2d 848 , 157 USPQ 415 (1968). Doing so leads to consideration of the abandonment issue not reached by the majority.

The PTO takes the position that by assigning the ’893 patent to a third party, appellants have abandoned under 35 U.S.C. § 102 (c) 8 their invention claimed in the application on appeal and thus are not entitled to a patent on that invention. Such a position in unsupportable. The PTO Board of Appeals (board) “[did] not believe that Section 102(c) was written with this type of ‘abandonment’ in mind,” and I agree. No reasonable interpretation of § 102(c) can sweep the act of assignment of a prior patent within the meaning of abandonment of the invention claimed in a subsequently filed patent application.

The solicitor characterizes the § 102(c) rejection made by the examiner and board as amounting “to a rationale for a rejection which has had long administrative standing and is searching for a home.” The solicitor then refers to section 304 of the PTO’s Manual of Examining Procedure (MPEP) 9 stating that it has appeared in its present form since 1948 or 1949 and that in that section “the previously and differently assigned patent [sic] of the same inventor is termed a ‘reference’ against a second application for a common subject matter disclosed.” The solicitor concludes that the § 102(c) rejection is “believed sound and *952 consistent with long standing administrative practice.”

I do not find this persuasive and can only agree with the solicitor to the extent that the rejection herein is still searching for a home. First, it is noted that MPEP § 304 concerns pending applications only and not a patent-application situation. Second, if MPEP § 304 were relevant, it could not control for, regardless of how ingrained a practice may have become in PTO practice, this court clearly is not bound by such practice. See In re Gibbs, 58 CCPA 901, 437 F.2d 486 , 168 USPQ 578 (1971).

Accordingly, I would hold that appellants cannot be deemed to have abandoned their claimed invention within the meaning of § 102(c), and the rejection would have to be reversed.

In summary, the decision of the board sustaining the rejection of all claims on the ground of obviousness-type double patenting and under 35 U.S.C. § 102 (c) should be reversed.

. The Commissioner, in fact, based authority for promulgation of Rule 321(b) on 35 U.S.C. § 6 . 36 Fed.Reg. 7312, 7313 (1971).

. See, e.g., Judge Rich’s concurring opinion in In re Zickendraht, 50 CCPA 1529, 319 F.2d 225 , 138 USPQ 22 (1963).

. See In re Robeson, 51 CCPA 1271, 331 F.2d 610 , 141 USPQ 485 (1964).

. Id.

. The body of the disclaimer reads:

Your petitioner, Rockcor, Inc., a Washington corporation having its principal place of business at 11441 Willows Road, Redmond, Washington, U. S. A., represents that it was formerly named Rocket Research Corporation as indicated by the change of name certificate recorded in the United States Patent and Trademark Office at Reel 0312, Frame 958, and that it is the assignee of the entire right, title and interest of application Serial No. 821,360, filed August 3, 1977 for ELASTOMERIC SEALANT COMPOSITION by reason of the assignment of parent application Serial No. 595,351 filed July 14, 1975 to Rocket Research Corporation, such assignment being recorded in the United States Patent and Trademark Office on Reel 3221, Frame 555. Your petitioner, Rockcor, Inc., hereby disclaims the terminal portion of any patent granted on the above identified appli: cation, which would extend beyond the expiration date of patents No. 4,113,799 and No. 3,935,893.

. 35 U.S.C. § 253 states in pertinent part:

In like manner any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.

. 37 CFR 1.321(a) provides:

A disclaimer under 35 U.S.C. 253 must identify the patent and the claim or claims which are disclaimed, and be signed by the person making the disclaimer, who shall state therein the extent of his interest in the patent. A disclaimer which is not a disclaimer of a complete claim or claims may be refused recordation. A notice of the disclaimer is published in the Official Gazette and attached to the printed copies of the specification. In like manner any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.

. 35 U.S.C. § 102 (c) states that “[a] person shall be entitled to a patent unless * * * he has abandoned the invention.”

. MPEP § 304 (4th ed., Rev. 5, Jan. 1981) states:

Where applicant has pending two applications with overlapping subject matter claimed therein, and assigns one of the applications in its entirety, which assignment is duly recorded in the Patent and Trademark Office, the assigned application at once may become a reference against the second application for all common subject matter disclosed, irrespective of the dates of filing of the two applications, and also of any subsequent assignment of the second case to another assignee.