The opinion
GARRETT, Chief Judge
(specially concurring) .
This specially concurring opinion is written merely to elaborate what is said in the majority opinion relative to the “affidavit question,” which is referred to also in the dissenting opinion.
Former Rule 138 of the Patent Office, 35 U.S.C.A. Appendix, which was in effect at the time the Board of Appeals passed upon the case, read: “138. Affidavits or exhibits submitted after the case has been appealed will not be admitted without remanding the application to the Primary Examiner for reconsideration; but the appellate tribunal may in their discretion refuse to remand the case and proceed with the same without accepting the affidavits or exhibits.”
The rule, of course, had reference to appeals taken to the Board of Appeals or other appellate tribunals of the Patent Office from Primary Examiners and Interference Examiners, and had no relation to appeals taken to this court, which are governed by statute, 35 U.S.C.A. §§ 60 , 61, 62, R.S. §§ 4912, 4913, 4914.
After the Board of Appeals had rendered a decision in this case affirming the examiner’s rejection of the claims, there was filed on behalf of appellant a request for reconsideration, which was accompanied by the affidavits of two parties.
In a second decision, the board discussed questions raised , in the request for reconsideration, but made no reference whatever to the affidavits.
In the reasons of appeal to this court, there was no assignment of error in respect ol the affidavits, but in the brief for appellant before us it is said: “ * * * It is respectfully submitted that under the peculiar facts of this case, the Court should, on its own motion, consider the affidavits and exhibits in order to satisfy itself that the Examiner made an unwarranted assumption as regards the facts.”
As hereinbefore stated, -appeals to this court are governed by statute, and its procedure and jurisdiction in reviewing decisions of the tribunals of the Patent Office-are largely controlled and limited by statute. Thus in 35 U.S.C.A. § 62 ,'R.S. § 4914, it is expressly stated that "the revision shall' *175 be confined to the points set forth in the reasons of appeal.” (Italics supplied.)
Some emphasis has been placed upon the decision in the case of In re Hutchison, 104 F.2d 829 , 26 C.C.P.A., Patents, 1370.
In that case, as in this, an affidavit was filed for the first time in connection with a request that the board reconsider its original decision.
In the course of its discussion of the questions raised in the request for reconsideration the board alluded to the affidavit, saying: “The affidavit submitted with petitioner’s supplement to the request for reconsideration has not been considered as an affidavit but has been regarded merely as cumulative argument of the same character as that of the request for reconsideration.” (Italics supplied.)
This court then said, “We, of course, have considered it upon the same basis,” meaning thereby the basis of cumulative argument, not as evidence of any factual statement. It is not required that argument be sworn to.
In the revised Patent Office Rules, which became effective March 1, 1949, Rule 195 was adopted in lieu of Rule 138, supra.
In Ex parte Patrick decided concurrently herewith, 189 F.2d 614 , 38 C.C.P.A., Patents, -, a situation respecting an affidavit feature similar to that in this case exists, except that in the Patrick case the final decision of the 'board was rendered a few days after Rule 195 had been promulgated. Inasmuch as a specially concurring statement is being made in that case also, Rule 195 is here quoted: “195. Affidavits after appeal. Affidavits or exhibits submitted after the case has been appealed will not be admitted without a showing of good and sufficient reasons why they were not earlier presented.”
Insofar as the issue about the affidavit matter is concerned, the new rule in no way alters the relationship of this court to appeals from the tribunals of the Patent Office, nor is either its jurisdiction or procedure affected thereby. The rule as stated in Ex parte Ayers, 154 F.2d 182 , 33 C.C.P.A., Patents, 874, and in Ex parte Ripper, 171 F.2d 297 , 36 C.C.P.A., Patents, 743, continues as the law.