Application of John Edward James

RICH, Judge

(dissenting).

I agree with the majority that the jurisdictional question raised by the solicitor must be settled before we can turn to the propriety of the board’s action, I agree that there is no need to alter the holding of Sundback v. Blair, and I agree that the action of the board “appears to have been less than fair,” but I disagree that “the final action of the board * * was [not] a ‘decision’ which this court has jurisdiction to review.”

The appeal in Sundback v. Blair was from a decision of the Board of Appeals in a proceeding authorized by rule rather than statute. Section 4904 of the patent statute then in force read in relevant part: “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 in *477 vention.” (Emphasis mine.) However, the Commissioner had delegated that authority, providing by rule that motions to dissolve an interference should be heard and determined by a law examiner and that appeal from such a decision of a law examiner was to the Board of Appeals. Thus the decision of the law examiner appealed to the Board of Appeals was, as this court then decided, in legal effect the decision of the Commissioner. Similarly, the decision of the board on appeal from the law examiner's decision was in legal effect the decision of the Commissioner and therefore not reviewable by us for the same reason that decisions actually, personally made by the Commissioner or an Assistant Commissioner acting as his delegee are ordinarily not reviewable by us. 1

In the instant case, on the other hand, the Board of Appeals was acting in its routine, statutory capacity, which is as a reviewer of “adverse decisions of examiners upon applications for patents.” 35 U.S.C. § 7 . Granted, its decision was based on a Patent Office rule rather than a statute, but the Commissioner is authorized by statute, subject to the approval of the Secretary of Commerce, to “establish regulations, not inconsistent with law, for the conduct of proceedings in the Patent Office.” 35 U.S.C. § 6 . These regulations, if approved by the Secretary of Commerce and not inconsistent with statutory, constitutional, or treaty law, have the force and effect of law. Vandenberg v. Reynolds, 268 F.2d 744, 746 , 46 CCPA 938, 940 (1959). And for all practical purposes they are law, the same as statutory law. A decision of the board interpreting such a regulation is no less a decision of the board subject to our review than a decision of the board interpreting a statute, the Constitution, or a treaty. A decision of the board on a statutory appeal interpreting a regulation established by the Commissioner stands on a very different footing from a decision (whether interpreting a statute, a rule, or opinions of this or any other court) in a proceeding in which the entire proceeding consists, as it did in the Sundback case, only of the exercise of delegated authority.

There are, I think, two other grounds for its decision implicit in the majority’s opinion: Our reluctance to handle piecemeal appeals, and our traditional deference to the board on matters of Patent Office procedure. Although I am wholly in agreement with the propriety of basing decisions on either ground in appropriate cases, neither, I submit, justifies the majority’s action here.

As far as the first of these grounds is concerned, it is well established that we will not decide interlocutory appeals. United States Treasury v. Synthetic Plastics Co., 341 F.2d 157 , 52 CCPA 967 (1965). Indeed, the United States Treasury case seems to have raised that principle to a requirement of jurisdiction in trademark cases, and I see no need to question the majority’s assumption that the word “decision” (of the Trademark Trial and Appeal Board) in 15 U.S.C. § 1071 , construed in that case, has the same meaning as the word “decision” (of the Patent Office Board of Appeals) in 35 U.S.C. § 141 , construed in this case. All that that case required, and all that I think we should require in this case, is that the decision be “a dispositive decision in which a right has been adjudicated.” In this case there is no doubt that a right has been adjudicated (the applicant's right to have his appeal heard on the merits by the Board of Appeals), and there is no doubt that the decision was dispositive (the applicant will have lost his claims unless someone reverses the Board).

The majority, however, has read an additional requirement into our version of the interlocutory appeals rule. Not only must the decision below be final, *478 it must also be “on the merits.” That requirement, in my view, is no part of the interlocutory appeals rule; 2 it is part of the majority’s other ground for its decision, the “matters of Patent Office procedure are best determined by the tribunals of the Patent Office” rule.

As far as this second of the grounds I think implicit in the majority’s opinion is concerned, our deference to the board on procedural matters rests, not on a distinction between Congress-made law and Commissioner-made law, nor on a jurisdictional inability to decide controversies concerning the interpretation of Patent Office rules, but on a measured appreciation of the board’s expertise in matters concerning Patent Office practice. This deference is compelled by no statute, and there can be no doubt that we do have the authority to review matters of Patent Office procedure when properly presented to us. Only last spring, in a unanimous decision delivered by Judge Baldwin, this court held an examiner’s refusal to permit entry of an amendment into the official record to be an “adverse decision” properly reviewable, first by the Board of Appeals under 35 U.S.C. § 7 and then by us under 35 U.S.C. § 141 . In re Searles, 422 F.2d 431, 434-435 , 57 CCPA 912, 915-917 (1970). The opinion correctly noted that “traditionally, such actions being considered procedural, rather than substantive, recourse was available only through petition to the Commissioner of Patents, review of his decisions being possible by means of civil actions” (footnote omitted), but we found jurisdiction (1) because the act was “determinative of the rejection” (the interlocutory appeals rule again, in different guise), and (2) because it “required the exercise of technical skill and legal judgment in order to evaluate the facts presented, interpret the requirements of 35 U.S.C. 116 and Rule 45 and weigh the facts against those requirements.” (Emphasis mine.)

Of course I am not suggesting, and the court in Searles did not mean to suggest, that every “decision” made by an examiner is appealable, first to the board and then to us. It may well be that many are not. In re Marriott-Hot Shoppes, Inc., 411 F.2d 1025, 1028 , 56 CCPA 1230, 1235 (1969). But I do think that this court has statutory jurisdiction to review every decision of the Board of Appeals made in the exercise of its statutory jurisdiction, or in the purported exercise of its statutory jurisdiction. In re Wiechert, 370 F.2d 927, 938 , 54 CCPA 957, 969 (1967).

I think we should review the action of the board, because we have jurisdiction to do so, and decide whether its action in dismissing the appeal was correct. Believing it to be incorrect, I would then remand for review of the merits of the rejection.

. The sole exception to date being, so far as I am aware, a decision not to strike the application of the senior party to an interference under Rule 56. Vandenberg v. Reynolds, 268 F.2d 744 , 46 CCPA 938 (1959). There we reviewed the Commissioner’s decision because we regarded it as ancillary to priority.

. In this connection I would like to point out that the first sentence of 35 U.S.C. § 141 reads generally “An applicant dissatisfied with the decision of the Board of Appeals may appeal * * whereas the second sentence of the same section reads “A party to an interference dissatisfied with the decision of the board of patent interferences on the question of priority may appeal * * (Emphasis mine.) There is no requirement in the first sentence that the applicant be dissatisfied with the decision of the Board of Appeals on the question of patentability.