# Appendix — Sears v. Dann > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385608_2032%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Appendix - **Published:** January 1, 1976 - **Citation:** 425 U.S. 904 ## Text la APPENDIX A DECISION BY THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA ALEXANDRIA DIVISION November 14, 1975 “THE COURT: ...I don’t think I have jurisdiction; I think it’s improperly filed. I'll dismiss it for that reason.” 2a UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT 73-1699 MARY HELEN SEARS, Appellant, vs. ROBERT GOTTSCHALK, Commissioner of Patents, Appellees. APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA, AT ALEXANDRIA. Upon consideration of the plaintiff’s motion to permit the district court to consider a motion pursuant to rule 60(b) (6), by counsel, IT IS ORDERED that the motion is denied. For the Court—by Direction /s/ WILLIAM K. SLATE, II Clerk Filed: December 15, 1975 [SEAL] 3a EXHIBIT A LEE PHARMACEUTICALS 1444 Santa Anita Ave., P.O. Box 3836 South El] Monte, Calif. 91733 (2138) 442-3141 September 9, 1975 HL 75-441 Mr. Joseph Nakamura Solicitor, United States Patent Office Washington, D.C. 20230 Dear Mr. Nakamura: I am writing you as President of Lee Pharmaceuticals and a named inventor on many of its patents and patent applications, to express my dismay that abandoned patent applications in the Patent Office files are not publicly available to be searched before a patent applica- tion is filed and are not used in examining patent ap- plications after they are filed. This is particularly diffi- cult for me to rationalize with what I understand to be the fact that such abandoned applications are considered by the courts as evidence that may invalidate an issued patent. In this connection, I have noted the recent use of non-public evidence to invalidate patents in Del Mar Engineering Laboratories vs United States 186 USPQ 42 (Ct. Cls. 1975) and in Becton, Dickinson & Co. vs Sherwood Medical Industries, Inc., No. 72-3599 decided by the Fifth Circuit Court of Appeals July 28, 1975. At present, my company has a unique commercial product constituting a carvable dental composite restora- tive material covered by Application Serial No. 504,838. I am writing this letter to request that the Patent Office search for and make available to my company under 5 U.S.C. 552(a) (3) those abandoned patent applications that may be in any way germane, based on their subject oh ic a Do aR ARR NE SRS eR hag AE Teta Pte eta: ANE Raat ise iat Raley 4a matter, to the patentability under any section of the patent statutes of the claims of Application Serial No. 504,888—and that those claims be evaluated relative to all abandoned patent applications so located. I look forward to your prompt response. Very truly yours, /s/ Henry Lee HENRY LEE, Ph.D. President HL:lm 5a EXHIBIT B | SEAL] U.S. DEPARTMENT OF COMMERCE PATENT OFFICE Address Only: COMMISSIONER OF PATENTS Washington, D.C. 20231 September 30, 1975 Dr. Henry Lee President, Lee Pharmaceuticals 1444 Santa Anita Avenue P.O. Box 3836 South El Monte, Calif. 91733 Dear Mr. Lee: This is in response to your letter of September 9, 1975, received on September 16, 1975, requesting that the Patent and Trademark Office search for and make available to your company under 5 USC 552(a) (3), those abandoned applications that may be germane to the patentability of claims in application Serial No. 504,838. I regret that your request must be denied. There are literally hundreds of thousands of abandoned patent applications in the Patent and Trademark Office. An unreasonable amount of effort would be involved in locat- ing any which might be germane to the patentability of claims in application Serial No. 504,838. And even if any were located, we would be prohibited by statute, 35 USC 122, from making them available to your com- pany. The noted statute specifies that “|a]pplications for patents shall be kept in confidence by the Patent Office * * *.” 35 USC 122. Abandoned applications, ac- cordingly, are exempt from disclosure. 5 USC 552 (b) (3). You also request an evaluation of the claims in applica- tion Serial No, 504,838, relative to all abandoned patent 6a applications located. This request is likewise denied since 5 USC 552(a) (3) applies only to existing records and does not require an agency to create a record. Should you desire to do so, you may submit a written appeal from this decision within 30 calendar days after the date of this letter. The appeal shall include a copy of your original request, a copy of this letter and a statement of the reasons why you believe this denia! is in error. The appeal should be addressed to The Commissioner of Patents and Trademarks, Freedom of Information Request Control Desk, Box 50, Washington, D.C. 20231. Sincerely, /s/ Joseph F. Nakamura JOSEPH F. NAKAMURA Solicitor ec: Asst. Gen. Counsel for Admin. Ta EXHIBIT C [ SEAL] LEE PHARMACEUTIALS 1444 Santa Anita Ave., P.O. Box 3836 South E] Monte, California 91733 U.S.A. Tel. (212) 442-841 WATS: (800) 423-4173 TWX: (910) 587-3420 October 29, 1975 Mr. Joseph Nakamura Solicitor, United States Patent Office Washington, D.C. 20230 Dear Mr. Nakamura: This a written appeal from the decision which appears in the September 30, 1975 letter signed by Joseph F. Nakamura, Solicitor. A copy of my original request dated September 16, 1975 and of Mr. Nakamura’s Sep- tember 30, 1975 letter are enclosed. The reasons why I believe Mr. Nakamura’s denial of my request is in error include the following: 1. As my original request points out non-public evidence, including abandoned patent applications, are considered by the courts as evidence that may invalidate patents for failure to measure up to the constitutional patentability standard as embodied, for example, in 35 U.S.C. 108. Mr. Nakamura does not suggest otherwise. 2. 35 U.S.C. 6 provides that the Commissioner .. . shall superintend or perform all duties required by law respecting the granting and issuing of patents”. As a part of his duties the Commissioner is re- quired to “cause an examination to be made” of each application for patents and of “the alleged new BLEED THROUGH 8a invention” contained therein and to issue a patent on such applications only “if on such examination it appears that the applicant is entitled to a patent under the law” 35 U.S.C. 131. 8. To determine whether the “applicant is entitled to a patent under the law” it is necessary for the Commissioner to consider the evidence germane to that issue which is contained in abandoned patent applications. My request that the Commissioner discharge that duty as to my company’s application 504,838—a duty which is imposed by the patent statutes—is not rationally denied by Mr. Nakamura’s observation that “5 U.S.C. 552(a) (3) ... does not require an agency to create a record”’.* 4, Since, as demonstrated by paragraphs 2 and 83, availability and consideration of abandoned applica- tions is “necessary to carry out the provisions of : “an Act of Congress” such records are excluded from the confidence provisions of § 122—and are expressly subject to the non discretionary disclosure portions : of that statute. . 5. Mr. Nakamura’s conclusion that under 35 U.S.C. 122 and 5 U.S.C. (b)(3) abandoned applications are “exempt from disclosure” conflicts squarely with Administrator, F.A.A. Vv. Butterfield 422 U.S. 255, 45 L.Ed. 2d 165 (1975). As explained in that decision, “all parts of an act... are to be given effect” and “repeals by implication” are not favored. Statutes capable of coexistence are to be construed to give effect to both * Notably my request was that abandoned applications which are “germane” be considered in connection with my application Serial No, 504,838—just as all other germane references are considered, = Ee ee Te a 9a or all. Both the FOIA and § 122 have disclosure and nondisclosure aspects. Both aspects of both acts can and should be given effect. The disclosure aspect of § 122 is concerned with those applications “necessary to carry out the provisions of any Act of Congress”. The applications in this cate- gory are expressly excluded from its “confidence pro- visions” by §122’s own terms. “The wisdom of the balance struck by Congress is not open to judicial scrutiny.” Robertson, supra, 45 L. Ed. 2d at 174. Very truly yours, /s/ Henry Lee HENRY LEE, Ph.D. President HL/rew enclosures ee ee 10a EXHIBIT D [SEAL] UNITED STATES DEPARTMENT OF COMMERCE PATENT AND TRADEMARK OFFICE Address Only: COMMISSIONER OF PATENTS AND TRADEMARKS Washington, D.C. 20231 December 1, 1975 Dr. Henry Lee President, Lee Pharmaceuticals 1444 Santa Anita Avenue P.O. Box 3836 South El Monte, California 91733 Re: Appeal from initial decision denying a request under the Freedom of Information Act Dear Dr. Lee: This is in response to your letter of October 29, 1975, appealing from the denial of your request to have the Patent and Trademark Office search for and make avail- able to your company under the Freedom of Information Act, 5 USC 552, those abandoned patent applications that may in any way be germane to patentability of the claims in your pending patent application. You had also requested, and been denied, an evaluation of the claims in the light of all abandoned applications so located. I have reviewed the reasons why you believe the denial of your request was in error but am not convinced that the denial was wrong. Congress has directed that “|{alpplications for patent shall be kept in confidence by the Patent [and Trade- lla mark| Office and no information concerning the same given without authority of the applicant or owner * * *.” 385 USC 122. The U.S. District Court for the Eastern District of Virginia has held in Sears v. Gottschalk, 357 F. Supp. 1327, that abandoned patent applications are barred from disclosure by 35 USC 122, and there- fore specifically exempted by statute from disclosure un- der the Freedom of Information Act, as provided in 5 USC 552(b) (8). The Court’s decision was affirmed by the U.S. Court of Appeals for the Fourth Circuit (502 F.2d 122). Certiorari was denied by the Supreme Court on June 30 of this year (sub nom Sears v. Dann) and rehearing was denied on October 6. I cannot agree with your contention that my duty to “cause an examination to be made” of patent applica- tions (85 USC 1381) requires me to consider abandoned patent applications as references . The same contention was made, and rejected by the Court, in Sears v. Gotts- chalk, supra. The two cases cited in your original request (Del Mar Engineering Laboratories vy. United States, 186 USPQ 42 (Ct. Cls. 1975), and Becton, Dickinson v. Sherwood, 187 USPQ 200 (5th Cir. 1975)) did not involve the use of abandoned patent applications as references. I cannot agree with your view that the exemption of abandoned applications from disclosure conflicts with the Supreme Court’s decision in Administrator, FAA Vv. Robertson, 422 U.S. 255, 95 S. Ct. 2140. The same con- tention was recently made by the plaintiff in the Sears case and rejected by the Court in denying the plaintiff's motion under Rule 60(b), FRCP, for relief from judg- ment (E.D, Va., November 14, 1975). Finally, your request that an evaluation of the claims in your pending application be made is a request to have a record (evaluation) made. The Freedom of In- BLEED THROUGH 12a formation Act does not require agencies to create a record, and your request was, therefore, properly denied. I am, therefore, finally denying your Freedom of In- formation Act request on the ground that the requested records fall within the (b)(3) exemption of the Act | and the requested evaluation is not within the scope of the Act. This is a final decision for the Department of : Commerce from which you have a right of judicial review as specified in 5 USC 552(a) (4) (B). Sincerely, /s/ C. Marshall Dann C. MARSHALL DANN Commissioner of Patents and Trademarks F ec: Special Asst. to the Secretary q for Public Affairs i Asst. Secretary for Administration Asst. General Counsel for Administration aes WR ARENT ee I Ae Se, a a AR ak Benscc. nC BRS --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385608_2032%3A2. Public record. Not legal advice.