(concurring).
The purpose of these brief remarks is to preclude any upsetting effect the dissenting opinion might have on the court’s total rejection of the solicitor’s novel use of 35 U.S.C. § 135(a) to create “prior art” for the purposes of 35 U.S.C. § 103 when there is admittedly no other statutory basis to do so.
At the outset, I would emphasize that there clearly is no rejection before us other than a § 103 obviousness rejection. Review of the record and the recording of the oral argument of the solicitor makes that amply clear. He categorically stated that the basis of rejection is § 103. His use of § 135(a) was solely for the purpose of providing the essential “prior art” under § 103, against which the claimed invention can be measured for obviousness or unobviousness.
The dissenting opinion acknowledges that “the majority opinion correctly * * * disposes of a 35 U.S.C. § 103 rejection * * *This is an implicit rejection of the solicitor’s theory. The court is, therefore, unanimous in rejecting that theory.
In attempting to use § 135(a) as the basis for affirming the board, the dissent is thus not applying the solicitor’s novel theory but another novel theory that § 135(a) gives rise to an “implied bar to appellants’ claims arising from an adverse award of priority.” (Emphasis mine.) No such “bar,” implied or otherwise, has been argued to the court. It was not the Patent and Trademark Office that conceived of using an 1836 Senate report, dealing with conditions long since dissipated by the creation and effective operation of a Patent Office having an examining corps, to support a wholly new interpretation of the Patent Act of 1952.
The dissenting opinion undertakes to find its “implied bar,” which was never recognized by the solicitor, only in an ambiguous sentence in the board’s opinion. The board, attempting to rephrase the basis of the examiner’s rejection said, somewhat ineptly:
As we interpret the reasoning of the examiner, it is simply that the subject matter sought to be patented is barred to appellant [sic] by reason of the award of priority as to the counts of the interference under 35 U.S.C. § 135.
This is the one and only reference to § 135 in the Office. No reference to it appears in the examiner’s final rejection or in his subsequent action, or in the Examiner’s Answer.
What did the board mean by “under 35 U.S.C. § 135”? What does that clause modify? The dissent reads it, mistakenly, I think, as saying “barred * * * under 35 U.S.C. § 135.” I think all the board was saying was “award of priority * * * under 35 U.S.C. § 135.” Section 135 is the obvious statutory basis for awards of priority, and the latter reading makes sense. In the total absence of any indication by the board that it was predicating the “bar” on § 135, rather than on the “award of priority,” the former reading is, to say the least, somewhat strained. In any case it is a weak reed on which to lean in charging the majority with resting its decision on a “false premise” and with reaching “an absurd result.” The board’s statement is not quite as “specifically and plainly stated” as the dissent assumes it to be, at least to this reader. When the board wants to plainly and specifically make *1335rejections additive to those of the examiner, it is quite able to do so under 37 CFR 1.196(b). This it did not do.
Needless to say, I agree with Judge LANE’s opinion.