(concurring).
In concurring with the result reached in this case, I do so solely because the appealed claims are not allowable over the art now cited. I do not join the majority opinion because of my reservations about the significance which we should accord to The Jeffrey Mfg. Co. v. Kingsland, Comr.Pat., 86 App.D.C. 13, 179 F.2d 35 (1949), which the majority cites as fully treating the principles and law involved in “The Propriety of Reopening the Case.”
Partial support for the position of the court in the Jeffrey case was found in Postum Cereal Co. v. Calif. Fig Nut Co., 272 U.S. 693, 47 S.Ct. 284, 71 L.Ed. 478 (1927). To whatever extent the *422policy aspects of the Jeffrey case depend on the Postum case, they should now be reconsidered in view of Glidden Company v. Zdanok, 370 U.S. 530, at page 577, 82 S.Ct. 1459 at pages 1486, 1487, 8 L.Ed.2d 671 (1962), which points out:
“At the time when Postum was decided, the proceeding in equity against the Patent Office was cumulative rather than alternative with the review by appeal, and it seems likely that it was this feature of the statute which caused the Court to characterize the judgment of the Court of Appeals as ‘a mere administrative decision.’ 272 U.S., at 698 [47 S.Ct. at 285, 71 L.Ed. 478]. Thereafter Congress made the remedies alternative, Act of March 2, 1927, c. 273, § 11, 44 Stat. 1335, 1336, and it was this amended jurisdiction that it later transferred to the Court of Customs and Patent Appeals, renaming the court in the process. Act of March 2, 1929, c. 488, 45 Stat. 1475.”
By reason of the statutory changes enacted since the Postum decision, which are referred to in the Zdanok decision, the adjudications of this court now have a finality which was not possessed by the decisions of our predecessor court at the time of the Postum case. Now, an appeal here is an alternate remedy and an applicant is bound by our decision.
It seems to me that the Jeffrey case in giving the Patent Office the right to reopen and in effect relitigate issues which were or could have been determined in a prior appeal, must have been predicated upon the earlier cumulative nature of the appellate proceeding in this court. Thus, in the Jeffrey case, a decision of the United States Court of Customs and Patent Appeals was characterized as
“ * * * simply an instruction, which the Commissioner must follow, regarding the particular points involved in the appeal. We are supported in this view by the Supreme Court in Postum Cereal Company v. California Fig Nut Company, 1927, 272 U.S. 693, 698, 47 S.Ct. 284, 285, 71 L.Ed. 478.” * * *
I agree fully with the majority that the concept of “double jeopardy” raised by appellant is not applicable here. I likewise agree with the majority that appellant does indeed have “just cause for complaint that the Patent Office should have operated more effectively in finding the closest prior art * * * and in citing it early in the prosecution * * *"1
The Patent Office is an administrative agency charged by Congress with the task of carrying out the public policy expressed in Article 1, Section 8, of the Constitution. Decisions of the Patent Office in the discharge of its duties are subject to judicial review. Thus, it seems to me, the same judicial doctrines which are applied to private litigants in furtherance of the public policy of bringing an end to legal proceedings after a final determination of issues which were or could have been raised therein should likewise apply to Patent Office proceedings. In Internation Union of Mine, Mill and Smelter Workers, Locals No. 15 v. Eagle Picher Co., 325 U.S. 335, 340-341, 65 S.Ct. 1166, 89 L.Ed. 1649 (1945), Mr. Justice Roberts expressed this concept as follows:
“Finality to litigation is an end to be desired as well in proceedings to which an administrative body is *423a party as in exclusively private litigation. The party adverse to the administrative body is entitled to rely on the conclusiveness of a decree entered by a court to the same extent that other litigants may rely on judgments for or against them. * * *
“ * * * [ W] e have allowed the Board great latitude in devising remedies which it deems necessary to effectuate the purposes of the Act. But it is not we who essay to interfere with the discretion of an administrative body; it is the Board which is seeking to vacate a court order. The Board had exercised its discretion and devised a remedy. * * * What the Board complains of is that it is not permitted to exercise its admittedly wide discretion a second time, or any number of times it may choose.
“Administrative flexibility and judicial certainty are not contradictory; there must be an end to disputes which arise between administrative bodies and those over whom they have jurisdiction.” * * *
My concurrence in the result reached by the majority is essentially based, however, on the pertinent observation and admonition of Mr. Justice Frankfurter, prior to the Eagle Picher decision, in Federal Communications Commission v. Pottsville Broadcasting Co., 309 U.S. 134, 146, 60 S.Ct. 437, 84 L.Ed. 656 (1940):
“It is, however, urged upon us that if all matters of administrative discretion remain open for determination on remand after reversal, a succession of single determinations upon single legal issues is possible with resulting delay and hardship to the applicant. It is always easy to conjure up extreme and even oppressive possibilities in the exertion of authority. But courts are -not charged with general guardianship against all potential mischief in the complicated tasks of government.” * * * (Emphasis added.)
I have emphasized the words “general guardianship” in the above-quoted passage, because I feel they answer appellant’s contention in the instant case. His argument would in effect require us to be charged with general guardianship against all potential misehief to an applicant which reopening of prosecution by the Patent Office might produce. In here rejecting appellant’s contention, I do not think we should preclude ourselves from adopting the view of the Eagle Picher case, should we be confronted with instances where the Patent Office, under the aegis of such decisions as the Jeffrey case, seeks to exercise its discretion a second time (or such number of times as it may choose) and thus in effect to refuse to be governed by the decision of this court.
Possibly it was reliance upon the rationale of such decisions as the Jeffrey case and the authorities therein cited which encouraged the Patent Office in this case to be less careful in developing the issues on the prior appeal than a private litigant must be. The degree of care required of an applicant is high, in view of the conclusive determination of issues against him resulting from the now alternative character of appeals to this court.
I suggest, therefore, that this court should remain alert to the very real threat to fundamental legal principles which resides in the rationale of the Jeffrey case. We should approach the problem as the Supreme Court did in the Eagle Picher case, to the end that judicial certainty with respect to the proper termination of controversies should be recognized as paramount, in the interest of the public. There must be an end to disputes between administrative bodies and those whose legal rights are determined by such bodies. I do not find a recognition of this principle in the Jeffrey case.
. It is commendable that the Patent Office now seems to have recognized the inherent injustice in the practice which resulted in the present appeal. In the notice of Acting Commissioner Reynolds dated July 26, 1962 (781 O.G. 1) dealing with “New Examining Procedures,” it is encouraging to note his statement that under the new procedures now in effect “The first action by the Office in every case is made thorough, clear and complete.” Had this been the situation when the first action was entered in the application here in issue, it is probable the rights of applicant could have been finally adjudicated in his prior appeal.