(dissenting).
The majority opinion, with all due ■respect, though full of the sound and fury •of many statutes and rules, overlooks three significant factors.
A.
Preliminarily, this is not a case in "which an applicant is being held to strict compliance with the Rules of Practice of the United States Patent Office in the interest of preserving sound procedural requirements.
This is a case in which an applicant, "who has proceeded entirely to the satisfaction of the Patent Office,1 and has become involved in an interference due to procedures initiated by the Patent Office, is losing an award of priority to another inventor who, on the record, is the later inventor — a Junior Party.
This Junior Party, attempting to avoid the contest on priority which the Patent Office set up and maintained through the decisions on motions, is raising a hue and cry based on a technicality having no bearing on the public interest or on the maintenance of proper procedure in the Patent Office. Having been put under an order to show cause why priority should not be decided against him, the Junior Party asserts the Lorenz application was “abandoned,” though the Patent Office, under its own rules and practice, did not consider it to be.
I will now take up the three important considerations which in my opinion demonstrate error in the conclusion of the majority and in the reasoning by which it is reached.
I
The first matter overlooked by the majority is that its decision flies straight in the face of this court’s own holding in Bain et al. v. Hasselstrom et al., 165 F.2d 436, 35 CCPA 811. That was a very carefully considered case on this very issue of an application becoming abandoned by failure to respond to a final rejection and being put into an interference wherein the party who was defeated on dates attempted to win the priority decision by a technical claim of “abandonment,” based on failure to respond to a final rejection.
I know there are factual differences on the basis of which an attempt might be made to distinguish the present case from the Bain case, but no such attempt has yet been made. However, there are *892questions there dealt with and decided by this court which cannot be distinguished from.
Bain was the Junior Party. He tried to win, just as Finkl does here, by a motion to dissolve on the ground of informality in declaring the interference in that the Hasselstrom application was abandoned by failure to reply to the final rejection. Bain’s case was even stronger than Finkl’s. No response was ever made to the final rejection. This court held there was no abandonment.
The examiner had sent Hasselstrom a letter suggesting a claim for interference, he made it and the interference was declared, as here. The only difference from the instant case was that that examiner’s letter was mailed before the 6-month period ended. The interference was declared after the 6 months were up.
What this court decided, after briefing by the Patent Office, on request, as well as by the parties, was that suggesting claims to an applicant for interference purposes is a new action in the case and that the provisions of the rules (then Rule 77, now 135) about abandonment no longer apply.
A “leading case” in the Patent Office was cited in Bain in which the claims were not made by the applicant until after the period allowed for response to a rejection (then one year). Coulson v. Callender et al., 1902 C.D. 395. Several other cases also were cited following it, including Ex parte Kohn et al., 1932 C.D. 9, and Ex parte Larner, 1929 C.D. 18. This court wrote a supplemental opinion on rehearing reiterating its position that suggesting a claim is a new Patent Office action. It accepted what the Patent Office stated to be its policy in the Kohn ease, as follows:
“Where claims are suggested to an applicant for interference purposes such action is deemed, as held in the above referred to Coulson v. Callender et al. decision, a' new action in the case. In effect such action is an offer to the applicant of the allowance of claims for his invention if presented in the suggested! form and if he can prove he is the-prior inventor. The provisions of Rule 77 are not deemed to extend to-actions in cases in which claims are suggested for interference provided of course such claims are presented within the designated period.”
The result in the Bain case, of course, was that Hasselstrom et al. were held not to have abandoned their application though they never made any response whatever to the final rejection, because they copied suggested claims within the time given them to do so, that suggestion having been a new action by the Patent Office.
I know of nothing to prevent an examiner from withdrawing a final rejection, sua sponte, to put an application into an interference in order to assure that the patent goes to the proper first inventor. The majority cites none. In section III hereof I show it is proper procedure.
It seems to me that what the examiner did here is in the public interest. I cannot agree with the unsupported notion of the majority opinion that Primary Examiners are without authority to revive abandoned applications because of Rule 137 and an empty theory that the “Commissioner” alone retains that authority. But, as shown infra, we are not dealing with revival here. Every act done in the Patent Office below the level of the boards is in the name of the Commissioner.
Attention is called to Rules 182 and 183 under which the “Commissioner” “when justice requires” can act outside of any rules he has made. These rules are not mentioned in the majority opinion.
II
The second point overlooked is that whether the application was ever in a state of “abandonment” was entirely dependent on whether the amendment, timely filed on December 7, 1959, was or was not responsive.
If it was responsive, of course there was no abandonment. Either it was or it *893was not, and what anybody thought about it is not controlling until there is a final authoritative decision on that issue. Included here are the first thoughts of the examiner and the probable thoughts of the attorney. They are quite irrelevant.
Let it not be overlooked that in this case, within all the rules and statutes cited by the majority, applicant made timely response to the final rejection, which response is alleged to be sufficient, under all the rules and statutes, to put the application in condition for allowance.'
If it in fact did so, there was never any abandonment.
On October 12,1961,. the examiner held the amendment to be “responsive under Rules 113, 116 and 135 and that the application was in condition for allowance.” (My emphasis.)
It is also to be inferred that earlier, on May 20, 1961, in his “new action” suggesting the claim, he found the application to be allowable, at least with that claim in it. Only “allowable” applications can be put into interference. Rule 201(b). Interference Law and Practice, Revise & Caesar, Chap. II.
The Board of Patent Interferences said:
“It is true, of course, that the Examiner could reverse his opinion on patentability and withdraw the final rejection if the amendment of December 7th had placed the case in condition for allowance.” [My emphasis.]
It also said:
‘ * * * an Examiner can reverse his judgment as to whether or not an amendment was responsive and act on a case which he previously held abandoned. This is correct but does not fit the situation here, since the Examiner never held the amendment was responsive and never previously held the case was abandoned. We cannot read into the Examiner’s actions holdings which he did not make on the record.” [My emphasis.]
I do not understand the last statement. The words following “This is correct” seem (a) a complete non-sequitur and (b) contrary to the fact of the examiner’s October 12 holding of sufficiency quoted above. What did the board demand, a label on the paper saying “Allowance, final rejection withdrawn”? I do not see how the examiner could have made a clearer ruling.
I am unable to find how the board arrived at a finding of a holding by the examiner of non-responsiveness except by denying to him the very right to change his mind which it held he had. See infra part III for further on this right.
The board did not go into the merits of the amendment as a response and, if I understand its confusing opinion at all, it held “there is nothing before us for review in this regard.”
Consequently the responsiveness of the amendment is not before this court for review as it was either not before the board or not decided by it if it was.
The examiner having held that the amendment put the case in condition for allowance, there never was any abandonment.
Ill
The unstated presumption underlying, the' rationalization of the majority opinion is that a reversal in this case would play havoc with established procedures in the Patent Office. The situation is; quite otherwise. It is the affirmance that, will play havoc with them.
The place we look to see what the procedure now is — or is supposed to be- — is-the Manual of Patent Examining Procedure (MPEP), upon which appellant here strongly relies and which the majority wholly fails to mention, even those sections considered by the board.
The fallacy into which the majority reasoning falls is the same one which the MPEP warns the examiners against in 711.03(c), the failure to distinguish between (1) “A petition to revive an abandoned application” and (2) “a petition from an Examiner’s holding of abandonment.” (My emphasis.) In other words, a holding does not create an abandon*894ment. If there is an abandonment, you have to revive the application. But if there is only a holding, you can argue that it was wrong. As the cited paragraph points out — and I note this particularly in refutation of the majority opinion footnotes 11 and 12 and their related text — if one is petitioning to revive, the application is assumed to be “abandoned,” the matter falls under Rule 137 and the petition requires a fee of $10. If the issue is whether the application ever became abandoned “the petition from such a holding comes under Rule 181 and does not require a fee.” The majority does not seem to appreciate this crucial difference and ignores the existence of Rule 181 and the procedure established under it.
What we have in this case — the sole issue in the case — is only a question of whether the application was ever abandoned and until it is clear that it was, revival and the law and rules relating to revival are wholly irrelevant. 35 U.S.C. § 133 does not control in this situation because it applies only where there is failure to prosecute within six months and the issue we are deciding is whether there was such failure. If our decision is affirmative on that issue, then the application falls within section 133; if it is negative, the section does not apply at all. Therefore on the issue the section is irrelevant. To utilize it in deciding the issue before us is to indulge the logical fallacy of petitio principii, or begging the question.
But to get back to what the existing practice is. MPEP 706.07(e) says, in part (my emphasis):
“The Examiner may withdraw the rejection of finally rejected claims ■whenever he deems the conditions .appropriate for such action. If, for •example, new facts or reasons are presented such as to convince the Examiner that the previously rejected claims are in fact allowable, then the final rejection should be withdrawn.
* * * * * *
“When a final rejection is withdrawn, all amendments filed after the final rejection are ordinarily entered.”
Another significant paragraph showing what is the practice is MPEP 1101.01 (n), as follows (my emphasis) :
“If claims are suggested in an application near the end of the statutory period running against the case, and the time limit for making the claims extends beyond the end of the period, such claims will be admitted if filed within the time limit even though outside the six months’ period AND EVEN THOUGH NO AMENDMENT WAS MADE RESPONSIVE TO THE OFFICE ACTION OUTSTANDING AGAINST THE CASE AT THE TIME OF SUGGESTING THE CLAIMS. However, if the suggested claims are not thus made within the specified time, the case becomes abandoned in the absence of a responsive amendment filed within the six months’ period.” Rule 203(c).
This is my answer to the majority opinion’s statement that the examiner here did not have the “authority” to do what he did because that authority (assumed to be but actually not authority to “revive”) “is retained by the Commissioner under Patent Office Rule 137.”
Therein I see a clear recognition of what this court held in Bain et al. v. Hassel-strom et al. I deem the majority decision to be inconsistent with the spirit if not the letter of this recognized Patent Office practice.
But it seems to me that the complete answer to the entire majority position and to the erroneous position taken by the board is in MPEP 711.03(a) which reads (my emphasis):
“711.03(a) HOLDING BASED ON INSUFFICIENCY OF RESPONSE
“Applicant may deny that his response was incomplete.
“While the Examiner has no authority to act upon an application *895in which no action by applicant was taken during the statutory period, he may reverse his holding as to whether or not an amendment received during such period was responsive and act on a case of such character which he has previously held abandoned. THIS IS NOT A REVIVAL OF AN ABANDONED APPLICATION BUT MERELY A HOLDING THAT THE CASE WAS NEVER ABANDONED.” See also 714.03.
I cannot say more than that. The section fits the present .situation like the proverbial glove. But, since the appellant put pivotal emphasis on that section, I am at a loss to understand why there is no mention of it in the majority opinion. It is clear to me that if the majority decision as now expressed is to govern the practice, then changes are certainly going to be required in the Manual because the examiner is no longer going to be authorized to give thoughtful reconsideration to his erroneous, sometimes hasty, first responses and correct them by withdrawing or otherwise undoing erroneous holdings of abandonment.
If the examiner’s first word is the last word on abandonment, as the majority now seems to hold,2 then I do not see how any tribunal, including this court, can ever correct it.
I think the decision below must be reversed to maintain the present salutary practices in the Patent Oifice.
. Up to the decision of the Board of Patent Interferences, which was the last act and the only round of the fight lost by appellant.
. The majority opinion says (p. 890) :
“ * * * since the clear import of the examiner’s letter of December 23, 1959 loos that the proposed amendment of December 7, 1959, did not constitute a complete and proper response to the examiner’s final action of June 19, 1959, and since appellant did not file an appeal within the six month statutory time period, we agree with the board that the Lorenz application is abandoned.”