joins (concurring).
This case is one more example of why reasons of appeal should be dispensed with by statutory amendment. They continue to waste our time and energy in useless debate over senseless technicalities.
See my concurring and dissenting opinions in In re LePage’s Inc., 312 F.2d 455, 50 CCPA 852, and In re Gruschwitz, 320 F.2d 401, 50 CCPA 1498, respectively, and Judge Smith’s dissenting opinion in In re Timmerbeil, 320 F.2d 413, 50 CCPA 1514.
Reasons of appeal waste our time because the Patent Office appears to consider it to be its legal duty to waste its time concocting arguments as to why reasons of appeal may not be legally sufficient under some of our many conflicting opinions on the question.
Meanwhile the backlog in this court increases as it does in the Patent Office, is threatening to increase further, and such time wasting is inimical to sound government.
The Claim 13-lb Jurisdictional Question
The court’s opinion appears to take the view that the “purely ministerial” and nunc pro tunc correction by the board of its opinion, to express its intention to allow claims 13 and 14, presents a fact situation distinguishable from that in In re Allen, 115 F.2d 936, 28 CCPA 792.
In Allen, the day following the filing of the notice of appeal the board rendered a decision saying:
“This is a petition for reconsideration of our decision dated September 30, 1939.
“Reconsideration of claim 3 is requested. Through inadvertence this claim was not listed as allowable in our former decision. It contains the same limitation as the claims which we held allowable.” [Emphasis added.]
The board allowed claim 3 but this court held the board was without jurisdiction to do so because of the taking of the appeal. It thereupon considered claim 3 as rejected, reviewed the rejection on the merits, and allowed it for the very reason the board had tried to allow it, a great work of supererogation.
Since I think the decision in the instant case is sound and is clearly inconsistent with Allen, I would expressly overrule Allen to the extent hereinafter indicated and not leave it to be inferred that we have to some uncertain extent modified it.
*128There is a good reason to overrule Allen as to ex parte cases. The reasoning of that opinion is faulty in treating all appeals to this court from the Patent Office as though they were appeals from a trial court to an appellate court. The analogy holds only in inter parties cases wherein a Patent Office tribunal, the Board of Patent Interferences or the Trademark Trial and Appeal Board in an opposition or interference, renders a decision determining rights as between two or more parties litigant, none of whom is the Patent Office. In doing that the tribunal does act as a court (though it is not one) and the procedure followed in other courts is analogous and may well be followed.
In ex parte cases the situation is entirely different and the Patent Office tribunal, the Board of Appeals or the Trademark Trial and Appeal Board acting in an ex parte case, is but an arm of the administrative agency which is itself a party litigant when the case reaches this court. The applicant-appellant in our court in an ex parte case is here demanding his rights under the law, not against some private party, but from the administrative agency. That agency appears in our court, through its Solicitor, in the posture of an opposing .party litigant but, realistically, still as the agency refusing the demands of the appellant. The Patent Office posture is that of a defendant, not that of a court. The only reason for hearing the case at all is to decide whether the agency is legally justified in its refusal. If, for any reason whatever, the agency wishes to alter its refusal in any degree and to concede to the appellant any of his demands, I know of no reason, either in the authority or the “reason” found supposedly controlling in Allen, why the agency cannot go far beyond the correction of inadvertently erroneous refusals and concede any part or all of the rights demanded by the appellant while the case is in our court. There is no reason why we should hear and determine appellants’ claims to patent or trademark registration rights which the Patent Office is willing to concede to him. Our function under the law is merely to review refusals adhered to.
In civil litigation, when a plaintiff makes demands of a defendant, the first court to hear them does not insist on hearing and deciding cases in which the defendants are willing to confess judgment. Why should we? In ex parte cases we are the first court to hear the claim.
As a result of the Allen case, the anomalous situation now exists that the Patent Office takes a rigid position that it loses jurisdiction to do anything in an ex parte case as soon as the notice of appeal to our court is filed; but if review of its refusal in the same case be sought under 35 U.S.C. § 145 or 15 U.S.C. § 1071(b) (Sec. 21(b) of the Lanham Act as amended) by civil action against the Commissioner of Patents in the District Court, the Patent Office deems itself able to behave like any other party defendant to a suit and as capable of conceding the plaintiff's claims at any time. Appeals to this court therefore prevent, under the wholly unnecessary and ill-founded technicality of the Allen rule, the desirable settlement of litigation. The error and evil of the rule should be transparently obvious.