(concurring).
I concur with the result separately for the sole purpose of respeetifully disassociating my views from those of the majority to the extent that there is reliance on In re Chandler, 319 F.2d 211, 225, 50 CCPA 1422 [3] (1963). That decision, giving sanction sub silento to a patent examining procedure, Manual of Patent Examining Procedure, § 706.03(1), which is inharmonious with 35 U.S.C.A. § 112, ought not to be followed, but reversed.
So important is the benefit of the genius, meditation and skill of creators and innovators to our national sovereign and its people, Kendall v. Winsor, 21 U.S. (How.) 322, 16 L.Ed. 165, 167-168 (1859), that our Constitution grants to the Congress the power “ * * * to promote the Progress of Science and useful Arts, by securing for limited Times, to Authors and Inventors, the exclusive Right to their respective Writings and Discoveries.” Constitution, Art. I, § 8, cl. 8. In implementation of such power, the Congress has enacted statutory provisions prescribing the extent and limitations upon the right of the individual *1358inventor to exclude others from the use of his invention. The inventor has no means of acquiring this right, except as permitted by these statutes. Gayler et al. v. Wilder, 10 U.S. (How.) 477, 494, 13 L.Ed. 504, 511 (1850).
35 U.S.C. § 112 requires that the specification for an invention conclude with “ * * * one or more claims, particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” The Commissioner of Patents is authorized to promulgate regulations for the governance of proceedings in his office. 35 U.S.C. § 6, United States ex rel. Steinmetz v. Allen, 192 U.S. 543, 24 S.Ct. 416, 48 L.Ed. 555 (1904). In the exercise of this authority, such Commissioner promulgated a rule allowing an inventor to present multiple claims, as contemplated by the aforementioned statute, but added the provisos that such claims must “ * * * differ substantially from each other and are not unduly multiplied.” Rule 75(b), Patent Office Rules of Practice. This regulation served to erode administratively the statutory method of an inventor’s acquiring a limited right of monopoly on his discovery in the public interest. No longer could he apply to acquire that right in the manner permitted by the Congress; thereafter, he was permitted to make multiple claims only if they differed one from another and were not “unduly” multiplied.
The Commissioner of Patents further eroded an inventor’s statutory right by adopting an interpretative procedure to guide patent examiners in the consideration of applications of an inventor, which undertook to arrogate unto the examiners carte blanche authority to reject all claims of an inventor, particularly pointing out and distinctly claiming the subject matter which he regarded as his invention, if the examiner was of the opinion that a larger number of claims were made than were necessary to cover the invention, viz.:
An unreasonable number of claims; that is unreasonable in view of the nature and scope of applicant’s invention and the state of the art, affords a basis for rejection on the ground of multiplicity. A rejection on this ground shall include all the claims [emphasis added] in the case inasmuch as it relates to confusion of the issue. Manual of Patent Examining Procedure, § 706.03(1).
This court properly struck down the efficacy of that procedure nearly 30 years ago, when it stated:
We think it proper to observe * * * that the mere fact that a larger number of claims are made than are necessary to cover the invention is not sufficient to warrant rejection upon the ground of undue multiplicity of claims. * * * In re Savage, 110 F.2d 680, 27 CCPA 1048 (1940).
Some 17 years afterward, that rationale was accentuated for the court by Judge Rich with the more generalized observation that:
The patent statutes give to inventors the right to a patent upon compliance with their provisions, and neither the rules promulgated by the Patent Office nor the interpretation placed upon them can detract from those rights. 35 U.S.C. § 6.
Under 35 U.S.C. § 102 an applicant is “entitled to a patent unless” it is shown that one or another of the prohibitory provisions therein, or elsewhere in the statute, applies.
In re Stempel, 241 F.2d 755, 760, 44 CC PA 820, 826 (1957).
In the interim, the Patent Office Board of Appeals declined to affirm the rejection of a patent application on the ground of undue multiplicity, because there was “ * * * no showing that the number of claims leads to confusion.” Ex parte Barnhill, 68 USPQ 81 (1945). The board cited In re Savage, supra, in which we had also stated that rejection of a patent application on the ground of undue multiplicity was appropriate, only where the multiplied claims are of a character “ * * * the net result of which is to *1359confuse, rather than to clarify, the issues relative to an alleged imrovement, which, it is claimed, involves invention.”
Even after we departed the rule of In re Savage, swpra, and implied judicial approval of the aforementioned interpretative procedure, supra, in In re Chandler, supra, the administrative board continued, albeit reluctantly, to follow In re Savage, supra, viz.:
We do not wish to encourage the practice of presenting an unduly large number of claims in a patent application as it imposes a great burden on the examiner to examine the same. Where, as here, the claimed subject matter has been determined to 'be patentable and there does not appear to be any uncertainty or confusion in the mind of the examiner as to what the claims cover, we are of the opinion that in the interest of expediency the application should have been allowed. 75* ÍÍ' *
We have no uncertainty regarding a clear understanding of the claimed subject matter and in view of all the circumstances find the rejection to be unsustainable. [Emphasis added.] Ex parte King and Adolphson, 144 USPQ 600 (1964).
The Supreme Court has made it clear that:
The power of an administrative officer or board to administer a federal statute and to prescribe rules and regulations to that end is not the power to make laws * * * but the power to adopt regulations to carry into effect the will of Congess as expressed by the statute. A regulation which does not do this, but operates to create a rule out of harmony with the statute, is a mere nullity.
Manhattan General Equipment Co. v. Commissioner of Internal Revenue, 297 U.S. 129, 134, 56 S.Ct. 397, 400, 80 L.Ed. 528, 531 (headnote 2), (1936), cited and quoted from in Dixon v. United States, 381 U.S. 68, 74, 85 S.Ct. 1301, 14 L.Ed.2d 223, 228 [5] (and see cases collected at fn. 7) (1965). In dealing with the effort of another administrative agency to make, by rule and regulation, 18 U.S.C. § 1304 a crime, a unanimous Supreme Court observed that, while the agency could aid in implementing by either general rule or by individual decisions the applicable statute under which it administered a statute, “ * * * the Commissioner’s power in this respect is limited by the scope of the statute. Unless the ‘giveaway’ programs involved here are illegal under § 1304, the Commission cannot employ the statute to make them so by agency action.” F.C.C. v. American Broadcasting Co., 347 U.S. 284, 290, 74 S.Ct. 593, 597, 98 L.Ed. 699, 705-706 (headnote 2), (1954).
In like manner, the Commissioner of Patents can aid in implementing 35 USC 112 by either general rule or by individual decisions; but his power in this respect is limited by the scope of that statute. Even if the Patent Office may reject claims in a patent application which result in confusion, rather than in greater clarification, of the claims to an invention, In re Savage, supra, the scope of 35 U.S.C. § 112 does not authorize the wholesale rejection by agency action of all an inventor’s claims, merely because a patent examiner deems overly burdensome the examining of a larger number of claims than he considers reasonable, in view of the nature and scope of the applicant’s invention and the state of the art.
To permit such is to encourage government by men, rather than by law. An inventor is not permitted by law to monopolize his discovery in whatever manner he may prefer. He must make application to acquire his right of monopoly in accordance with law. His application must necessarily be considered by a patent examiner. The patent examiner, too, is not permitted by law to approve or reject a patent application in whatever manner he may prefer, but by law and valid regulation. If a patent examiner departs the law and such regulations, the only relief then available to the applicant is by appeal to the courts. 35 USC chap*1360ter 13, Butterworth v. United States, 112 U.S. 50, 5 S.Ct. 25, 28 L.Ed. 656, 660-662 (1884), construing and applying earlier provisions of these statutes; In re Hien, 166 U.S. 432, 17 S.Ct. 624, 41 L.Ed. 1066, 1069 (1897); Cochrane v. Deener, 94 U.S. 780, 24 L.Ed. 139, 140 (1877). All questions involved in the application for a patent may be reviewed by the courts. Gardner v. Herz, 118 U.S. 180, 6 S.Ct. 1027, 30 L.Ed. 158 (1886); Reckendorfer v. Faber, 92 U.S. 347, 23 L. Ed. 719 (1897). Where any divergence of views between the courts and the Patent Office proceeds from a different interpretation of the applicable statutes, the views of the Patent Office must be subordinated to those of the courts. Steinmetz, supra, 192 U.S. 543, 24 S.Ct. 416, 48 L.Ed. at 562.
If this and similar courts fail to respond to pleas of inventors that patent examinations be accomplished harmoniously with the will of the Congress as expressed in statutes, there is in the offing a time when applications for patents will be approved or rejected on the basis of administrative regulation and procedural instruction. This is an unhappy prospect in a nation where men undertake to govern themselves by law. And it is for these reasons that I have urged that the misconception of In re Chandler, supra, not be compounded here, but that the rule of In re Savage, supra, be reaffirmed.