concurring in part.
I concur in affirming the judgment of the district court. The court reached the correct result on “the facts in the case”, as required by 35 U.S.C. § 145, in holding on the evidence as a whole that Mr. Fregeau had not met a reasonable burden of demonstrating operativeness and therefore utility of his claimed invention in terms of 35 U.S.C. § 101.
I do not join the majority’s views in the section of its opinion headed “35 U.S.C. § 145 Proceedings ”. These views are dicta in that they apply to no issue raised by the parties or affecting our decision. Nevertheless, the majority takes unnecessary steps toward reducing the differences between § 145 and § 141 actions, thus contravening a hundred years of congressional intent.
Now that the Federal Circuit receives the appeals in both § 145 and § 141 actions, it is incumbent upon us to preserve the intent of Congress in the dual path of review of Patent and Trademark Office rulings. We are responsible for assuring that the legislative purpose is not lost or diminished.
A careful study of this legislative history shows that Congress intended, from the beginning of the patent examination system, to provide substantive judicial review of PTO decisions. The bill in equity that is the ancestor of 35 U.S.C. § 145 arose following the Patent Act of 1836, the act that created a Patent Office and established examination rather than registration of patents. Section 10 of the Patent Act of 1839 amended section 16 of the 1836 Act, which related to Patent Office decisions on priority, to extend the remedy of a bill in equity “to all cases where patents are refused for any reason whatever”.1 A suit in equity could be filed from an adverse decision of either the Commissioner, or the Chief Justice of the District Court of the District of Columbia who in turn heard appeals from decisions of the Commissioner.
Over the years there were periodic modifications of these review procedures2, but the fundamental principle was reaffirmed that “a party who is refused a patent by the Commissioner will have at the outset a judicial decision as to his right to it or that he has no right to it”.3 As the Supreme Court said in Butterworth v. United States ex rel. Hoe, 112 U.S. 50, 61-62, 5 S.Ct. 25, 31,-28 L.Ed. 656 (1884):
It is thereby provided that the applicant may have remedy by bill in equity. This means a proceeding in a court of the United States having original equity jurisdiction under the patent laws, according to the ordinary course of equity practice and procedure. It is not a technical appeal from the Patent Office ... confined to the case as made in the record of that office, but is prepared and heard upon all competent evidence adduced and upon the whole merits.
In testimony leading to the Patent Act of 1927, then Commissioner of Patents Robertson referred to a Revised Statutes § 4915 suit, the direct predecessor of 35 U.S.C. § 145, as one where an applicant would proceed “de novo ” in district court, with the right to build a new record with testimony or evidence in addition to that developed before the Patent Office.4
*1041The Chairman of the House Committee on Patents, Congressman Albert H. Vestal, stated “if a party feels aggrieved, he can bring his suit in the equity court, but it is not an appeal. It is the bringing of a new suit.” 5 Elaboration is seen in the testimony of Charles H. Howson, Chairman of the ABA Committee on Patent Law Revision, who referred to the R.S. § 4915 suit as an “independent suit in equity” or an “independent appeal” where one is heard on a “new record”.6 He stated:
The advantage of section 4915 is that it enables the party in interest, desiring to obtain a patent, to take evidence in a court or tribunal whose business it is to try issues of facts and make up a record in addition to that he has been enabled to furnish the examiners in the Patent Office, and therefore get before a court of competent jurisdiction everything connected with his rights and every fact connected with his patent; in other words, have before him everything that courts in the country have before them in infringement cases.7
Congressman Underwood explained that if an applicant did not wish to appeal to the Court of Appeals for the District of Columbia (the then-existing route for appeals on the Patent Office record, succeeded in 1929 by appeals to the Court of Customs and Patent Appeals), “[t]hen in that case the object is to have a de novo proceeding by a bill in equity under section 4915 for the benefit of the adverse party.” 8
P.J. Federico observed in his definitive article “Evolution of Patent Office Appeals”:
The bill in equity is not a technical appeal from a decision of the Patent Office, but is “a suit according to the ordinary course of equity practice and procedure.”
22 J.Pat.Off.Soc’y 838, 937 (1940).
This law remains unchanged in its codification in § 145 of the 1952 Patent Act. The commentary of Charles J. Zinn, counsel to the House Subcommittee on Patents at the time, stated at 1952 U.S.Code Cong. & Ad.News 2507, 2517:
This chapter dealing with the review of Patent Office decisions by the Court of Customs and Patent Appeals and by civil actions in the federal courts consists of six sections (141-146) which restate the existing law with few' changes in substance. The authorization for appeal to the Court of Customs and Patent Appeals set out in section 141 is a restatement of the former law with only changes in phraseology.
* * * * * sj=
In section 145 relating to civil actions to obtain a patent, the law is brought up to date by specifically changing the references to bills in equity which are obsolete. The time for filing the action is made to conform to the time for taking an appeal to the Court of Customs and Patent Appeals____
This history controverts the majority’s attempted redefinition of this role. The majority cites Morgan v. Daniels, 153 U.S. 120, 14 S.Ct. 772, 38 L.Ed. 657 (1894), as authority for the position that “the facts found by the board ‘must be accepted as controlling’ unless the court has a ‘thorough conviction’ that the contrary is established”. But Morgan v. Daniels was limited by that court to contested interferences, “where the question decided in the Patent Office is one between contesting parties as to priority of invention”. Id. at 125, 14 S.Ct. at 773. It never related to § 145-type actions.
Interference appeals (under 35 U.S.C. § 146 and predecessor statutes) expressly provide for admission of the PTO record “to have the same effect as if originally taken and produced in the suit”. There is *1042no such provision in § 145, which to the contrary requires the district court to “adjudge ... as the facts in the case may appear”. The majority’s pronouncement that “the record before the office is the evidentiary nucleus” in § 145 actions thus goes beyond the statute and precedent.
By the Federal Courts Improvement Act of 1982 there was transferred to this court the appellate review of § 145 actions, in addition to the direct appeal under § 141. We must be vigilant to preserve to patent applicants the alternative procedures that the law provides, and to preserve the historical distinction between them. In this we are bound and informed by continuously reaffirmed congressional intent. The majority has eliminated a substantive difference between these paths, by its requirement that the trial court “follow the clearly erroneous standard utilized by appellate courts”, and leaves unclear how this standard is affected if additional evidence is introduced.
In addition to authorizing the introduction of new evidence, the § 145 action differs from a Board proceeding in that witnesses may be called to testify before the trial judge. Although the Board may consider affidavit evidence, the Board has no opportunity to observe the demeanor or character of witnesses, or to make the type of credibility or weight determinations that are possible with live testimony, subject to cross-examination and judicial inquiry.
Whether the testimony adduced in district court is cumulative to or augments that before the Board, the trial court should be free to decide the matter on the evidence before it. The “clearly erroneous” standard advocated by the majority at the trial level is inimical to the independent fact-finding role of a trial court. Such a standard requires the trial court not only to hear and weigh the evidence before it, but also to decide how wrong the Board was: a curious assignment, and contrary to the plain intent of Congress to preserve in § 145 actions a different form of review from the appellate review of § 141.
The majority correctly states that a § 145 proceeding “is not simply an appeal”. Section 145 never was an appeal in the legal sense: it is carefully recited to be a “remedy by civil action ... as the facts in the case may appear”. 35 U.S.C. § 145. The majority’s analogy that the district court should review the Board of Appeals’ findings as if the Board were a special master appointed by the court, points up the contrast between the majority viewpoint and the basic purpose of the proceeding. No authorizing legislation, from the first enactment to date, has attached a presumption of correctness to decisions of the Patent Office in proceedings under § 145 and its predecessor statutes. Such intent is contrary to the congressional purpose.
. An Act in addition to "An act to promote the progress of the useful arts”, ch. 88, § 10, 5 Stat. 353, 354 (1839), reads:
And be it further enacted, That the provisions of the sixteenth section of the before recited act shall extend to all cases where patents are refused for any reason whatever, either by the Commissioner of Patents or by the chief justice of the District of Columbia, upon appeals from the decision of said Commissioner, as well as where the same shall have been refused on account of, or by reason of, interference with a previously existing patent ____
. Section 10 of the 1839 Act was replaced by section 52 of the Patent Act of 1870, ch. 230, 16 Stat. 198, 205. With only minor changes, section 52 of the 1870 Act was codified as Revised Statutes § 4915 in 1874.
. Cong.Globe, 41st Cong., 2d Sess. 2679, 2682 (1870).
. To Amend Section 52 of Judicial Code [Title 35] and Other Statutes Affecting Procedure in Patent Office: Hearings on H.R. 6252 and H.R. 7087 Before the House Committee on Patents, 69th Cong., 1st Sess. 78-82 (1926).
. Id. at 36.
. Id. at 20.
. Id. at 21.
. Procedure in the Patent Office: Hearings on H.R. 7563 and H.R. 13487 Before the House Committee on Patents, 69th Cong., 2d Sess. 14 (1926); see also id. at 15 (statement by House Chairman that a R.S. § 4915 applicant "can be heard where it is de novo.").