Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
IN RE TOMOKI OKU
Application No. 07/453,762
October 27, 1992
*1 Filed: December 20, 1989
For: A SEMICONDUCTOR DEVICE
Attorney for Petitioner
Jeffrey A. Wyand, Esq.
Leydig, Voit & Mayer
Douglas B. Comer
Acting Commissioner of Patents and Trademarks
MEMORANDUM OPINION AND ORDER
Petitioner requests that
the Commissioner exercise his supervisory authority, pursuant to 37 CFR § 1.181(a)(3), to direct the Board of Patent
Appeals and Interferences (Board) to designate its decision entered February
18, 1992, as a new ground of rejection under 37 CFR § 1.196(b) so that petitioner may further prosecute the application
before the examiner pursuant to 37 CFR §
1.196(b)(1).
Petitioner's request is
granted only to the extent that prosecution of the application is reopened
before the examiner under 37 CFR §
1.198.
Background
On February 18, 1992, the
Board entered a decision (Paper No. 26) affirming an examiner's rejection of
claims 3 and 5 in petitioner's application as unpatentable under 35 U.S.C.
§ 103. According to the Board's summary
of the examiner's rejection: "the examiner relies on either Imamura or
Kitahata in combination with any one of Codella, Terada, Kayama, Sato and
Ueno" (Board decision at 3). The Board affirmed the obviousness conclusion
stating: "there are sufficient reasons
or motives in the appellant's description of the prior art in the
specification, particularly with reference to Figure 4, for the artisan to have
structured an asymmetric Schottky barrier gate field effect transistor like the
appellant did" (Board decision at 6). The examiner did not expressly rely
on the description of the prior art in the specification.
On March 18, 1992,
petitioner filed a REQUEST FOR RECONSIDERATION AND MODIFICATION OF DECISION
(Paper no. 27) requesting the Board to reconsider and modify its decision by
stating that the decision is based on a new ground of rejection under 37 CFR § 1.196(b) so that petitioner might exercise
his options for further prosecution under §
1.196(b)(1) or (b)(2).
On March 31, 1992, the
Board entered a decision on request for reconsideration (Paper No. 28) denying
the request to modify its decision. The Board stated that it had affirmed the
ground of rejection before it, 35 U.S.C. §
103, and that the reliance on different evidence did not constitute a
new ground of rejection.
On April 4, 1992,
petitioner filed a PETITION TO EXERCISE SUPERVISORY AUTHORITY OVER THE BOARD OF
PATENT APPEALS AND INTERFERENCES (Paper No. 29), requesting the Commissioner to
exercise his supervisory authority, pursuant to 37 CFR § 1.181(a)(3), to direct the Board to
designate its decision as a new rejection under 37 CFR § 1.196(b) so that petitioner could further
prosecute the application before the examiner pursuant to 37 CFR § 1.196(b)(1).
*2 On April 28, 1992, the Chairman of the Board entered a
decision dismissing the petition (Paper No. 30), stating that "[s]ince the
matter is reviewable by a court, it is not properly subject to review via a
petition under 37 CFR 1.181."
On May 5, 1992,
petitioner filed a REQUEST FOR RECONSIDERATION OF DECISION ON PETITION PURSUANT
TO 37 C.F.R. § 1.181 (Paper No. 31)
requesting reconsideration of the Chairman's decision on the grounds that
"the Petition was decided by the wrong and a potentially interested person
and because the Chairman's Decision is legally erroneous." Petitioner
argues that a new ground of rejection is a petitionable matter under In re
Weiss, 160 USPQ 423 (Comm'r Pat.1967). Petitioner states that "In re Weiss
applies here because Petitioner does not intend to appeal the merits of the
Board's rejection to the court."
On April 12, 1992, the
Commissioner sua sponte entered an order extending the time to file a notice of
appeal until twenty (20) days after action by the Commissioner on the request
(Paper No. 32).
Decision
The Commissioner's
supervisory authority under 35 U.S.C. §
6(a) is exercised sparingly. As a general rule, as stated in Goss v.
Scott, 1901 Dec.Comm'r Pat. 80, 84 (Comm'r
Pat.1901):
This discretionary
power of the Commissioner should be exercised, however, only in exceptional
cases, and then only to correct some palpable error which is clear and evident
on its face.
However, proper petitions to exercise the Commissioner's
supervisory authority have the salutary effect of establishing uniform
operating procedures within the Patent and Trademark Office (PTO) and of
conserving judicial resources until cases have been handled in accordance with
the rules. Cf. Oriskasa v. Oonishi, 10 U.S.P.Q.2d 1996, 1997 (Comm'r Pat.1989).
Review of adverse
decisions of examiners is committed to the Board by statute. 35 U.S.C. § 7(b) and §
134. An applicant dissatisfied with a decision of the Board may seek
judicial review. 35 U.S.C. § § 141-145.
The Commissioner does not review the merits of final decisions of the Board.
Cf. In re Dickerson, 299 F.2d 954, 958, 133 USPQ 39, 43 (CCPA1962) ("[I]n
performing his duties, the Commissioner cannot usurp the functions or impinge
upon the jurisdiction of the Board ... established by 35 U.S.C. 135.");
Bayley's Restaurant v. Bailey's of Boston, Inc., 170 USPQ 43, 44 (Comm'r
Pat.1971) ("The Commissioner will not intervene with respect to a question
which by law is committed to the Trademark Trial and Appeal Board.").
*3 Whether or not
the Board made a new ground of rejection can be an issue reviewable on appeal.
In re Waymouth, 486 F.2d 1058, 1060-61, 179 USPQ 627, 629 (CCPA1973), supp. op., 489 F.2d 1297, 180
USPQ 453 (1974). Petitioner correctly notes, however, that the existence of a
new ground of rejection is an ancillary question on judicial review. The
designation of a new ground of rejection, while involving a consideration of
the merits, also involves the important question of whether the Board followed
PTO regulations established by the Commissioner. In appropriate circumstances
the Commissioner may exercise his supervisory authority on petition to reopen
prosecution. As stated in In re Weiss, 160 USPQ at 424:
A decision of the Board
on such a matter [of new ground of rejection] will not be disturbed on petition
unless it involves manifest error or abuse of discretion....
A decision to reopen prosecution notwithstanding an adverse
decision by the Board is a question solely within the discretion of the
Commissioner and is in no way a review of a merits decision by the Board.
The Board's reliance for
the first time on appeal in this case on petitioner's description of the prior
art constitutes a new basis for refusing a patent and petitioner has not had an
adequate opportunity to respond to the precise basis upon which the rejection
is based.
Under the circumstances
of this case, it is an appropriate exercise of his supervisory authority to
order reopening of prosecution under 37 CFR §
1.198.
ORDER
Upon consideration of
petitions of April 3, 1992, and May 5, 1992, it is
ORDERED that the
petitions are granted to the extent that prosecution of the application is
reopened under 37 CFR § 1.198; and it
is
FURTHER ORDERED that
petitioner is given two (2) months from the date of this order to file any
amendment and/or response. The time period for response may not be extended
under 37 CFR § 1.136(a). Failure to
file an amendment or response will result in the application being deemed
abandoned; and it is
FURTHER ORDERED that the
petitions are otherwise denied.
25 U.S.P.Q.2d 1155
END OF DOCUMENT