APPLICATION OF CITRON

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of all claims remaining in appellant's application serial No. 163,787 filed May 23, 1950, for "Method of Implanting Cancer Tissue."

This same application with the same claims (plus others now abandoned) was before us in appeal No. 6276 which we decided January 22, 1958, 251 F.2d 619, 45 CCPA 773, and we refer to the opinion therein to explain the subject matter of the invention.

Subsequent to our former decision, the following events occurred. March 26, 1958, the Patent Office issued a notice of allowance which the Issue and Gazette Branch shortly withdrew on April 9, stating that the examiner would explain the reasons. April 22 the examiner sent appellant a letter in the nature of an office action stating that the application had been reconsidered, citing four new references, and rejecting all claims on the ground of unpatentability over the new references for various reasons. October 3 appellant cancelled some claims and amended others and on April 1, 1959, received a final rejection. October 1, 1959, appeal was taken to the Board of Appeals. November 27 appellant cancelled four claims. On March 28, 1962, the board affirmed the examiner's rejection of all pending claims as unpatentable over the references. This appeal followed.

The Propriety of Reopening the Case

Appellant's first challenge is to the effect that the Patent Office has subjected him to "double jeopardy" and urges us to refuse to permit the Patent Office to reopen this case. He complains that the board completely ignored the same plea. It was so clearly within not only the right but the duty of the Patent Office to do what it did that we would follow the board's treatment of the question but for the fact that appellant devotes nearly half of his brief to it, so as to call at least for summary consideration.

The principles and the law involved were fully treated by the Court of Appeals, District of Columbia, in The Jeffrey Mfg. Co. v. Kingsland, Comr.Pat., 86 U.S.App.D.C. 13, 179 F.2d 35.1 Appellant discusses this case at length, suggesting that it is "bad law." We do not agree that that opinion states "bad law." We do, however, find three of appellant's assumptions to be seriously in error. The first is that in our former decision in this case we held that the application at bar contained "patentable subject matter" and the other two are that we held the application to be "allowable," thus "directing the United States Patent Office to issue a patent." In deciding appeals from the board in patent cases we do none of these things. All we do is pass on the propriety of rejections brought before us for review. These cases are not of the type in which the concept of "double jeopardy" has any applicability.

While appellant may have just cause for complaint that the Patent Office should have operated more effectively in finding the closest prior art, which appears to have been available to it all during the prosecution, and in citing it early in the prosecution, this is of no moment whatever in deciding appellant's legal right to the appealed claims in the face of the new prior art now that it has been cited.

Patentability Over the Prior Art

The Patent Office no longer relies for any purpose on any of the references which we considered in our former opinion and held collectively not to be a proper basis for rejection. The newly cited references are:

A review of appellant's specification brings to the fore the fact that he regarded as his invention broadly the improvement on the known method of simply introducing live cancer tissue into a laboratory animal which resided in "injecting into the peritoneal cavity of each animal [a] suspension of mechanically irritant particles and therewith or thereafter subjecting the animal to an intraperitoneal injection of cancer tissue." The supposed advantages were to increase the number of successful transplants or "takes" and a more rapid rate of growth of the cancer tissue. He described his preferred method of carrying out this invention by a single example after which he pointed out in his specification:

On the basis of the new references, the Patent Office position is recapitulated by the solicitor's brief as follows:

Later on, the solicitor's brief states:

We have read the new references and have considered appellant's arguments relating thereto. We feel that the board was correct in its conclusions as expressed in the following excerpt from its well-reasoned opinion:

Appellant's brief concludes by arguing that the board addressed itself only to the board concepts of the invention and that certain of the claims contain specific limitations not met by the references, such as specific amounts of materials, specific irritant particle size, and a specific strain of live cancer tissue. While it is quite true that such limitations are to be found in some of the claims, it seems to us a sufficient answer to refer to the statements in appellant's specification, above quoted, which make it clear that these details are no more than details, culled from the specific example in the specification and lacking in patentable significance because well within the skill of the art. None is critical according to appellant's own disclosure of the invention.

The decision of the board is affirmed.

Affirmed.

SMITH, Judge (concurring).

In concurring with the result reached in this case, I do so solely because the appealed claims are not allowable over the art now cited. I do not join the majority opinion because of my reservations about the significance which we should accord to The Jeffrey Mfg. Co. v. Kingsland, Comr.Pat., 86 App.D.C. 13, 179 F.2d 35 (1949), which the majority cites as fully treating the principles and law involved in "The Propriety of Re-opening the Case."

Partial support for the position of the court in the Jeffrey case was found in Postum Cereal Co. v. Calif. Fig. Nut Co., 272 U.S. 693, 47 S.Ct. 284, 71 L.Ed. 478 (1927). To whatever extent the policy aspects of the Jeffrey case depend on the Postum case, they should now be reconsidered in view of Glidden Company v. Zdanok, 370 U.S. 530, at page 577, 82 S.Ct. 1459 at pages 1486, 1487, 8 L.Ed.2d 671 (1962), which points out:

By reason of the statutory changes enacted since the Postum decision, which are referred to in the Zdanok decision, the adjudications of this court now have a finality which was not possessed by the decisions of our predecessor court at the time of the Postum case. Now, an appeal here is an alternate remedy and an applicant is bound by our decision.

It seems to me that the Jeffrey case in giving the Patent Office the right to reopen and in effect relitigate issues which were or could have been determined in a prior appeal, must have been predicated upon the earlier cumulative nature of the appellate proceeding in this court. Thus, in the Jeffrey case, a decision of the United States Court of Customs and Patent Appeals was characterized as

I agree fully with the majority that the concept of "double jeopardy" raised by appellant is not applicable here. I likewise agree with the majority that appellant does indeed have "just cause for complaint that the Patent Office should have operated more effectively in finding the closest prior art * * * and in citing it early in the prosecution * * *."1

The Patent Office is an administrative agency charged by Congress with the task of carrying out the public policy expressed in Article 1, Section 8, of the Constitution. Decisions of the Patent Office in the discharge of its duties are subject to judicial review. Thus, it seems to me, the same judicial doctrines which are applied to private litigants in furtherance of the public policy of bringing an end to legal proceedings after a final determination of issues which were or could have been raised therein should likewise apply to Patent Office proceedings. In Internation Union of Mine, Mill and Smelter Workers, Locals No. 15 v. Eagle Picher Co., 325 U.S. 335, 340-341, 65 S.Ct. 1166, 89 L.Ed. 1649 (1945), Mr. Justice Roberts expressed this concept as follows:

My concurrence in the result reached by the majority is essentially based, however, on the pertinent observation and admonition of Mr. Justice Frankfurter, prior to the Eagle Picher decision, in Federal Communications Commission v. Pottsville Broadcasting Co., 309 U.S. 134, 146, 60 S.Ct. 437, 84 L.Ed. 656 (1940):

I have emphasized the words "general guardianship" in the above-quoted passage, because I feel they answer appellant's contention in the instant case. His argument would in effect require us to be charged with general guardianship against all potential mischief to an applicant which reopening of prosecution by the Patent Office might produce. In here rejecting appellant's contention, I do not think we should preclude ourselves from adopting the view of the Eagle Picher case, should we be confronted with instances where the Patent Office, under the aegis of such decisions as the Jeffrey case, seeks to exercise its discretion a second time (or such number of times as it may choose) and thus in effect to refuse to be governed by the decision of this court.

Possibly it was reliance upon the rationale of such decisions as the Jeffrey case and the authorities therein cited which encouraged the Patent Office in this case to be less careful in developing the issues on the prior appeal than a private litigant must be. The degree of care required of an applicant is high, in view of the conclusive determination of issues against him resulting from the now alternative character of appeals to this court.

I suggest, therefore, that this court should remain alert to the very real threat to fundamental legal principles which resides in the rationale of the Jeffrey case. We should approach the problem as the Supreme Court did in the Eagle Picher case, to the end that judicial certainty with respect to the proper termination of controversies should be recognized as paramount, in the interest of the public. There must be an end to disputes between administrative bodies and those whose legal rights are determined by such bodies. I do not find a recognition of this principle in the Jeffrey case.