This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claim 17
The invention relates to a feed turret and speed reduction gear train. Appellant's feed turret arrangement includes a driving gear, a plurality of compound gears each having a large and small gear in axially spaced relationship and idler gears disposed on individual shafts between a pair of end plates, which serve as a turret frame. The compound gears are mounted for rotation on shafts spaced along the circumference of a circle which has the axis of the driving gear as its center. The idler gears are arranged to couple the driving gear to a compound gears and to intercouple the compound gears so that each large gear on the compound gears is driven in the same direction. The plates are disposed in a main frame for rotary adjustment about an axis coinciding with the axis of the driving gear so that the plate assembly may be adjusted within the main frame to bring the large gear of any selected compound gear into driving engagement with a driven or output gear mounted in a fixed location on the frame.
The claim, which recites the output gear and its shaft as a "second gear" and a "second shaft", respectively, is reproduced below with the recitations principally in controversy emphasized:
THE PRIOR ART REJECTION
The examiner rejected claim 17, along with claim 2, as "fully met by the patent to Haxton under 35 U.S.C. § 102."
The pertinent disclosure of Haxton can perhaps be best understood from Fig. 7 of that reference which shows a non-planar cross-sectional plan view of the gears in a circular gear turret:
This apparatus includes a turret made up of circular end plates 12 and 13 with gearing disposed therebetween. The turret is rotatable about the axis of input shaft 16 to selectively bring any one of circumferentially displaced gears 26, 32, 40, 45 and 50, each driven at a different speed, into engagement with a driven gear 27 on shaft 28. A gear 21 on input shaft 16 operates through an idler gear 23 to drive gear 24 on shaft 25, which shaft also carries the first output gear 26 and a small gear 29. The latter gear drives an idler gear 30 on shaft 31 to drive gear 33 and shaft 35 and output gear 32 on the shaft, the latter gear rotating at a speed lower than that of gear 26. Other idler arrangements operate between each pair of the remaining output gears 40, 45 and 50 to drive them at progressively reduced speeds.
The Board of Appeals stated the rejection as it was made by the examiner, but in affirming as to claim 17 said the following:
The solicitor would have us find from this statement and one other
Appellant contended below, as he does here, that Haxton does not respond to the recitation of the compound gears as set out in italics in the claim reproduced above. In response to this argument, the board stated:
We find no error in the board's position. The recitation of each compound gear as having "two sets of teeth respectively on a large pitch circle and a small pitch circle" does not distinguish over the reference disclosure. A compound gear that has three sets of teeth, at least one of which is on a large pitch circle, fully meets the requirements of this limitation. Specifically, the gears 24, 26 and 29 on shaft 25 of Haxton constitute one such "compound gear" and the gears 32, 33 and 35 on shaft 34 constitute another.
Before us, appellant also argues that none of gears 26, 32, 40, 45 and 50, which are engageable with the driven gear 27, "has a set of teeth which is on a large pitch circle of a `* * * compound gear having two sets of teeth respectively on a large pitch circle and a small pitch circle'". We do not agree. The gears 26 and 32 are each part of a "compound gear" as required by the claim for the reasons set forth above, and each of these gears 26 and 32 has its teeth "on a large pitch circle." The gear 26, although shown in the drawings as not being as large as the gear 24 on the same shaft with it, is nevertheless on a pitch circle which is "large" with respect to the much smaller gear 29 on the same shaft.
The decision of the board sustaining the rejection of claim 17 on Haxton is therefore affirmed.
THE RESTRICTION REQUIREMENT
Appellant has devoted the major portion of his brief to a discussion of the propriety of the board's denial of jurisdiction to review an examiner's requirement for restriction. The issue presented, as far as we are aware, is one of first impression under the 1952 Patent Act. There has been no challenge to our jurisdiction to review whether the board properly determined the scope of its jurisdiction in the present circumstance. The following background information will facilitate resolution of that issue.
The record shows that the examiner, in his initial office action and acting pursuant to 35 U.S.C. § 121 and power delegated him by Patent Office Rule 142,
Appellant's request for reconsideration elicited the following expanded response by the board:
Here appellant argues that the examiner's requirement for restriction is not authorized by law inasmuch as the examiner did not expressly find that the inventions represented by the claims of Groups III and IV are independent and distinct as required by 35 U.S.C. § 121.
In sum, it is appellant's view that the board has had at all times herein both jurisdiction and duty to review the "adverse decision" of the Commissioner by his examiners, and that its refusal to do so was error and a denial of an absolute statutory right of appellant.
Appellant's somewhat forceful arguments no doubt would have been more effective had they been presented in the circumstances existing for nearly 50 years preceding the 1952 Patent Act. By 1952, the Patent Office administrative practice of compelling applicants for patent in certain circumstances to limit the claims of an applicaton to one of several disclosed inventions had proceeded under judicial aegis, rather than explicit statutory authorization, for more than a century. Prior to 1904, review of decisions of the examiners in that regard was regularly had by petition to the Commissioner of Patents without recourse to the Examiners-in-Chief. But, in 1904, the Supreme Court was called upon to determine the validity of Patent Office Rule 41 then in effect, which required that claims to machine and process performed by that machine "must be" presented in separate applications, no matter how related and dependent the machine and process might be. Steinmetz v. Allen, 192 U.S. 543, 24 S.Ct. 416, 48 L.Ed. 555 (1904). In invalidating that rule as permitting of no discretion, the Court held that actions of the examiners pursuant thereto which denied a right of joinder of such claims in one application were both final and "a rejection of the application", and entitled the applicant "to an appeal to the examiners-in-chief, under § 4909 of the Revised Statutes."
Early in its patent jurisdiction history, this court treated restriction requirements made by examiners as "technically a final rejection" or as having "amounted to a final rejection" of the involved claims, and decided that it had jurisdiction to review decisions of the board of appeals in turn reviewing the propriety of the examiner's requirement. In re Hawkins, 57 F.2d 367, 19 CCPA 1104 (1932); In re Ferenci, 83 F.2d 279, 23 CCPA 1023 (1936); see also In re Ferenci, 83 F.2d 286, 23 CCPA 1095 (1936); In re Allatt, 121 F.2d 545, 28 CCPA
With the passage of that Act, however, several additions and changes were made in both statute and Patent Office rules which have significance here. For the first time, Congress expressly made statutory the power of the Commissioner to require an application to be restricted to one of two or more independent and distinct inventions claimed in that application by providing new section 121. In terms of the Revision Note, § 121 "enacts as law existing practice with respect to division, at the same time introducing a number of changes. Division is made discretionary with the Commissioner." In § 121, Congress termed that discretionary action of the Commissioner a "requirement for restriction." At the same time, the following emphasized phrases made their first appearance in section 132 of the 1952 Act, which superseded RS 4903 of otherwise similar import:
As previously noted, section 134 of the 1952 Act, which provides that an applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner, replaced RS 4909 containing similar language.
Insofar as changes in Patent Office rules and procedure are concerned, we have already alluded to new Rule 144, effective January 1, 1953, which provides for review of examiner's restriction requirements by petition to the Commissioner. Simultaneously, the provision which previously had expressly given like authority to the board was deleted from amended Rule 191, the successor to old Rule 133. As stated on page 11, of the January 1, 1953 edition of the Rules of Practice and in all subsequent editions, "[t]he present edition contains the amendments effective January 1, 1953, which were made in view of the new patent laws [the 1952 Patent Act]". In light of all those additions and changes in statute and rules, various three-member panels of the board early determined, as did the board here, that it no longer had jurisdiction to review requirements for restriction of examiners. Ex parte Auer, 104 USPQ 149 (1954); Ex parte Reid, 105 USPQ 251 (dicta, 1954); Ex parte Wilson, 111 USPQ 142 (1955); and Ex parte Pearce, 128 USPQ 122 (1959).
On considering §§ 121, 132 and 134 and the intent unmistakably evinced by the clear language therein, it is evident to us that Congress, in marked contrast to the views expressed by the Supreme Court in Steinmetz v. Allen and later by this court in Hawkins and Ferenci, supra, decided not to regard the procedure involved in matters of "division" or "restriction" as a "rejection." Instead, section 121 denominates restriction
This, however, does not dispose of the case, since it is clear that, for the board to have some jurisdiction in a case, only one claim need be twice rejected, and that event occurred here. There thus remains appellant's argument that the examiner's action with respect to claims 1, 3 and 9 was an "adverse decision" within the meaning of 35 U.S.C. § 7 which the board is required to review. Quite aside from the fact that appellant has not satisfactorily explained how or why the examiner's action in this case is "adverse" to him,
Section 7, appearing in Chapter I of Title 35 relating to establishment of the Patent Office, its officers and functions, provides in general terms an organization or vehicle for review of adverse decisions. Section 134, appearing in Chapter 12 of Title 35 relating to examination of applications, is among the sections establishing the statutory rights an applicant has during the examination proceeding. To determine what statutory rights of review an applicant has and thus what kind of "adverse decisions" of examiners are reviewable by the board on appeal by applicants, it is necessary, we think, to turn to § 134. Reading § 7 and § 134 in pari materia, as we must, we feel that the kind of adverse decisions of examiners which are reviewable by the board must be those which relate, at least indirectly, to matters involving the rejection of claims.
As further support for the position we take, we note the construction and interpretation of the relevant provisions of the 1952 Act by the Patent Office as voiced in new Rule 144 and amended Rule 191, adopted in implementation of the Act and promulgated simultaneously with the effective date thereof. Those rules recognize a change in practice, and place actions of examiners in requiring restriction under § 121 within the supervision of the Commissioner and beyond the pale of review by the board, a policy consistently followed to this day so far as we are aware. Such administrative practice under the 1952 Act is entitled to weight in construing the statute. In re Marriott-Hot Shoppes, 411 F.2d 1025, 56 CCPA 1230 (1969); Lindberg v. Brenner, 130 U.S. App.D.C. 257, 399 F.2d 990 (1968), and cases cited therein.
Appellant complains that the board did not point out what further right or channel of review was available to him from the decision of the director on his petition, if not by appeal to the board. As the solicitor points out, action under 5 U.S.C. §§ 701-706 would appear appropriate to obtain that review. See also Torok v. Watson, 122 F.Supp. 788, (DC 1954).
The decision of the board as to the scope of its jurisdicton under 35 U.S.C. §§ 7 and 134 is affirmed. The appeal is dismissed as to claims 1, 3 and 9, inasmuch as neither the board nor we have jurisdiction as to the subject matter of appeal, the propriety of the restriction requirement per se.
The decision of the board is affirmed.
Rules 141 and 142 read:
Of course, not all claims in the application have to have been twice rejected. See In re Szajna, 422 F.2d 443, 57 CCPA 899 (1970).