IN RE DIEN

RICH, Judge.

This appeal is here on the rejection of all claims of application serial No. 877,745, filed February 14, 1978, by Harmon Colors Corporation, appellant, to reissue its U. S. Patent No. 3,342,823, granted September 19, 1967, on application serial No. 64,307 filed October 24, 1960, for "Preparation of Quinacridones."1

We are not now considering the merits of the rejection because the case is before us on the question of our jurisdiction to hear the appeal, which issue is raised by the contested motion of the Commissioner of Patents and Trademarks (PTO) to dismiss this appeal on the ground of lack of subject matter jurisdiction in this court because of the essential nature of this case. The motion to dismiss is granted.

In current terminology, this application is a "no defect" reissue application filed pursuant to the "Dann Amendments." In more precise legal terms, appellant filed its application for reissue pursuant only to 37 CFR 1.175(a)(4),2 for the purpose of submitting to the PTO the claims of its issued patent together with several items of "prior art" for the purpose of having said claims reexamined in the light of said items. The application for reissue contains only the specification and claims of Patent No. 3,342,823 without change. The declaration of the reissue application, made by W. C. Parle as Vice President of Harmon Colors Corporation, is in compliance with paragraph (a)(4) of Rule 175 and with no other provision of the rule. In other words, no defect in the patent is alleged nor is any change in the patent sought. In the declaration of Mr. Parle, aside from the formal paragraphs, the listing of the several items of prior art, and the power of attorney contained therein, the significant statements read as follows:

It will be observed from the last paragraph above quoted that any change to be made in the patent in order to justify its reissue4 under the reissue statute, 35 U.S.C. § 251,5 is reserved for future action, following a statement from the PTO that for some reason it deems the patent to be "wholly or partly inoperative or invalid."

Action Taken in the PTO

Harmon Colors Corporation (Harmon) filed with its "application for reissue" a "Statement of Position" and thereafter several declarations and exhibits. Sun Chemical Corporation, the licensee under the patent which had produced the prior art referred to in the Parle declaration, filed a protest pursuant to 37 CFR 1.291 arguing the unpatentability of the patent claims. The examiner issued a final rejection of all claims, relying on 35 U.S.C. §§ 102(a), 102(g), and 103, all in accordance with the usual routine of application examination. Harmon then appealed to the Board of Appeals which, with a full opinion, "affirmed the rejections of claims 1-19 under 35 U.S.C. § 102(a) and 35 U.S.C. § 103 and reversed the rejection made under 35 U.S.C. § 102(g)."

This Appeal

Harmon took its present appeal to this court in due course and filed its record and brief. The PTO filed its brief. Sun Chemical Corporation obtained leave to intervene and filed a brief. The case was orally argued on the merits. A few days before the case was reached for argument, however, the PTO moved to dismiss, which motion we are now deciding. The parties and the intervenor were given further time to brief the motion.

This is but the first to be reached of several cases in the same posture in this court, one of which is No. 81-616, In re Van Dorn, wherein a brief amicus curiae was filed on behalf of Van Dyk Research Corporation and SCM Corporation by their respective attorneys acting jointly. The PTO motion to dismiss in all of the cases is essentially the same and states that the PTO is in agreement with said amicus brief, a copy of which it annexes to its motion as representing its argument for dismissal, incorporating pages 6-25 of the brief "by reference" into its motion.

Appellant herein has filed a brief in opposition to the motion to dismiss and intervenor has filed a brief supporting the PTO position as well as a reply to appellant's opposition. In reaching our present decision, we have also examined all of the many briefs filed in the Van Dorn and other cases.

Perusal of all of these briefs on the PTO's several motions to dismiss appeals to this court reveals a most interesting turnabout by that agency which has resulted in confusion reminiscent of parts of the Mad Hatter's Teaparty in Alice in Wonderland.6 The PTO introduced paragraph (a)(4) into its rule pertaining to reissue applications, treated this application as an application for a reissue patent, examined it as such, issued rejections of claims, permitted an appeal to the Board of Appeals, and the board rendered a decision affirming two of the three examiner's rejections. Having considered the Van Dorn amicus brief, it now argues that an application filed pursuant to Rule 175(a)(4) "is not `an application for (reissue) patent' and appellant is not an `applicant' * * *." Further, it says not every decision of the board is a "decision" within the statutes conferring jurisdiction on this court, that while both the examiner and the board used the term "rejection," they were not really making a rejection but "merely advising appellant of the error in the patent that might be corrected by reissue," and that "no reissue patent could ever issue regardless of what the examiner and/or the board did." In conclusion, the PTO sums up the effect of what happened within its doors as follows:

Those opposing the motion to dismiss argue, of course, that the words of the statutes and rules are to be given their literal meaning and that a decision of the board reviewing the examiner's rejection of claims with which the applicant is dissatisfied is appealable to this court under 35 U.S.C. § 141.7

OPINION

To recapitulate, semantics aside, the controlling facts are that: (1) the reissue application specification and claims are identical with the patent specification and claims; (2) the applicant has pointed to no error or defect in the patent and has not alleged that it is inoperative or invalid in part or in whole; (3) the examiner, with whom the PTO Board of Appeals has agreed, has given his opinion that all of the patent claims are invalid over prior art; (4) the patentee-applicant for reissue has as of this time made no move to amend its patent or to comply with any provision of Rule 175 other than paragraph (a)(4); and (5) the patentee asks this court, by what it assumes to be an "appeal" from a "decision" of the board, to review the opinion of the examiner, item (3) supra, as modified by the board decision.

On the foregoing analysis of the facts, at this juncture in the so-called reissue application, it appears to us that all that has happened is that the patentee, appearing here on the assumption it is appealing a decision by the board under 35 U.S.C. § 141, has obtained from the PTO an advisory opinion that the claims of its patent are invalid in view of prior art which it and the intervenor have submitted to the examiner. In doing this pursuant to a practice sanctioned by Rule 175(a)(4), the patentee has in no way complied with the provisions of 35 U.S.C. § 251 or the other provisions of Rule 175 so as to be entitled to examination of its application as one seeking a true reissue of its patent. Although it has now learned that the examiner does in fact "deem the patent inoperative or invalid" (Rule 175(a)(4)), it has not yet acted on that advice and we must decide the motion on the basis of the facts as they now exist.

Belated though the awakening of the PTO may be — and perhaps ours as well for want of having the issue raised before us — and viewing realistically the true nature of a "no defect reissue application," we agree with the PTO that no more than an advisory opinion has been rendered by it and no more than an advisory opinion has been brought to us by appellant for review. We are not alone in this view. In Bally Manufacturing Corp. v. Diamond, 629 F.2d 955, 207 U.S.P.Q. 177 (4th Cir. 1980), the court, speaking through Senior Circuit Judge Phillips of the Sixth Circuit, sitting by designation, considered Bally's protested application under Rule 175(a)(4) on facts like those now before us. It characterized the proceeding as one "to obtain an advisory opinion as to the validity of his patent." It also characterized the examiner's rejection, whether based on the view the patent was valid or that the claims are unpatentable, as "purely advisory."

The fact that the PTO's alleged board "decision," which we are asked to review, is merely an advisory opinion is conclusive of our lack of jurisdiction. To review an advisory opinion would be to give one. We are a court established under Article III of the Constitution. Glidden Co. v. Zdanok, 370 U.S. 530, 584, 587, 82 S.Ct. 1459, 1490, 1492, 8 L.Ed.2d 671 (1962). As such, our power is constitutionally limited to the decision of "cases" and "controversies." Const. Art. III, sec. 2; Muskrat v. United States, 219 U.S. 346, 31 S.Ct. 250, 55 L.Ed. 246 (1910). An advisory opinion by the PTO does not fit in either of those categories and we lack the power to review it. Swingline v. Kleinert, 55 C.C.P.A. 1486, 1489, 399 F.2d 283, 285, 158 U.S.P.Q. 341, 342 (1968), Rich, J., concurring, and authorities therein cited. A clear indication of the lack of a case or controversy, on the one hand, and the existence of a mere advisory opinion, on the other, is the indisputable fact that whether we agree or disagree with the PTO's final decision, no reissue patent will be granted, at least until the happening of future events in accordance with 35 U.S.C. § 251 which would justify it. The PTO, which enjoys special expertise in what its own procedures are and what results from them, has made this amply clear. Appellant has not really asked for a reissue — thus far — and is not going to get a reissue as matters now stand regardless of what we do on this appeal.

Further confirmation of the PTO's awareness that its Rule 175(a)(4) proceedings have had the effect of issuing merely advisory opinions is to be found in its final rule amendments, effective July 1, 1982, published in the Federal Register of May 19, 1982, which have the effect of repealing the "Dann Amendments." We quote from the "SUMMARY" at page 21746:

Under "Objectives," the PTO states that it is

At pages 21748-49, the PTO states:

The motion of the PTO to dismiss this appeal for lack of jurisdiction in this court to entertain it is granted.

COSTS

Appellant moved to assess costs against the PTO in the amount of $174.03 for the printing in the transcript of a copy of a Belgian patent, consisting of 37 pages. The circumstances were as follows: Appellant ordered a transcript of record from the PTO but inadvertently failed to include a list of references. He attempted to correct the omission in a telephone call to the PTO Solicitor, pointing out therein that the Belgian patent need not be included. No written record was made of the conversation. The PTO delivered a record containing the Belgian patent. Appellant then ordered the entire record to be printed without inspecting it. The PTO opposes the motion, pointing out that 37 CFR 1.2 says that all business with the PTO should be in writing and also says "The action of the Patent and Trademark Office will be based exclusively on the written record in the Office." The PTO further points out that the duty of preparing and filing the transcript rests with the appellant, citing our Procedural Handbook, item 6. Our rule 5.6 imposes on appellant the duty of determining the contents of the transcript, printing, filing, and serving it. Appellant cannot charge the PTO with the expense it was put to in failing, first, to comply with PTO Rule 1.2 and, second, in failing to determine what was in the certified record before ordering it to be printed. The motion is denied.

DISMISSED.