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as covered by the Board's decision, then Patent and Trademark Office policy will be changed to conform to the
law, as interpreted by the Federal courts.
Prior to 1861, the Commissioner (and sometimes an
Assistant Commissioner by designation from the Commissioner) decided all appeals within the Office from those dissatisfied with ex parte rejections of examiners and inter partes decisions entered in interferences. In 1861, a Board of Examiners-in-Chief was formally established to assist the Commissioner with ex parte appeals. Act of March 2, 1861, ch. 88, § 2, 12 Stat. 246. The Board of Examiners-in-Chief also considered appeals from decisions rendered by examiners in interference cases. Id. An appeal could be taken from a decision of the Board of Examiners-in-Chief to the Commissioner.
Ultimately, the number of appeals increased to the point where it became difficult for the Commissioner to consider all appeals and effectively superintend the affairs of the office. The Board of Examiners-in-Chief became a Board of Appeals, and appeals to the Commissioner were eliminated. Act of March 2, 1927, ch. 273, § 3, 44 Stat. 1335, 1335-36. A Board of Patent Interferences was established to assist the Commissioner in resolving interferences. However, Congress did not create a Board of Appeals or a Board of Patent Interferences which was to be independent of oversight by the Commissioner. Congress expressly determined that the Commissioner, Deputy
Commissioner, and the two Assistant Commissioners appointed pursuant to 35 U.S.C. § 3(a), in addition to the Examinersin-Chief, would be members of the Board of Appeals.
35 U.S.C. § 7(a). Furthermore, Congress expressly authorized the Commissioner to designate the panel members to consider any particular case.
Unlike other statutory boards which may act independent from the head of the agency in which they are situated, e.g., the various boards of contract appeals, the Board of Appeals was never intended to act independent of the Commissioner. The Commissioner's membership on the Board and his authority to designate the panel to consider any particular case were retained when Congress created the Board of Patent Appeals and Interferences. Inclusion of the Commissioner, Deputy
Commissioner, and Assistant Commissioners as members of the Board, and giving the Commissioner the authority to designate the members to hear a particular case, is the manifest antithesis of independence from the Commissioner. It is true that the Commissioner is generally bound to implement a final decision entered by the Board which is no longer subject to rehearing by the Board or judicial review. Brenner v. Manson, 383 U.S. 519, 523 n.6 (1966). However, being bound to implement a final decision does not make the Board independent of the Commissioner. Lindberg v. Brenner, 399 F.2d 990,
992-93, 158 USPQ 380, 381 (D.C. Cir. 1968), aptly notes:
If Congress had intended the Board to be totally independent
of the Commissioner, it surely would have given the Commissioner authority to appeal a Board decision to the Federal courts.
In the first paragraph of page 2 of the communication of April 24, 1992, it is suggested that a panel consisting of the Commissioner, the Deputy Commissioner, an Assistant Commissioner, and the Examiners-in-Chief who serve as Chairman and Vice-Chairman of the Board is not a legally constituted panel. Section 7(a), however, expressly authorizes the Commissioner to designate a panel including himself and any other members of the Board, including the members which are referred to in the communication as "management officials."
In the last paragraph on page 2 of the communication of April 24, 1992, there is a reference to the "judicial
independence" of the Board. But, the Board is not a judicial body. It is an administrative body within the Patent and Trademark Office, none of whose members are judges. Board's responsibility is to assist the Commissioner by deciding ex parte appeals and inter partes patent
The members of the Board are employees of the Patent and Trademark Office. Accordingly, they are expected to follow the policy established by the Commissioner for the Patent and Trademark Office. They are also expected to follow prior decisions entered by the Board, particularly decisions entered by expanded panels consisting of more than three members of the Board, unless overturned by the Federal courts. Any panel which finds that it cannot follow a prior decision of the Board is asked, prior to the time a decision is entered, to call that fact to the attention of the Examiner-in-Chief who serves as Chairman of the Board. Any other practice leads to inconsistent policy and application of the law to individual cases which come before the Patent and Trademark Office.
On those rare occasions when a decision of the Board is entered without knowledge of, but which turns out to be contrary to, a prior Board decision, the Board can reconsider
its decision sua sponte or upon a request for reconsideration by either the applicant or the examiner. The panel to hear any request for reconsideration may be designated by the Commissioner, and may include himself, the Deputy Commissioner, and any Assistant Commissioners appointed pursuant to 35 U.S.C. § 3(a). 35 U.S.C. § 7(a). Hence, when appropriate, an expanded panel may be designated by the Commissioner to hear a request for reconsideration. The expanded panel may or may not include the original panel members, although it is generally Patent and Trademark Office practice to include original panel members when a case is being reconsidered by an expanded panel.
The technical skills of the members of a particular panel are not controlling. Congress has established the criteria for membership on the Board. That criteria is set out in 35 U.S.C. § 7(a). Any member of the Board is qualified to act on any case which comes before the Board. The technical background and other qualifications of any particular member of the Board are not subject to question or other inquiry. In re Nilssen, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988); In re Harry, 231 USPQ 984 (Comm'r Pat. 1986).
The Board plays an important role within the patent system by assisting the Commissioner to establish legal policy for the Patent and Trademark Office. That role works best