
    MOORE v. UNITED STATES EX REL. CHOTT.
    Patents; Appeal and Error; Mandamus.
    1. The finding of the Board of Examiners-in-Chief reversing a decision-of the Primary Examiner, and sustaining claims for a patent, is not binding upon the Commissioner of Patents, so as to deprive him of the-general power conferred upon him by United States Revised Stat. sec. 4893, U. S. Comp. Stat. 1901, p. 3384, to satisfy himself before issuing a patent, “that the claimant is justly entitled to a patent under the law.” (Citing lie Drawbaugh, 9 App. D. C. 219; lie Loolce, 17 App. D. C. 314; Podlesak v. Mclnnerney, 26 App. D. C. 399; Sabey v. Eolsclaw, 28 App. D. C. 65; and Moore v. Eeawy, 34 App. D. C. 31.)
    2. An appeal to this court will lie by one whose claim to letters patent has-been rejected by the Commissioner of Patents, after its allowance by the Examiners-in-Chief. (Citing lie My gait, 26 App. D. C. 366; General R. Signal Co. v. Thullen, 32 App. D. C. 575; Moore v. Eeany, 34 App. D. C. 31; Gosper v. Gold, 36 App. D. C. 302; Re Selden, 36 App. D. C. 428; and New Departure Mfg. Go. v. Robinson,. 39 App. D. C. 504.)
    3. One whose claim to letters patent has been denied by the Commissioner of Patents cannot complain that his remedy of right to appeal to' this court was not pointed out to him, where the decision of the • Commissioner concludes as follows: “Appeal from this decision to the court of appeals should be taken, if at all, within the time prescribed by the rules of that court.”
    4. Mandamus can neither be substituted for the remedy offered by appeal in case of the rejection by the Commissioner of Patents of a claim for letters patent, nor can it be invoked for the purpose of reviewing and controlling the action of the Commissioner in such a case.
    No. 2536.
    Submitted May 15, 1913.
    Decided June 2, 1913.
    Hearing on an appeal by tbe respondents, the Commissioner of Patents, and one of the examiners of the Patent Office, from a judgment of the Supreme Court of the District of Columbia directing the issuance of the writ of mandamus commanding them to issue letters patent to the relator.
    
      Reversed.
    
    The Court in the opinion stated the facts as follows:
    This is an appeal by E. B. Moore, the Commissioner of .Patents, and A. Gr. Wilkinson, one of the Examiners of the Patent Office, as joint respondents, from the judgment of the supreme court of the District of Columbia ordering the issuance •of a writ of mandamus to compel them to issue a patent to relator Edward L. Chott.
    It appears that relator applied for letters patent for alleged improvements in dental broach holders. The claims were rejected by the Primary Examiner, from whose decision relator appealed to the Board of Examiners-in-Chief. The board reversed the Primary Examiner, and sustained the claims. Acting by authority of the Commissioner, the Primary Examiner made an additional investigation, and cited to the Commissioner additional patents showing the alleged invention to be old. Whereupon the Commissioner personally took up the case, and .approved the action of the Primary Examiner. He did not, however, finally reject the claims, but asserted in a communication to relator his authority to review the case personally, .although it had been acted upon favorably by the Board of Examiners-in-Cbief. He notified relator tbat on May 8, 1912, a. hearing would be bad upon tbe patentability of bis claims over tbe prior art. Relator appeared by brief, contesting tbe authority of tbe Commissioner to withhold the application from issue after a favorable decision from tbe Board of Examiners-in-Cbief. Tbe Commissioner, in a carefully considered opinion on tbe merits of relator’s alleged invention, decided tbat relator was not entitled to a patent, and finally disallowed tbe claims.
    
      Mr. Webster 8. Ruclcman for tbe appellants.
    
      Mr. Joshua, R. H. Potts for tbe Appellee.
   Mr.' Justice Van Obsdel

delivered tbe opinion of tbe Court:

Tbe questions presented are whether tbe decision of tbe Board of Examiners-in-Cbief was binding upon tbe Commissioner to tbe extent tbat nothing remained for him to do except to perform tbe mere ministerial act of issuing tbe patent. If this contention is correct, it disposes of tbe case; but if not correct, tbe further question arises whether tbe official action of tbe Commissioner constituted such a final order ais would have entitled relator to prosecute an appeal to this court.

Tbe jurisdiction of tbe Commissioner of Patents is defined by statute in tbe Revised Statutes of tbe United States, as follows:

“Sec. 481. Tbe Commissioner of Patents, under tbe direction of tbe Secretary of tbe Interior, shall superintend or perform all duties respecting tbe granting and issuing of patents directed by law; and be shall have charge of all books, records, papers, models, machines, and other things belonging to tbe .Patent Office.”
“Sec. 483. Tbe Commissioner of Patents, subject to tbe approval of tbe Secretary of tbe Interior, may, from time to time, establish regulations not inconsistent with law, for the conduct of proceedings in the Patent Office.” [TJ. S. Comp. Stat. 1901, pp. 271, 272.]
“Sec. 4883. All patents shall be issued in the name of the United States of America, under the seal of the Patent Office, and shall be signed by the Secretary of the Interior and countersigned by the Commissioner of Patents,” etc. [U. S. Comp. Stat. 1901, p. 3381.]
“Sec. 4893. On the filing of any such application and the payment of the fees required by law, the Commissioner of Patents shall cause an examination to be made of the alleged new invention or discovery; and if, on such examination, it shall appear that the claimant is justly entitled to a patent under the law., and that the same is sufficiently useful and important, the Commissioner shall issue a patent therefor.” [U. S. Comp. Stat. 1901, p. 3384.]
“Sec. 4903. Whenever, on examination, any claim for a patent is rejected, the Commissioner shall notify the applicant thereof, giving him briefly the reasons for such rejection,” etc. [U. S. Comp. Stat. 1901, p. 3389.]

The jurisdiction of the Board of Examiners-in-Chief is conferred by sec. 482, Pev. Stat. U. S. Comp. Stat. 1901, p. 272, as follows: “The Examiners-in-Ohief shall be persons of competent legal knowledge and scientific ability, whose duty it shall be, on the written petition of the appellant, to revise and determine upon the validity of the adverse decisions of Examiners upon applications for patents and for reissues of patents and in interference cases; and when required by the Commissioner, they shall hear and report upon claims for extensions, and perform such other like duties as he may assign them.”

It will be observed that nothing appears in the act conferring jurisdiction upon the Board of Examiners-in-Chief in any way depriving the) Commissioner of the general power conferred upon him by law to satisfy himself before issuing a patent “that the claimant is justly entitled to a patent under the law.” Unquestionably., the decision of the Board of Examiners-in-Ohief, when favorable to the claimant, is final, unless the Commissioner, in the exercise of his general supervisory power, has authority, upon Ms own independent investigation, to determine finally whether a patent shall issue. The same would be true of a decision by the Primary Examiner in favor of an applicant.. When an application is made for a patent, it is the duty of the-Commissioner to cause an examination to be made, and “if, on such examination, it shall appear that the claimant is justly entitled to a patent under the law, and that the same is sufficiently useful and important, the Commissioner shall issue ai patent therefor.” The examination here required to be made may or may not lead to an appeal to the Board of Examiners-in-Chief, but whether it does or not, in order to determine that a patent should issue, when it ultimately comes back to the Commissioner after the examination ordered under the statute has been made, he may, upon inspection and review of the examination made pursuant to his order, find that the alleged invention is neither novel nor meritorious. In such a case he would not be bound to violate his official obligation. There is nothing in the law to prevent him from exercising this supervision.

Considering this subject, the court in Hull v. Commissioner of Patents, 2 MacArth. 90, said: “Had Congress intended that the decision of the Examiners, when favorable to the applicant, should be final and conclusive, we would suppose so great an anomaly in executive administration would have been introduced into the law by the use of terms of the clearest import. A certified copy of the decision would have been a mandate to-the Commissioner, requiring him to issue the patent by authority, it might be, of a second Assistant Examiner, who had been appointed at his instance, and subject to removal in the like-manner.”

In the same case, the court, referring to sec. 4915, Bev. Stat. U. S. Comp. Stat. 1901, p. 3392, where an aggrieved party, when a patent is refused by the Commissioner of Patents or this court, may go into a court of equity, said: “This section recognizes the authority of the Commissioner to withhold a patent in any case, for any reason satisfactory to himself; it shows that-the decisions of the Examiners are in no case obligatory as to. his action. In that it supplies a remedy under which his judgment in withholding a patent may be revised, it is decisive against a remedy by mandamus applied for in the present instance; for this writ will not lie where the law furnishes the party with any other adequate specific remedy.”

In ex parte cases, the public is represented by the Commissioner. No right of appeal is provided from the decision of the Primary Examiner or the Board of Examiners-in-Chief in behalf of the public. It cannot be that one or both of these tribunals is given final jurisdiction to an extent which forbids any review by the Commissioner; for appeal only lies from the action of the Commissioner, when the Commissioner, as the executive head of the bureau, has been satisfied that an error has been committed by which the public will be damaged. In the case of Re Drawbaugh, 9 App. D. C. 219, Chief Justice Alvey, speaking for the court, said: “The patent should not issue as an experiment upon the public, nor to embarrass or infringe the use of other inventions having just priority. To every application for a patent the public is a party in an important sense, more than that of mere formal grantor. It- is substantially interested in preventing the people from being harassed by the claims of a monopoly, when in fact there may be no just grounds for such claims. It is the duty of the Commissioner- of Patents, representing the public, and also the private rights of the inventor involved in the pending application, as well as all other inventors having the sanction of the Patent Office, to see that entire justice be done to all concerned. The law has provided certain official agencies to aid and advance the work of the Patent Office, such as the Primary Examiners, the Examiners of Interferences, and the Examiners-in-Chief; but they are all ¡subordinate, and subject to the official direction of the Commissioner of Patents, except in the free exercise of their judgments in the matters submitted for their examination and determination. The Commissioner is the head of .the bureau, and he is responsible for the general issue of that bureau. If, therefore, there be any substantial, reasonable ground within the knowledge or cognizance of the Commissioner why the patent should not issue, whether the specific objection be raised and acted npon by the Examiners or not, it is his duty to refuse the patent;' and especially is it so when the Primary Examiner and the Examiners-in-Chief have found such ground for refusal to exist.” This general-supervisory power of the Oommissioner bas been upheld by this court in numerous cases. Podlesak v. McInnerney, 26 App. D. C. 399; Sobey v. Holsclaw, 28 App. D. C. 65; Moore v. Heany, 34 App. D. C. 31; Re Locke, 17 App. D. C. 314; United States ex rel. Hoe v. Butterworth, 3 Mackey, 229, 112 U. S. 50, 28 L. ed. 656, 5 Sup. Ct. Rep. 25.

This brings us to the remedy. We are of opinion that relator-had a right of appeal to this court from the decision of the Commissioner. Eelator cannot complain that this remedy was not' pointed out to him, for the decision of the Commissioner concludes as follows: “I am clearly of the opinion that the application states nothing upon which a patent can properly be based. The claims are therefore rejected and a patent refused. Appeal from this decision to the court of appeals should be taken, if at all, within the time prescribed by the rules of that court.”

The right of appeal granted by sec. 4911, Rev. Stat. U. S.. Comp. Stat. 1901, p-. 3391, is very broad, and embraces every-application for patent, “except a party to an interference” who • “is dissatisfied with the decision of the Commissioner.” We have held this to include any official action of the Commissioner-which was decisive of ah applicant’s right to a patent, or which,. in effect, operated as a rejection of the claims of the application.. In the case of Re Mattullath, 38 App. D. C. 497, the court,, speaking through its chief justice, said: “The right to appeal. from a final decision of the Commissioner of Patents is determinable by its substance and effect, rather than its form. Moore v. Heany, 34 App. D. C. 31—39; Re Selden, 36 App. D. C. 428-431. The appeal in Selderís Oase was from a decision holding that the application had been abandoned for lack of' prosecution within two years. The right to appeal was maintained. Discussing the point, Mr. Justice Eobb, delivering the opinion of the court, said: ‘The question is whether the striking down of an application on the ground of abandonment amounts to a rejection of the claims thereof, within the meaning-of the statute. Of course, if such action on the part of the' 'Commissioner is in effect a rejection of the claims of the application, the court will look to such result rather than to the manner in which it is reached. Substance should never be sacrificed to form.’ ” See also Re Mygatt, 26 App. D. C. 366; Cosper v. Gold, 36 App. D. C. 302; General R. Signal Co. v. Thullen, 32 App. D. C. 675; New Departure Mfg. Co. v. Robinson, 39 App. D. C. 504.

Mandamus cannot be substituted for the remedy afforded by ■appeal. Neither can it be invoked for the purpose of reviewing or controlling the action of the Commissioner in refusing to issue relator a patent. The judgment is reversed, with costs, ¡and cause remanded for further proceedings. Beversed.

A writ of error from the Supreme Court of the United States was granted June 11, 1913.  