author: ALMOND, Senior Judge. LANE, Judge

text:
    Robert F. HUMMER and Dean T. Upton, Appellants, v. The ADMINISTRATOR OF the NATIONAL AERONAUTICS AND SPACE ADMINISTRATION, Appellee.
    Patent Appeal No. 9182.
    United States Court of Customs and Patent Appeals.
    Aug. 22, 1974.
    Rehearing Denied Dec. 5, 1974.

      W. H. MacAllister, John M. Lee, Los Angeles, Cal. (Fulwider, Patton, Rieber, Lee & Utecht), Los Angeles, Cal., attorneys of record, for appellants.
    Neil B. Siegel, Washington, D. C., Robert F. Kempf, Silver Spring, Md., for The Administration of the National Aeronautics and Space Administration. Leonard Rawicz, Potomac, Md., of counsel.
    Before MARKEY, Chief Judge, and RICH, LANE and MILLER, Judges, and ALMOND, Senior Judge.
   ALMOND, Senior Judge.

This is an appeal from the decision of the Patent Office Board of Interferences in a proceeding under section 305 of the National Aeronautics and Space Act of 1958 (42 U.S.C. § 2457). The board held that the application filed by Hummer et al. (Hummer) should issue as a patent to the Administrator of the National Aeronautics and Space Administration (NASA) on behalf of the United States. We affirm.

The pertinent provisions of section 305 read:

Property rights in inventions — Exclusive property of United States; issuance of patent
(a) Whenever any invention is made in the performance of any work under any contract of the Administration, and the Administrator determines that—
(1) the person who made the invention was employed or assigned to perform research, development, or exploration work and the invention is related to the work he was employed or assigned to perform, or that it was within the scope of his employment duties, whether or not it was made during working hours, or with a contribution by the Government of the use of Government facilities, equipment, materials, allocated funds, information proprietary to the Government, or services of Government employees during working hours; or
(2) the person who made the invention was not employed or assigned to perform research, development, or exploration work, but the invention is nevertheless related to the contract, or to the work or duties he was employed or assigned to perform, and was made during working hours, or with a contribution from the Government of the sort referred to in clause (1),

such invention shall be the exclusive property of the United States, and if such invention is patentable a patent therefor shall be issued to the United States upon application made by the Administrator, unless the Administrator waives all or any part of the rights of the United States to such invention in conformity with the provisions of subsection (f) of this section.

* -x- * * * -X-

Definitions
(j) As used in this section—
******
(2) the term “contract” means any actual or proposed contract, agreement, understanding, or other arrangement, and includes any assignment, substitution of parties, or subcontract executed or entered into thereunder; and
(3) the term “made”, when used in relation to any invention, means the conception or first actual reduction to practice of such invention.

The invention, title to which is in dispute, is related to a “spin scan” camera arrangement that can be used to photograph cloud formations from a satellite stationed in a synchronous orbit. A synchronous orbit is one in which the satellite hovers over a single point on the earth.

The arrangement includes a telescope mounted on the satellite in such a way that it can scan a narrow band of the earth’s surface from east to west. This horizon-to-horizon scan is accomplished by maintaining the axis about which the satellite turns parallel to the earth’s axis.

The telescope is also provided with an arcuate support which allows it to pivot upwardly or downwardly in order to provide north to south scanning. The support moves in discrete increments or steps keyed to the rotation of the satellite about its axis, i. e., one step for each turn of the satellite. In this way the telescope views a large portion of the earth as a series of narrow bands. Limit switches reverse upward or downward movement of the telescope.

The image seen by the telescope is reflected onto a photomultiplier device generating electronic signals which are transmitted to earth. The image seen by the telescope is recomposed as a photograph from these signals. A complete photograph is a composite of the narrow bands seen by the telescope. In actual practice, the photograph is made up of 2,000 lines, each line representing a band 2.2 miles in width running from east horizon to west horizon.

Of the nine claims involved in this proceeding, claim 1 is sufficiently representative and is reproduced below :

In a radiation sensing camera arrangement adapted for use in a rotating body to scan a terrestrial area and wherein the body is in relatively stationary relation to the scan area, the combination of the camera adapted for carriage by the body and for rotation therewith,
said camera including optical means directed outwardly of the body to receive radiation data and having an optical axis angularly related to the axis of rotation of the body,
pivot means mounting the camera to the body, drive means to induce incremental pivotal motion of the camera relative to the body whereby the optical axis is moved through a determined arc to scan an area of a terrestrial body, and
radiation sensing means in operative alignment with the optical axis for receiving physical data from the scanned area.

The board held that the invention was first actually reduced to practice on December 6, 1966 when a synchronously orbiting satellite, known as the ATS-1 satellite, embodying the claimed camera arrangement successfully transmitted signals to earth from which photographs of cloud formations were made. In its view, this entitled the Administrator to receive at patent, since the camera itself had been built at Santa Barbara Research Center, a wholly owned subsidiary of Hughes Aircraft Co., under Subcontract No. 1 of NAS 5-9677, a contract between NASA and the University of Wisconsin, and installed in the ATS-1 satellite under provisions of NAS 5-3823, a contract between Hughes Aircraft Co. and NASA. The board also held that work carried out by Hummer before the contracts were made did not amount to a reduction to practice.

On this appeal, Hummer urges that the board erred in not holding that the precontractual work amounted to a reduction to practice. Hummer also urges that, assuming arguendo no actual reduction to practice occurred until the ATS-1 satellite was placed in orbit, the circumstances surrounding this case are not such that NASA should acquire title to the patent. It is contended that, if the invention was first reduced to practice at the time the ATS-1 went into orbit, the invention was not “ * * * made in the performance of any work under any contract of the Administration * * as required by section 305(a).

OPINION

The Alleged Precontractual Reduction To Practice.

It is the inventor’s burden to establish those facts which demonstrate that an actual reduction to practice of an invention occurred prior to the making of a contract out of which rights to a patent on the invention might accrue to the United States as provided in section 305. See Williams v. Administrator of NASA, 463 F.2d 1391, 59 CCPA 1329 (1972).

In the instant case, the facts upon which the board held that Hummer had failed to establish a precontractual reduction to practice are not in dispute. The record reveals that on May 13, 1964 NASA contracted with the Hughes Aircraft Co. (Hughes) to build five spacecraft of a type to be known as the Advanced Technological Satellite (ATS). The ATS-1 satellite, whose flight was regarded by the board to have resulted in the first actual reduction to practice of the invention, was fabricated under this contract, NAS 5-3283.

The ATS spacecraft were referred to as “bus” satellites, since they were to carry diverse experimental packages which were to be furnished by NASA. The camera arrangement involved in this ease was one of those packages.

Professor Verner Suomi of the University of Wisconsin attempted to get a contract from NASA to provide a spin scan camera for an ATS spacecraft. His initial proposal was rejected by NASA. Before making another proposal, he sought assistance from Santa Barbara Research Center (SBRC).

Discussions between Suomi and officials of Hughes and SBRC resulted in the design and construction by Hummer and Upton of a camera arrangement which they now regard as a prototype of the claimed invention. This arrangement was demonstrated to Suomi in June or July 1965 and became the basis for another proposal by Suomi to NASA, as well as for one to the Weather Bureau. A contract, NAS 5-9677, was made between the University of Wisconsin and NASA entitled “Spin Scan Camera System Experiment for Applications Technology” and dated September 30, 1965.

The only question raised with respect to the operation of the prototype arrangement is whether the arrangement used met all the limitations of the claims. If so, its successful operation qualified as an actual reduction to practice. In this regard, it is pertinent to point out at this time that the board held that the claims do not require that the camera be mounted in a satellite or be in space but that they do require, as a material limitation, the rotating body as well as the camera arrangement itself.

The camera arrangement that was successfully demonstrated at SBRC by making photographs of nearby terrain employed a telescope and vertical stepping mechanism like that which would provide north-to-south scanning in actual satellite operation. However, the telescope was not mounted on a body in such a way that lateral, or horizontal line, scanning was achieved by rotating the body and, therefore, the telescope. Instead, the telescope was fixedly mounted and directed away from the scene itself. A rotating mirror was placed so that as it rotated it would reflect a line segment of the scene into the telescope.

From the record, it appears that at no time prior to its use in the ATS-1 was the camera arrangement made a part of a rotating body and operated in such a way that horizontal line scanning was achieved by rotating the body. Nevertheless, the test using a rotating mirror was, and is, regarded by Hummer to be an adequate simulation of the operation of the camera in a satellite or other rotating body. This type of simulation was apparently selected merely because it allowed the use of simpler electronics than would be required were the camera rotated.

As indicated above, the board held that the claim required the camera arrangement in combination with the rotating body and that the operation of the prototype could not, therefore, amount to a reduction to practice. Hummer argues that this amounts to reading into the claim a limitation that is not recited. He urges that the claim merely requires a camera arrangement adapted for use in a rotating body. In this regard, see In re Dean, 291 F.2d 947, 48 CCPA 1072 (1961).

In support of its position, the board pointed to various parts of claim 1 that in its view indicate that the rotating body is a limitation. It particularly felt that the recitation of “ * * * pivot means mounting the camera to the body * * * ” positively includes the body as part of the claimed invention by tying the camera to it.

To constitute an actual reduction to practice, the device demonstrated must include every limitation of the claim. See Fredkin v. Irasek, 397 F.2d 342, 55 CCPA 1302 (1968). In the instant case, the device tested at SBRC failed to satisfy all the limitations of the claims in question. We believe the facts of this case distinguish it from Dean and agree with the board’s conclusion that the claimed invention includes a rotating body. Had it been appellants’ intent to indicate otherwise, it would have been simple enough to do so.

Were there any question about the board’s interpretation of the claims, we believe it is resolved by representations made to the Patent Office during the prosecution of the instant application. In the remarks accompanying an amendment of the claims, the claims defining the invention were distinguished from prior art relied upon by the examiner on the ground that “ * * "x" they [the applicants] specifically require, in the base claims, a flying vehicle having a rotating type body * * * ”.

Appellee contends that this representation amounts to file wrapper estoppel. At the very least it is an admission by appellants which is relevant to interpreting the claims. Having made this statement to obtain allowance of these claims, appellants’ attempt to deny its effect when it is against their interest is not lightly to be accepted. See In re Ruff, 265 F.2d 590, 45 CCPA 1037 (1958).

Apart from the tests with the nonrotating prototype, appellants do not allege any other precontractual reduction to practice. In view of the fact that we find ourselves in agreement with the board on the inadequacy of the tests done on the prototype, we hold that the first reduction to practice of the claimed invention came when the ATS-1 satellite was successfully orbited and transmitted electronic signals to earth from which photographs were made.

NASA’S Right To The Invention

Appellants’ principal argument urging that we hold that NASA is not entitled to the patent which will issue from their application is based upon an interpretation of § 305(a), where it indicates that an invention shall be the property of the United States if “ * * * made in the performance of any work under any contract of the Administration * * They argue that the effect of this language in the total context of § 305(a) means that the event of a first actual reduction to practice creates a right in the United States to title to the invention only if that reduction to practice is accomplished during the life of a contract with NASA by efforts of the inventors themselves or persons acting on their behalf.

To factually support their legal argument, appellants point out that the SBRC subcontract under the University of Wisconsin’s prime contract with NASA terminated when the camera arrangement was delivered. Furthermore, the NASA contract with Hughes called only for the fabrication of ATS spacecraft. Hughes personnel did not participate in the launch or operation of those spacecraft under any contract with NASA. They also point out that there is nothing in the record to indicate that NASA had a contract with anyone to launch or operate the ATS-1. It would follow from these facts that no right in the United States arose under § 305 because the reduction to practice was not one “ * * * made in the performance of any work under any contract of the Administration * * *.”

Appellants’ is an unacceptably strained interpretation of § 305. To accept it would be to restrict the statute in a way which would defeat the intent of Congress. We have no doubt that there are many instances when NASA will contract for the development of hardware under circumstances where the contractor’s obligation will end with the delivery of the item to NASA. In at least some of those instances, the reduction to practice of this hardware would be carried out by NASA itself or by other persons not in privity with the inventor. We think that § 305 should be construed to extend to those situations.

We are satisfied that this construction of the statute is in accord with Congressional intent as indicated in the legislative history to the National Aeronautics and Space Act. In the House Report, submitted by the Select Committee on Astronautics and Space Exploration, the following appears:

Subsection (a) [of § 305] provides that title to inventions and discoveries made pursuant to or as the result of contracts with the Administration shall become the property of the United States * * *. [Emphasis ours.]

It is our view, therefore, that when an invention is developed under contract with NASA and subsequently reduced to practice outside the contract, the invention can be considered to have been made as the result of the contract.

Notwithstanding our interpretation of the statute adversely to appellants on this point, it is the burden of NASA to show that it is entitled to receive the title to the invention. Williams v. Administrator of NASA, supra. In the instant proceeding, we think that a prima facie case on behalf of NASA has been made in view of the fact that the camera arrangement used in the first actual reduction to practice was built under a subcontract to NASA’s contract with the University of Wisconsin. That NASA can claim title to inventions developed under subcontracts is made clear by the definition of “contract” appearing in § 305(j)(2), which is reproduced supra.

Appellants make one other argument of substance disputing NASA’s right to title to the invention. Briefly stated, that argument is that NASA did not contract or pay for any “inventing” under the subcontract between SBRC and the University of Wisconsin. All it paid for was the mere manufacture of an already designed camera. In appellants’ words, “NASA merely purchased a copy of an already existing device, a device so thoroughly tested it had the reliability of an off the shelf item.”

The substance of this argument lies in the nature of the subcontract. That contract was to be performed in two parts. SBRC was to be paid by the University of Wisconsin for work under each part from two different funds. Work under the first part was paid for with funds from a Weather Bureau Grant, whereas NASA was the source of the funds for the second part.

The scope of work to be performed by SBRC was set forth in a document entitled “Statement of Work and Performance Schedule For Spin-Scan Cloud Camera Program,” which was drawn up prior to, but incorporated by reference into, the subcontract. According to the statement of work, SBRC is required in the first part to “ * * * design, fabricate, assemble and functionally test one spin-scan cloud camera.” Part two, however, requires SBRC to merely •“ * * fabricate, assemble and functionally test one flight model spin-scan camera identical to the prototype fabricated under Part I * *

It is appellants’ contention that any “inventing” under their contract with the University of Wisconsin would have comé under Part I, which speaks of “design” work. Thus, if they are not entitled to the patent, it should go to the University of Wisconsin or the Weather Bureau, who paid for the design, rather than to NASA.

However, we are not persuaded by this argument since the claimed invention is not the camera arrangement alone. As we have already indicated, the claims require the camera arrangement in combination with a rotating body.

Insofar as the record reveals, the only use of the Weather Bureau camera was to install it on a prototype satellite that was never launched. The contract between SBRC and the University of Wisconsin requires that SBRC report to the Weather Bureau only those inventions conceived or first reduced to practice under Part I. Neither of those conditions was met. Furthermore, the only reduction to practice of the invention came as a result of a risk taken by NASA by including the camera arrangement in a satellite launched by it. Despite the fact that nonspace uses of the claimed invention are alluded to in the record, no practical use of the camera or the camera arrangement as claimed, other than the use by NASA, has been demonstrated.

In view of all the foregoing, we hold that § 305 requires that title to the invention go to the Administrator of NASA on behalf of the United States. Accordingly, the decision of the board is affirm.

Affirmed.

LANE, Judge

(dissenting).

I dissent from the majority opinion because I believe that the claim terminology “adapted for use in a rotating body” does not recite a rotating body as an element of the combination claimed. See In re Dean, 291 F.2d 947, 48 CCPA 1072 (1961). In that case, this court interpreted the words “adapted to be individually coupled to said [shutter-actuating] elements” in element [1] as follows (291 F.2d at 951, 48 CCPA at 1078):

* * * To state mere adaptability of these parts of the timer to perform the coupling function does not import into the claim the shutter to which they are coupled. The above clause is a limitation of element [1] but not an inclusion of shutter elements.

The board’s holding that the claims require, as a material limitation, a rotating body as well as the camera arrangement itself, and the court’s adoption of this interpretation are, in my view, erroneous. I also believe that the laboratory tests made by Hummer and Upton at SBRC of the “camera arrangement adapted for use in a rotating body” were sufficient to show that the claimed combination operated in the intended way.

      . Serial No. 583,219 filed September 30, 1966.

      . The preamble of original claim 1 recited “ * * * adapted for use in a satellite having a rotating gyroscopic type body * * Relevant remarks accompanying a second amendment that, inter alia, deleted “satellite having a” and “gyroscopic type” were that the preamble as amended “is indeed the equivalent or more specific than the original language.” Similar language was also deleted from claim 4 by the same amendment.

      . 1958 U.S.Code Cong, and Admin.News, p. 3198.


source: Caselaw Access Project

author: LANE, Judge.

license: Public Domain

text:
    Application of Clifford E. LOEHR.
    Patent Appeal No. 9212.
    United States Court of Customs and Patent Appeals.
    Aug. 29, 1974.

      George D. Morris, Pittsburgh, Pa., attorney of record for appellant; Russell A. Eberly, Mark Levin, Irwin M. Stein, Pittsburgh, Pa., George R. Jones, Jones & Lockwood, H. Walter Haeussler, Arlington, Va., of counsel.
    Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Gerald H. Bjorge, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE, and MILLER, Judges.
   LANE, Judge.

This appeal is from the decision of the Patent Office Board of Appeals rejecting claims 2, 4, 5, 8, 10 and 11 in appellant’s application on a new ground pursuant to Patent Office Rule 196(b), 37 CFR 1.196(b). Claim 12 stands allowed. The main issue in this appeal is whether the Board of Appeals has statutory administrative jurisdiction to reject appealed claims on new grounds. We affirm on this issue.

The Invention

Claim 8 adequately exemplifies the claimed subject matter for our disposition of this appeal:

8. In the process for producing pigmentary metal oxide by vapor phase oxidation of the corresponding metal halide in a reactor wherein reactants are introduced into said reactor through a reactant inlet nozzle assembly upon the exposed surfaces of which metal oxide deposits, the improvement which comprises inhibiting the growth of said metal oxide deposits by vibrating directly said inlet nozzle assembly at vibrational frequencies and with force sufficient to inhibit said growth.

Appellant’s specification (other than the claims) and one of the two references relied on by the board were omitted from the printed transcript of record.

Patent Office Proceedings

In the Final Action and the Examiner’s Answer, the examiner rejected claims 2, 4, 5, 8, 10 and 11 under 35 U. S.C. § 112. The basis for this rejection was that the claims were “vaguely and functionally expressed” and “indefinite” or “unduly broad.” No prior art rejection under 35 U.S.C. § 102 or 35 U.S.C. § 103 was made nor were any prior art references cited by the examiner.

The board determined that the examiner’s rejection was “predicated on the fact that the appealed claims do not recite specific numerical ranges for the frequency and force at which the vibration of the reactor nozzle is performed.” It reversed this rejection and further stated:

* * * * -X- *
However, we do not believe that the appealed claims recite a patentable invention. Hence, we are required to make a new rejection of these claims under the provisions of Rule 196(b).
Claims 2, 4, 5, 8, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over “Vibrating,” the Vibco Inc. publication [cited by appellant in a Rule 116 amendment], and “Vibrolator Vibrators,” the Martin Engineering Company publication [cited by board].
We make this new rejection fully cognizant of the fact that the Examiner has allowed claim 12. The allowed claim differs from the newly rejected claims only in reciting specific values for the force and frequency of the vibration used in the instant process. The Examiner may wish to review the allowance of claim 12 in the light of our present holdings.
The decision of the Examiner is reversed. We have made a new rejection of the appealed claims under the provisions of Rule 196(b).
* -X- * * * *

Appellant did not seek any reconsideration provided for in Rule 196(b) and appealed directly to this court.

Appellant’s Arguments

Appellant contends that the Board of Appeals is not authorized by statute to originate, sua sponte, a truly new rejection of appealed claims and that any such action exceeds its jurisdiction conferred solely by 35 U.S.C. § 1?

Appellant’s second contention is that since Patent Office Rule 196(b), 37 CFR 1.196(b), is an effort by the Commissioner of Patents to confer jurisdiction on the Board of Appeals greater than that authorized by 35 U.S.C. § 7, the rule is invalid as inconsistent with law under 35 U.S.C. § 6(a).

Finally, appellant contends that the Board of Appeals has denied him due process of law in violation of the Fifth Amendment by the “adverse comment” on allowed claim 12.

Appellant has not briefed or argued the merits of the board’s new rejection based on 35 U.S.C. § 103.

OPINION

The Board’s Statutory Administrative Jurisdiction

We hold that the Board of Appeals acted within its statutory administrative jurisdiction under 35 U.S.C. § 7 when it rejected the appealed claims on a new ground. Therefore, we further hold that the relevant part of Rule 196(b) is “not inconsistent with law” under 35 U.S.C. § 6(a).

The statutory scheme enacted by the Congress convinces us that the phrase “review adverse decisions of examiners” as used in 35 U.S.C. § 7 is not to be interpreted restrictively. The members of the Board of Appeals are denominated “examiners-in-chief” in both 35 U.S.C. § 3 (“Officers and employees”) and 35 U.S.C. § 7. The title chosen by the Congress implies that the members of the board have authority to examine or reexamine appealed claims.

Furthermore, the right of an applicant to appeal from the decision of the primary examiner to the Board of Appeals is given by 35 U.S.C. § 134, which is part of “Chapter 12 — Examination of Application” (emphasis ours) in Title 35 U.S.C. Thus, the Congress created a Board of Appeals, composed of “examiners-in-chief,” which functions as part of the overall Patent Office examination process noted by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 18, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966):

* * * it must be remembered that the primary responsibility for sifting, out unpatentable material lies in the Patent Office. To await litigation is —for all practical purposes — to debilitate the patent system. * * * [Emphasis ours.]

This court has frequently approved the action of the Board of Appeals in rejecting appealed claims on new grounds. For example, In re Peterson, 189 F.2d 288, 291, 38 CCPA 1068, 1073 (1951), contains the following observation:

It is trite to state that it is within the jurisdiction of the Board of Appeals to apply grounds of rejection not relied upon by the examiner.

' -X- -X- *

Another example is In re Hughes, 345 F.2d 184, 185, 52 CCPA 1355, 1357 (1965), where this court commented:

We do not mean by this to imply that the Board of Appeals may not, if it sees fit, enter new or alternative grounds for rejection of claims in an appealed application. Such practice is not uncommon and is often of great value in clarifying the examiner’s position or in correcting errors and oversights. And if the new ground of rejection is properly identified as such, the applicant is in no way prejudiced, for he has the benefit of the adequate procedural safeguards of Buie 196(b).

The historical origin of the phrase “review adverse decisions of examiners” (35 U.S.C. § 7) traces back to Section 2 of the Act of March 2, 1861, ch. 88, 12 Stat. 246, where the language “to revise and determine upon” was employed. In Butterworth v. United States ex rel. Hoe, 112 U.S. 50, 66, 5 S.Ct. 25, 33, 28 L.Ed. 656 (1884), the Supreme Court made this statement regarding that section:

The act of [March 2,] 1861, c. 88, 12 Stat. 246, created the office of examiners in chief, “for the purpose of securing greater uniformity of action in the grant and refusal of letters patent,” “to be composed of persons of competent legal knowledge and scientific ability, whose duty it shall be, on the written petition of the applicant for that purpose being filed, to revise and determine upon the validity of decisions made by examiners when adverse to the grant of letters patent; -x- *_» [Emphasis ours.]

The 1841 edition of Noah Webster’s An American Dictionary Of The English Language, vol. II, p. 486, contains the following definitions of “revise”:

1. To review; to re-examine; to look over with care for correction; as, to revise a writing; to revise a proof sheet. Pope.
2. To review, alter and amend; as, to revise statutes. Boyle.

Thus, the Congress, in its original enactment on this point, expressed an intent to confer upon the examiners-in-chief the power to examine or reexamine appealed claims.

The Board’s Comment on Allowed Claim 12

Appellant’s contention is that the board’s “adverse comment” on allowed claim 12 denied him due process of law under the Fifth Amendment.

Under 35 U.S.C. § 141, an action taken by the Boardg of Appeals must amount to a “decision” or this court has no jurisdiction to review that action. In re James, 432 F.2d 473, 57 CCPA 1371 (1970). Here, the board’s comment did not amount to a “decision.” The board merely stated: “[t]he Examiner may wish to review the allowance of claim 12 in the light of our present holdings.” Hence, this portion of the appeal must be dismissed for lack of jurisdiction in this court.

The Merits of the Board’s New Rejection

Appellant’s notice and reasons of appeal filed with the Commissioner under 35 U.S.C. § 142 would justify our consideration of the merits of the board’s new rejection based on 35 U.S.C. § 103. However, appellant’s failure to brief and argue the merits of the new rejection must be construed as an abandonment thereof for the purposes of this appeal. See In re Golen, 352 F.2d 385, 53 CCPA 724 (1965) and In re Le Baron, 223 F.2d 471, 42 CCPA 956 (1955). Therefore, the board’s new rejection of claims 2, 4, 5, 8, 10 and 11 under 35 U. 5. C. § 103 is affirmed.

In summary, the decision of the Board of Appeals is affirmed on the issue of its statutory administrative jurisdiction to reject appealed claims on a new ground and on the merits of the new rejection. Insofar as the appeal relates to the board’s comment on allowed claim 12, it is dismissed for lack of jurisdiction.

Affirmed.

      . Serial No. 856,684, filed September 10, 1969, for ‘‘Method for Preventing Metal Oxide Growth.”

      . § 7. Board of Appeals
      The examiners-in-cliief shall be persons of competent legal knowledge and scientific ability. The Commissioner, the assistant commissioners, and the examiners-in-chief shall constitute a Board of Appeals, which, on written appeal of the applicant, shall review adverse decisions of examiners upon applications for patents. Each appeal shall be heard by at least three members of the Board of Appeals, the members hearing such appeal to be designated by the Commissioner. The Board of Appeals has sole power to grant rehearings. [First paragraph only, emphasis ours.]

      . § 1.196 Decision by the Board of Appeals,
      (b) Should the Board of Appeals have knowledge of any grounds not involved in the appeal for rejecting any [appealed] claim, it may include in its decision a statement to that effect with its reasons for so holding, which statement shall constitute a rejection of the claims. The appellant may submit an appropriate amendment of the claims so rejected or a showing of facts, or both, and have the matter reconsidered by the primary examiner. The statement shall be binding upon the primary examiner unless an amendment or showing of facts not previously of record be made which, in the opinion of the primary" examiner, avoids the additional ground for rejection stated in the decision. The applicant may waive such reconsideration before the primary examiner and have the case reconsidered by the Board of Appeals upon the same record before them. Where request for such reconsideration is made the Board of Appeals shall, if necessary, render a new decision which shall include all grounds upon which a patent is refused. The applicant may waive reconsideration by the Board of Appeals and treat the decision, including the added grounds for rejection given by the Board of Appeals, as a final decision in the case.

      . § 6. Duties of Commissioner
      (a) The Commissioner, under the direction of the Secretary of Commerce, shall superintend or perform all duties required by law respecting the granting and issuing of patents and the registration of trademarks; shall have the authority to carry on studies and programs regarding domestic and international patent and trademark law; and shall have charge of property belonging to the Patent Office. He may, subject to the approval of the Secretary of Commerce, establish regulations, not inconsistent with law, for the conduct of proceedings in the Patent Office. [Emphasis ours.]

      . § 134. Appeal to the Board of Appeals
      An applicant for a patent, any of whose the Board of Appeals, having once paid the claims has been twice rejected, may appeal from the decision of the primary examiner to fee for such appeal.

      . § 141. Appeal to Court of Customs and Patent Appeals
      An applicant dissatisfied with the decision of the Board of Appeals may appeal to the United States Court of Customs and Patent 'Appeals, thereby waiving his right to proceed under section 145 of this title. [First sentence only, emphasis ours.]

      . § 142. Notice of appeal
      When an appeal is taken to the United States Court of Customs and Patent Appeals, the appellant shall give notice thereof to the Commissioner, and shall file in the Patent Office his reasons of appeal, specifically set forth in writing, within such time after the date of the decision appealed from, not less than sixty days, as the Commissioner appoints.


author: PER CURIAM:

text:
    Charles LYMAN et al., Plaintiffs-Appellants, v. UNITED STATES of America et al., Defendants-Appellees.
    Nos. 2-12, 2-16.
    Temporary Emergency Court of Appeals,
    Aug. 5, 1974.

      Jerome M. Kay, New York City, for appellants.
    Mark F. Hughes, Willkie Farr & Gallagher, New York City (Churchill Rodgers, Vincent R. FitzPatrick and William G. Scarborough, New York City, on the brief) for appellee, Metropolitan Life Ins. Co.
    Winston E. Miller, Dept, of Justice, Washington, D. C. (Carla A. Hills, Asst. A tty. Gen., Stanley D. Rose and Marvin L. Coan, Washington, D. C., with him on the briefs) for appellee, U. S.
    Before HASTIE, ANDERSON and JOHNSON, Judges.
   PER CURIAM:

In 1943 the Metropolitan Life Insurance Company entered into a long term contract with the City of New York, pursuant to the Redevelopment Companies Law of the State of New York, under the terms of which the Metropolitan built and still owns Stuyvesant Town, a large housing development in the City of New York. The plaintiffs, present and past tenants of Stuyvesant Town, brought this action under Phase II Regulations under the Economic Stabilization Act, challenging the ruling of the Price Commission which decided that Stuyvesant Town was within the exemption for rental controlled units as provided in 6 C.F.R. § 301.106, which freed from Federal Price Commission rent controls political subdivisions such as counties, cities or towns, “in circumstances where rents are adequately supervised by some other government agency, federal, state or local,” Rykus v. New York City Housing Authority, 468 F.2d 215, 217 (Em.App.1972), so that the burden on the Price Commission could be lessened and unnecessary duplication of effort could be prevented.

The appellants raised two major objections below, first that the Price Commission violated its own information regulations, § 301.106(a) and (c), by making its decision without securing the necessary information from the appropriate local agency, the City’s Board of Estimate, by relying instead on a letter from Metropolitan, and second, that Stuyvesant Town was not “rent controlled housing” within the meaning of § 301.-106(b). The district court upheld the Price Commission’s decision, and rejected both arguments, first on December 12, 1973, and again after a further hearing on March 25, 1974. On appeal, appellants raise the same two grounds, and in addition they also raise the procedural objection that the district court’s decision on the merits could not validly have been made on the motions then before it, and consequently the appellants were deprived of the opportunity to make their legal arguments. We find these contentions unpersuasive and affirm the judgment of the district court.

While there are numerous Supreme Court opinions holding that an agency cannot violate its own regulations where their underlying purpose is to protect personal liberties or interests, this is not such a case. Unlike the regulations in Plotkin v. Grayson, 485 F.2d 1243, 1244 (Em.App.1973), which were designed to protect certain rights of tenants to enable them to assess, and to receive assurances about, proposed rent increases by their landlord, the rent control exemption here was designed to permit the Price Commission “to avoid unnecessarily burdening” itself — as it would if it allowed “the creation of a two-tiered system of rent control where one tier already existed,” Rykus, supra, 468 F.2d at 217. The information requirements in § 301.-106(c) were intended to enable the Price Commission to make that choice.

As the letter submitted by Metropolitan gave the Commission in substance the information required by § 301.-106(c), and since Metropolitan offered in the letter to cooperate if the Commission wanted more information and because the Commission’s own decision discloses that it was “aware of the salient factors even though no papers were filed by the Board,” the Commission can properly be excused under the rule of American Farm Lines v. Black Ball, 397 U.S. 532, 537, 90 S.Ct. 1288, 1291, 25 L.Ed.2d 547 (1970), from its “failure to require strict compliance with its own rules.” As these were not “rules . . . adopted to confer important procedural benefits upon individuals,” the Price Commission was “entitled to a measure of discretion,” “not reviewable except upon a showing of substantial prejudice to the complaining party,” in administering rules “intended primarily to facilitate the development of relevant information for the Commission’s use in” making its decision, id., at 538-539, 90 S.Ct. at 1293. See also Municipal Elec. Util. Ass’n. of Alab. v. FPC, 158 U.S.App.D.C. 188, 485 F.2d 967, 973 (1973); Municipal Light Boards v. FPC, 146 U.S.App.D.C. 294, 450 F.2d 1341, 1347-1348 (1971), cert. den., 405 U.S. 989, 92 S.Ct. 1251, 31 L.Ed.2d 445 (1972); Associated Press v. FCC, 145 U.S.App.D.C. 172, 448 F.2d 1095, 1104 (1970)

Here, as was true in Rykus, supra, at 468 F.2d at 217, there is no ques-^ tion but that the first two requirements for “rent controlled housing” under § 301.106(b) (2) are met, that is, financial assistance from, but not ownership by, a governmental agency. Rykus likewise establishes the standard for the requisite degree of control, which is the third essential. The 1943 contract between Metropolitan and the City provided for a maximum average rental of $14 per room per month, except upon application to the Board of Estimate and upon demonstration, by a preponderance of credible evidence, that increased rentals would be necessary to provide the annual, cumulative sum for interest, amortization and dividends, equal to but not greater than six percent of the total final cost of the project. These control conditions are even more stringent than those in Rykus, where, for example, prior local agency approval of proposed rent increases was not required.

Even assuming, arguendo, that appellants did not have an opportunity to present their full arguments before the district court’s decision on December" 12, 1973, that opportunity came and was fully utilized at the later hearing on March 25, 1974, when the district judge heard the arguments made by appellants, noted that some had not been presented before, and clearly stated that his conclusion on the merits remained the same. The record discloses that, prior to the March 25 hearing, appellants had themselves moved for judgment on the merits, and that at that hearing their attorney indicated that his concern about the premature nature of the December 12 decision was not his inability to present evidence on disputed issues of fact but rather his lack of opportunity to brief the legal issues fully. He conceded, however, that this omission was rectified by the filing of his brief for the March 25 hearing.

The judgment of the district court is affirmed.

      . Economic Stabilization Act of 1970, 84 Stat. 799 (1970), as amended 85 Stat. 743 (1971); 6 C.F.R § 801.106.

      . See, e. g., Yellin v. United States, 374 U.S. 109, 83 S.Ct. 1828, 10 L.Ed.2d 778 (1963); Vitarelli v. Seaton, 359 U.S. 535, 79 S.Ct. 968, 3 L.Ed.2d 1012 (1959); Service v. Dulles, 354 U.S. 363, 77 S.Ct. 1152, 1 L.Ed.2d 1403 (1957); Accardi v. Shaughnessy, 347 U.S. 260, 74 S.Ct. 499, 98 L.Ed. 681 (1954); Moser v. United States, 341 U.S. 41, 71 S.Ct. 553, 95 L.Ed. 729 (1951). There are numerous similar holdings as to personal procedural rights in the Courts of Appeals. See, e. g., Donham v. Resor, 436 F.2d 751 (2d Cir. 1971); United States v. Leahey, 434 F.2d 7 (1 Cir. 1970); United States v. Heffner, 420 F.2d 809 (4 Cir. 1970); Smith v. Resor, 406 F.2d 141 (2 Cir. 1969); Hammond v. Lenfest, 398 F.2d 705 (2 Cir. 1968).

      . Indeed appellants recognize this purpose in their brief, and § 301.106(d) reflects this purpose by reserving in the Price Commission “the right ... to impose . . . different requirements on any person reporting under paragraph (c) of this section” in order “[t]o ensure that the goals of the Economic Stabilization Program are attained . . . ” But appellants claim an additional purpose was to allow the local agency the option of electing its own or the federal control scheme. Since the Board of Estimate is not trying to enforce the selection of federal controls here, it is unnecessary to decide whether the local agency’s or the Price Commission’s choice would prevail if each sought to rely on the controls of the other.

      . Although it cited Service and Aceardi, in passing, for the proposition that a governmental agency cannot act contrary to its own regulations, Baldwin County Elec. Mem. Corp. v. Price Commission, 481 F.2d 920 (Emp.App.1973), cert. den., 414 U.S. 909, 94 S.Ct. 230, 38 L.Ed.2d 147 (1973), is not apposite here. That case turned on the circumstance that the majority found the regulation “silent on the point in issue between the parties,” id., at 923. Since there was no violation of the regulations it was not necessary to analyze their purpose to ascertain if the non-compliance was justifiable.