Ex parte Lemoine , 94-0216 (December 27, 1994) [jurisdiction for appeal]

When an applicant has had a claim for a patent rejected twice, even if the rejections issued in a parent application and its file wrapper continuation and the claims were reworded between them, the Board has jurisdiction under 35 U.S.C. § 134. The Board construes "claims" in § 134 as "claims for a patent," consistent with its use in § 132, rather than as particular "claims of an application." Precedential only on the construction of § 134. No prior precedent directly addressed this issue; the majority treated In re Szajna and In re Hengehold as stating sufficient, not necessary, conditions for jurisdiction. For the examiner, a rejection that repeats the same grounds and references in a continuation cannot be shielded from appeal by arguing that the reworded claims were not previously rejected. For the applicant, filing a file wrapper continuation instead of perfecting an appeal does not forfeit the right to appeal a first, non-final action in the continuation, provided the applicant's claim for a patent was previously rejected. The majority relied on Erlenbaugh v. United States for in pari materia reading and United States v. Mobay Chemical Corp. (CCPA) for liberal construction of appeal-granting statutes. LEGAL TEST OR STANDARD: Jurisdiction under 35 U.S.C. § 134 depends on whether the appellant is an applicant "any of whose claims has been twice rejected." The Board construes "claims" to mean the repeated "claim for a patent" in § 132, reading §§ 132 and 134 in pari materia, and applies the principle that statutes giving a right to appeal are liberally construed. So long as the applicant has twice been denied a patent, an appeal may be filed. TRIGGERING FACTS: Parent application claims 1-22 were rejected in a first action; new claims 23-53 were finally rejected; the applicant filed a notice of appeal but no brief and refiled as a file wrapper continuation under 37 CFR § 1.62 with amended claims and new claims 54-58. The examiner repeated the same three grounds in a non-final action, from which the applicant appealed. The Board counted three denials of a patent and found jurisdiction, although the continuation claims were reworded. KEY QUOTE: "Under our interpretation, so long as the applicant has twice been denied a patent, an appeal may be filed." (Paper 47, p. 10) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The majority distinguished In re Szajna, 422 F.2d 443 (CCPA 1970) and In re Hengehold, 440 F.2d 1395 (CCPA 1971) as stating sufficient rather than necessary conditions for jurisdiction, and followed Erlenbaugh v. United States, 409 U.S. 239 (1972) and United States v. Mobay Chemical Corp., 576 F.2d 368 (CCPA 1978). PRACTICE TIP: When appealing from a first, non-final action in a continuation, brief that the applicant's claim for a patent has been rejected at least twice, citing the parent rejections, and expect the Board to examine its own jurisdiction regardless of any Group Director's decision to transmit the appeal.