Ex Parte Frasch

Background

A first inventor who developed a new way to remove calcium sulphate build-up from brine-heating surfaces applied for a patent with six claims: three for the process and three for an apparatus used in that process. The primary patent examiner said the claims covered two different inventions and ordered the applicant to divide them under Patent Office rule 41. The examiner denied reconsideration and refused an appeal to the board of examiners-in-chief. The inventor asked the Commissioner of Patents to let the appeal be heard or to decide the issues; both requests were denied. The inventor then appealed to the Court of Appeals of the District of Columbia, which dismissed the appeal for lack of jurisdiction, and finally filed this petition seeking a writ of mandamus.

Reasoning

The Court noted that in a recent decision (Steinmetz v. Allen) it held rule 41 invalid insofar as it forced a division between related process and apparatus claims. The Court explained that, given that holding, the correct way for an inventor to get the Patent Office to act is by seeking mandamus against the Commissioner rather than by appealing to the Court of Appeals. Because mandamus is the proper remedy here and the Court of Appeals lacked jurisdiction over the appeal, the Court discharged the rule to show cause and dismissed the petition.

Real world impact

Inventors who face Patent Office orders to split related process and apparatus claims are affected: rule 41 cannot be enforced in that narrow way, but challengers must pursue mandamus to the Commissioner rather than a direct appeal to the Court of Appeals. This decision resolves the proper procedure for review in these situations and ends this particular petition without granting the inventor relief.