Appeal No. 96-3189
Application 08/396,079
BARRETT, Administrative Patent Judge, concurring.
I concur fully with the majority decision, but write
separately to express additional views.
The jurisdiction of the Board to decide an equitable
ground of rejection has not been challenged. Therefore, we
accept the Board's decision in Ex parte Hull, 191 USPQ 157,
159 (Bd. App. 1975), that jurisdiction is proper. The
Commissioner's duty to ensure that an application is entitled
to a patent under the law, 35 U.S.C. § 131, provides general
authority for the rejection.
Historically, there have been many ways to delay the
patent grant. See Seegrist, Delay in Claiming, 21 J. Pat.
Off. Soc'y 741 (Oct. 1939); Blount, The use of Delaying
Tactics to Obtain Submarine Patents and Amend Around A Patent
that A Competitor has Designed Around, 81 J. Pat. & Trademark
Off. Soc'y 11 (Jan. 1999). One technique has been to file
continuing applications, by which an applicant could delay
indefinitely the final grant until such time as applicant
chose. The courts have been reluctant to equitably restrict
patent continuation practice. Ford Motor Co. v. Lemelson,
-18-
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