subsequent and binding Federal Circuit event has overtaken the
rationale upon which Gustavsson is based. The event was In re
McGrew, 120 F.3d 1236, 43 USPQ2d 1632 (Fed. Cir. 1997), in which
the Federal Circuit made it crystal clear that § 135(b) is a
statute of repose. 120 F.3d at 1237, col. 2, 43 USPQ2d at 1634,
col. 1. See also In re Berger, 279 F.3d 975, 61 USPQ2d 1523
(Fed. Cir. 2002). Section 135(b) cannot be much of a statute of
repose if (1) an interference is inadvertently declared contrary
to § 135(b), (2) a preliminary motion by a patentee for judgment
based on § 135(b) against an applicant is granted, but
(3) nevertheless the patentee's claims may be subject to an inter
partes priority or patentability attack. Given the McGrew event,
were Gustavsson being decided today, we believe that the result,
should, and would, not be the same.
f.
As noted earlier, in dicta the Federal Circuit has stated
that "[t]he word 'may' in § 135(a) accommodates the situation
when patentability is not placed at issue during the priority
contest, but it would contradict the remedial purpose of the
legislation if the Board could refuse to decide questions of
patentability for which there had been adduced an appropriate
record." 886 F.2d at 328, 12 USPQ2d at 1311. We agree with the
Federal Circuit's dicta observation. But, we respectfully
suggest that there are other circumstances, consistent with the
purpose of Congress' amendments to 35 U.S.C. § 135(a), and its
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