MOLINS PLC, PETITIONER V. DONALD J. QUIGG, ASSISTANT SECRETARY OF
COMMERCE

   No. 87-1736

   In the Supreme Court of the United States

   October Term, 1987

   On Petition for a Writ of Certiorari to the United States Court of
Appeals for the Federal Circuit

   Memorandum for the Respondent in Opposition

   Petitioner contends that the court of appeals erred in dismissing
as not ripe for review its challenge to the First Action Final
Rejection (FAFR) policy of the United States Patent and Trademark
Office (PTO).

   1. On September 7, 1984, petitioner filed a patent application,
entitled "'Conveyor System for Rod-Like Articles,'" which was the
second continuation of an earlier application relating to the same
invention (Pet. App. 1B-2B).  On January 7, 1985, the PTO, following
its FAFR policy, /1/ entered a final rejection of petitioner's entire
application (id. at 2B).

   Petitioner tried unsuccessfully to have the PTO rescind its
rejection on the ground that the FAFR policy conflicted with 35 U.S.C.
132, which provides that "(w)henever * * * any claim for a patent is
rejected, * * * if * * * the applicant persists in his claim for a
patent, * * * the application shall be reexamined." Petitioner also
attempted to file with the PTO, on July 1, 1985, an amendment to its
application modifying its claims.  The PTO, however, refused to enter
the July 1, 1985, amendment.  Pet. App. 3B-5B.

   2. Petitioner appealed the PTO's rejection of its application to
the Board of Patent Appeals and Interferences (Board).  Petitioner
also filed petitions for writs of mandamus in the United States
District Court for the District of Columbia seeking to compel
respondent Assistant Secretary of Commerce, as the head of the PTO, to
enter petitioner's July 1, 1985, amendment and to rescind the FAFR
policy.  Pet. App. 4A, 6B-7B.

   The district court stayed its proceeding pending the Board's
decision.  On July 30, 1986, the Board, among other things, entered a
new ground for rejection of certain of petitioner's claims.  As a
result of this decision, petitioner was notified that petitioner,
under 37 C.F.R. 1.196(b), could resubmit the July 1, 1985, amendment
because of the new ground for rejection.  On September 2, 1986,
petitioner resubmitted the July 1, 1985, amendment;  the PTO
ultimately entered the amendment on October 28, 1986.  Pet. App.
4A-5A, 8B-10B.

   The district court thereafter dismissed the petitions for writs of
mandamus, holding that the PTO's entry of the amendment on September
2, 1986 "render(ed) moot any possible justiciable claim by
(petitioner) for nonentry of its July 1, 1985, Amendment" (Pet. App.
14B).

   3. The United States Court of Appeals for the Federal Circuit
affirmed, holding that petitioner's challenge to the FAFR policy was
not ripe for review (Pet. App. 7A-16A).  /2/ Applying the case law of
the District of Columbia Circut, /3/ the court concluded that
"appraisal of (the FAFR) policy would benefit from review in a more
concrete setting because it is inappropriate to review such a
longstanding agency practice, absent a specific application of that
practice, the firt time it has been challenged" (id. at 11A).  The
court found that postponing review would not unfairly prejudice
petitioner because petitioner could file another petition.  Moreover,
petitioner had not shown "that the FAFR policy (had) an immediate
impact on it in conducting its day-to-day affairs" (id. at 14A).  The
court thus concluded that the "countervailing judicial or
administrative interests" in reviewing a challenge to the FAFR policy
in a concrete setting were "sufficient when balanced against the
hardship to (petitioner)" to hold that the case was not ripe for
review (id. at 15A-16A).

   4. The decision of the court of appeals is correct.  It does not
conflict with any decision of this Court or of any other court of
appeals.  Accordingly, review by this Court is not warranted.

   a. Petitioner contends (Pet. 7-18) that the court of appeals'
policy of applying the law of that circuit to which district court
appeals normally lie, unless the issue on appeal pertains to patent
law, improperly encourages the forum shopping Congress sought to
eliminate by enacting 28 U.S.C. 1295(a)(1).  Petitioner did not raise
this issue before the court of appeals.  Accordingly, this Court need
not consider this claim.  Adickes v. S. H. Kress & Co., 398 U.S. 144,
147 n.2 (1970).  Moreover, the court of appeals' choice-of-law rule
makes sense because it minimizes the confusion and conflict which
would result if district courts were required in patent cases to
familiarize themselves with a separate non-patent law of the Federal
Circuit in addition to the law of the regional courts of appeals,
which review most of their decisions.  See, e.g., Atari, Inc. v. JS &
A Group, Inc., 747 F.2d 1422, 1438-1440 (Fed. Cir. 1984) (en banc).
/4/

   b. Petitioner also contends (Pet. 18-53) that the court of appeals
improperly dismissed its challenge to the FAFR policy as not ripe for
review.  Petitioner's claim is meritless.  The PTO's entry of
petitioner's patent application amendment left petitioner, in the
context of this lawsuit, with merely an abstract disagreement over the
FAFR policy, the effects of which petitioner no longer felt "in a
concrete way." Abbott Laboratories v. Gardner, 387 U.S. 136, 148
(1967).  Review was particularly inappropriate at this stage given
undefined terms within the policy itself.  /5/ Thus, a reviewing court
would benefit from having a specific application of the policy, not
only for focusing the issue on appeal, but also for providing an
authoritative interpretation of the regulation.  Cf. Young v.
Community Nutrition Inst., 476 U.S. 974, 980-981 (1986).  Finally,
given the lack of hardship to petitioner if review were postponed, the
court of appeals correctly treated petitioner's claim as not ripe
because "the impact of (the FAFR policy would not) be felt immediately
by (petitioner) in conducting (its) day-to-day affairs." Toilet Goods
Ass'n v. Gardner, 387 U.S. 158, 164 (1967).

   It is therefore respectfully submitted that the petition

for a writ of certiorari should be denied.

   CHARLES FRIED

      Solicitor General

   MAY 1988

   /1/ Under the FAFR policy, the first office action on a patent
application will constitute a final rejection.

         in those situations where (1) the new application is a
      continuing application of, or a substitute for, an earlier
      application, and (2) all claims of the new application (a) are
      drawn to the same invention claimed in the earlier application,
      and (b) would have been properly finally rejected on the grounds
      or art of record in the next Office action if they had been
      entered in the earlier application.

   Manual of Patent Examining Procedure Section 706.07(b), at 700-21
(5th ed. rev. 1987).

   /2/ Petitioner conceded before the court of appeals that the PTO's
entering of its amendment on September 2, 1986, had rendered moot its
request for entry of the July 1, 1985, amendment (Pet. App. 7A).

   /3/ Following its precedents, the court applied "the law of that
circuit to which district court appeals normally lie, unless the issue
pertain(ed) to or (was) unique to patent law" (Pet. App. 5A-6A).  The
court applied the "ripeness doctrine" of the District of Columbia
Circuit because that doctrine was dispositive of the appeal and did
not pertain to patent law issues (id. at 6A).

   /4/ In any event, petitioner does not suggest that any other court
of appeals' ripeness decisions would have produced a different result.
 For this reason as well, this is not an appropriate case to review
the Federal Circuit's choice-of-law rule.

   /5/ For example, the FAFR policy applies only to those continuation
applications that are "drawn to" the same invention described by
earlier submissions.  Manual of Patent Examination Procedure, supra,
Section 706.07(b), at 700-21.  The policy contains no written
definition of "drawn to" (ibid.).