Application of Milton E. Herr

377 F.2d 610, 54 C.C.P.A. 1315

• Court: Court of Customs and Patent Appeals
• Decided: May 11, 1967
• Docket: Patent Appeal 7751
• Status: Published

Opinions

WORLEY, Chief Judge.

This appeal is from the decision of the Board of Appeals affirming the res judicata rejection of claims 1-3 of appellant’s application¹ for “Organic Compounds,” wherein the board stated^

The sole rejection is on the ground of res judicata arising from the prosecution of appellant’s parent application, Serial No. 583,923, culminating in a decision by the United States Court of Customs and Patent Appeals, In re Herr, 50 CCPA 705, * * * 304 F.2d 906, 134 USPQ 176. Claims 1, 2 and 3, here on appeal correspond exactly to claims 1, 4 and 3, respectively, adjudicated in the prior application. The claims of the parent application were held to be obvious from a cited reference and the attempted showing of unexpected androgenic and anabolic activity was refused consideration because that application did not disclose such activity.

******

The Examiner holds that inasmuch as the instant claims are identical with the claims previously held unpatentable in the parent application, res judicata bars the allowance of the claims herein. (Emphasis supplied.)

Before termination of proceedings in appellant’s parent application,* the present application was filed, disclosing that the claimed compounds do possess anabolic and androgenic activity. In a sense, appellant has purged the prior application of the defects in the disclosure which we found dispositive in our earlier Herr opinion, thus laying the foundation for admission of the Stafford affidavit referred to in that opinion, 304 F.2d 906, 50 CCPA at 707. Additional affidavits of Stafford and one Lyster were submitted to detail and confirm the results described in the earlier affidavit.

Although the examiner held that appellant’s new evidence of nonobviousness overcame the original rejection under 35 U.S.C. § 103,^{2 3} he nevertheless invoked the doctrine of res judicata as a bar to appellant’s claims. The board affirmed, apparently feeling that principles derived from its own decisions, as well as those of this and other courts,⁴ required application of res judicata. We do not agree.

Granted the instant parties and claims are identical with those of the parent Herr application and, in a broad sense, the issue in the original appeal was, as here, whether those claims were allowable in view of the prior art. More to the point, however, the precise issue in the prior Herr appeal was whether appellant was entitled to allowance of his claims in the application and record then on appeal. The precise issue here is whether appellant has legally established his right to those claims in the application and record now before us. We think he has.

That different issues of patentability are indeed presented by the two records is evident from the totally different treatment accorded appellant’s claims by the Patent Office. On the original record, including the defective specification and inadmissible Stafford affidavit, the claims were found unpatentable over the prior art. On the present record, including the amended specification and now admissible affidavit, the identical claims are found patentable over the prior art.⁵

The Patent Office, in discharging its duties to the public, has commendably required applicants for patents to provide an adequate quid pro quo in exchange for the monopoly sought. It should be equally alert in protecting the rights of applicants who have legally and properly established such a right.⁶ To do otherwise would be to unjustly enrich the public at the expense of the inventor, a result we feel confident Congress could not have intended.

We appreciate, but are inclined to discount, the somewhat exaggerated fears of the Patent Office of the potential procedural bedlam resulting from our holding here. In the first place, we fail to see why, as a practical matter, an applicant would deliberately embark on a procedure necessarily involving the time, trouble, expense, risks, delays and uncertainties attendant thereon. The second, and overriding, reason is that Congress has authorized ⁷ the course appellant has followed, and doubtless expects compliance by the Patent Office and the courts. That is what we seek to do here.

The decision is reversed.

Reversed.

1 . Serial No. 223,816, filed September 14, 1962.

2 . This court issued its final order to the Patent Office on November 2, 1962.

3 . “In view of the difference of kind disclosed in the affidavit,” said the examiner, “the rejection predicated upon the Herr and Sondheimer et al references is no longer applicable.”

The board agreed:

* * * In essence, appellant urges that he has a new application which entitles him to a new adjudication of the patentability of the appealed claims, including consideration of the evidence previously refused consideration in his parent application. Upon such new* adjudication, the appealed claims must be found patentable over the art, the Examiner having withdrawn the references. (Emphasis supplied.)

4 . Numerous decisions are cited, pro and con, involving the doctrine of res judicata, a creature of the courts, not of Congress. AVe have examined them all, including In re Szwarc, 319 F.2d 277, 50 CCPA 1571, so heavily relied on by the solicitor, without finding any one so directly in point with the facts here as to be controlling. The board, while regarding In re Lundberg, 280 F.2d 865, 47 COPA 1140, as “most authoritative ancl best express [ing] the principles which should guide us,” found no case expressly in point, stating:

Factually, the Gustavson et al. [14 USPQ 332] and Schott [136 USPQ 383] cases, supra, cited by appellant, and the Ittner [85 USPQ 24] and Prutton [40 CCPA 975, 204 F.2d 291, 97 USPQ 447] cases, supra, included in our list, come closest to the facts of the present case, although none is identical in every respect. In these cases, new evidence was introduced in the second proceeding to support the' patentability of the appealed claims. In the two cases relied upon by appellant, the rejection was reversed; in the other two cases, the rejection was affirmed. (Emphasis supplied.)

We note that the board, sitting en banc, declined to follow Schott in Ex Parte Budde, 150 USPQ 469.

5 . We note the somewhat irreconcilable provisions of The Manual of Patent Examining Procedure, § 706.03 (w), as applied to the facts hero:

A prior adjudication against the inventor on the same or similar claims constitutes a proper ground of rejection as res judicata. Where a different question of patentability is presented the rejection of res judicata does not apply.

It should be readily apparent that the mere fact the present claims are identical to those sought to be patented earlier is not, of itself, necessarily determinative of whether the same issue, cause of action, or “question of patentability” is involved in the two proceedings.

6 . Theories and assumptions of what appellant might have done before appealing to this court are not for us to pass on. Our concern is with what he actually has done in seeking to establish and protect his rights. The Patent Office has not challenged appellant’s right to proceed as he has.

7 . See, for example, 35 U.S.O. § 120.