Application of Craig

• Decision Date: 26 June 1969
• Docket Number: Patent Appeal No. 8142.
• Citation: 411 F.2d 1333,162 USPQ 157
• Parties: Application of Dwin R. CRAIG and John N. Street.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

162 USPQ 157, 411 F.2d 1333 (1969)

Application of Dwin R. CRAIG and John N. Street.

Patent Appeal No. 8142.

United States Court of Customs and Patent Appeals.

June 26, 1969.

Moore & Hall, Elliott I. Pollock, Washington, D. C., for appellant.

Joseph Schimmel, Washington, D. C., for Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, ALMOND and BALDWIN, Judges.

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claims 1-20 of application serial No. 392,379, filed August 27, 1964, for "Photographic Method and Apparatus," on the sole ground of res judicata.¹ No claim has been allowed.

The application on appeal was stated in the specification as filed to be "a continuation of copending application serial No. 753,942, filed August 8, 1958."² That parent application was rejected on certain prior art and for inadequacy of disclosure. An appeal was taken to the Board of Appeals³ which affirmed both grounds of rejection by a decision dated June 30, 1964. The present application was filed before the termination of proceedings on the first application since it was filed before the time to appeal had expired. In the refiled application now before us, the specification was modified by setting forth quotations from published articles which had been incorporated in the first application only by reference. The claims were substantially changed by the insertion of limitations which had not appeared in the claims of the first application, although in some respects the new claims were broader. The new application contains an affidavit of Dr. George H. Dorion on the issue of insufficient disclosure in which he states that the disclosure in both of appellants' applications was adequate to enable him to practice the invention. By reason of one or more of these three changes — in the specification, in the claims, and in the evidence of record — appellants contend that the res judicata rejection was not proper.

The decision of the board here on appeal is dated November 30, 1966, which was before we handed down our opinions on the subject of res judicata in In re Herr, 54 CCPA 1315, 377 F.2d 610 (May 11, 1967), and In re Kaghan, 55 CCPA 844, 387 F.2d 398 (Dec. 14, 1967, rehearing denied Feb. 15, 1968). The board, therefore, was unaware of our views on the law as therein set forth. Notwithstanding consideration of the Herr case by the Patent Office Solicitor in his brief, filed Feb. 13, 1968, he relies in that brief on In re Prutton, 40 CCPA 975, 204 F.2d 291, (1953). The solicitor says, in fact, "the decision in Prutton is controlling." In Herr, the opinion of the Chief Judge did not discuss Prutton though it refers to it in a footnote in quoting from the board. In the concurring opinion of the writer, however, Prutton was considered in extenso and it was stated as his view that the court reached the wrong conclusion in that case, that it should be overruled (54 CCPA at 1321, 377 F.2d 610), and that he would overrule it and considered that by implication the Chief Judge's opinion did so (CCPA at 1326, 377 F.2d 610). The late Judge Smith, in his concurring opinion in Herr, said (CCPA at 1335, 377 F.2d at 625):

* * * as Judge Rich has pointed out in his concurring opinion, Prutton is of questionable value as a precedent and I agree with him that it should be overruled. It seems to me also that the practical effect of the majority opinion here is to do so.

To put an end to reliance on Prutton, it is hereby expressly overruled. The reasons will be found fully set forth in the writer's opinion in Herr. The Herr and Kaghan decisions are controlling here, not Prutton.

The situation in this case bears a close factual resemblance to that in Herr. The board here,⁴ after reversing all of the examiner's rejections except res judicata, said:

The instant res judicata rejection appears to be based on the affirmance of the prior case by the board on inadequate disclosure and the art rejection.

We have already pointed out that the board reversed, in this case, all rejections based on art. The next thing it did was to hold expressly that the original rejection on the ground of inadequate disclosure was in error, saying by way of explanation:

We independently passed upon this question solely because, if on review the res judicata rejection should be considered to be an error on some basis that we cannot see, our independent views on the subject of adequacy of disclosure would be present in the record.

Then, considering the res judicata based on the art rejection and its affirmance in the prior application, the board said (our emphasis):

We independently passed upon the art rejection as made in the instant case and show that we are of the opinion that the subject matter is patentable over the art used. We did this so that our differing viewpoint would be clearly of record if, on review, the res judicata rejection should be found to be in error for some reason that we have been unable to ascertain.

Thus, the board held herein that both of the prior rejections, by another panel of the board, underlying the res judicata rejection herein — inadequate disclosure and unpatentability over prior art — were wrong. It then proceeded, nevertheless, to sustain the res judicata rejection. After an analysis of the claims, the board stated:

Thus the claims before us introduce no question of patentability other than those passed upon in the parent case. Under such circumstances, a holding of res judicata is proper. Therefore, this rejection is sustained.

The rejection of the claims as based on inadequate disclosure is reversed. The rejection of the claims on the ground of res judicata as to both the art rejection and the rejection on the basis of inadequate disclosure is affirmed. Each art rejection is reversed.

In summary, though the board found the claims to define patentable subject matter and to be proper claims and found the prior board decision on the inadequacy of the disclosure to have been wrong, it felt obliged to refuse them on the legal theory of res judicata. The board thus found itself bound by its own previous errors. We reverse. We consider this to be an improper application of the doctrine.

When the Patent Office, through its duly constituted tribunal, has determined that claims are patentable to an applicant under the statute, allowance of those claims should not be refused merely because on a previous occasion the same or similar claims have been refused on grounds no longer deemed to be valid.

While res judicata has its proper place in the law as a reflection of a policy invoked to settle disputes and put an end to litigation, the prosecution of patent applications...