Application of Herr

• Decision Date: 11 May 1967
• Docket Number: Patent Appeal No. 7751.
• Citation: 377 F.2d 610,153 USPQ 548
• Parties: Application of Milton E. HERR.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

153 USPQ 548, 377 F.2d 610 (1967)

Application of Milton E. HERR.

Patent Appeal No. 7751.

United States Court of Customs and Patent Appeals.

May 11, 1967.

Eugene O. Retter, Kalamazoo, Mich., The Upjohn Company, Gerard A. Blaufarb, Kalamazoo, Mich., for appellant.

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

Before WORLEY, Chief Judge, RICH, SMITH, and ALMOND, Judges, and WILLIAM H. KIRKPATRICK.^*

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,² 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. ž 103,³ 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 authorized⁷ 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.

RICH, Judge (concurring).

The Board of Appeals wrote a carefully reasoned opinion (Mar. 29, 1965) in this case and, a year afterward, gave extensive en banc consideration to the problem of res judicata in the Patent Office. Ex parte Budde, 150 USPQ 469 (Mar. 14, 1966).¹ The en banc consideration was stated to have been "because of the importance of the legal issue," and it is indeed important. It is also a question of some difficulty and much confusion.

In deciding this case the board majority placed primary reliance on two of our decisions, Lundberg and Prutton. As to the first it said:

In our opinion, the case of In re Lundberg et al., 47 CCPA 1140, 1960 C.D. 478, 761 O.G. 582, 280 F.2d 865, 126 USPQ 412, is most authoritative and best expresses the principles which should guide us.

As to the other it said:

In re Prutton, supra 40 CCPA 975, 204 F.2d 291, 97 USPQ 447 is, in our opinion, extremely pertinent * * *.

* * * * * *

It is our view that the case of In re Prutton dictates affirmation of the res judicata rejection in the present case.

In Budde the board again felt itself bound by Lundberg and Prutton. The solicitor's brief likewise relies on these cases.

I am glad to have had the opportunity to consider the extensive dissenting views of Judge Almond who also seems to feel that Lundberg and Prutton have controlling effect here, along with others of our decisions.

Thus the question before us is, to a large extent, whether Lundberg and Prutton control or whether they are distinguishable and should be distinguished. When we decide, as we do, that a holding of res judicata herein is improper, we at least owe the board, which has tried to follow those precedents, and the bar, some explanation of why we so hold. It does not seem to me sufficient to say merely that neither case is identical in every respect or directly in point. The board thought they were authoritative, pertinent, and controlling, and said so. Herein I try to say why I do not agree. As the author of the Lundberg opinion I feel that I in particular owe an explanation of why I think it does not compel an affirmance here.

As I have often found it necessary to point out, what is said in an opinion is the result of the questions raised and arguments made in the case being discussed. While what is said may make sense in that context it does not necessarily do so when lifted therefrom and applied to a different situation. That is what appellee attempts here with respect to Lundberg. As is being so vociferously pointed out by all those opposed to the result which we of the majority here reach, Lundberg does talk about the claims determining whether the issue in the second case is the same as it was in the first case because in Lundberg that was what determined it. What was said in the opinion was in answer to the appellants' contention that there was a different issue because the claims were different and in the opinion we were engaged in demonstrating that that particular argument was unsound. No other argument was made to show that there was a different issue.

In Lundberg what the appellants were trying to get us to do was to reconsider the patentability of the invention over the prior art and reverse ourselves on the same question, using as an excuse that there were differences in the claims which made new issues. What we were doing in the opinion was analyzing their arguments and pointing out that despite verbal changes the same patentability issue was still being presented for our consideration in view of the same prior art. Our attention was focused on the claims because the argument was based on them and so, in consequence, was our opinion. Such statements as "If the claimed subject matter is the same, the prior adjudication is binding" were made about the fact situation before us in Lundberg and were not being uttered as rules of general applicability to other fact situations, certainly not as guiding "principles," which the board appears to have taken them to be.

The net effect of the Lundberg decision was that we will refuse to reconsider the same question of patentability merely because a few immaterial language changes have been made in the claims. Likewise, for the same reasons we felt the examiner and the board were justified in not reconsidering their decisions. The application of the principle of res judicata was but a convenient and conventional legal way of saying that we would not go over the same arguments we had already been over, as though on a rehearing, and that the like view of the Patent Office was justifiable.

The present case does not present a comparable situation. The question now is whether the claimed invention is patentable in view of evidence of unexpected advantageous properties we felt we should not consider in the prior case (whether rightly or wrongly I do not say), plus additional evidence. The issue in the prior case was section 103 obviousness in view of closeness of structure to the reference compound without that evidence. The holding was that the attempted showing of properties did not overcome the obviousness rejection because there was no disclosure of such properties in the specification, for which reason the evidence would not be considered. On this second application the specification does contain the disclosure, the Patent Office has looked...