Application of Hitchings

• Decision Date: 06 May 1965
• Docket Number: Patent Appeal No. 7221.
• Citation: 52 CCPA 1141,342 F.2d 80
• Parties: Application of George H. HITCHINGS, Gertrude B. Elion and Irving Goodman.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

52 CCPA 1141, 342 F.2d 80 (1965)

Application of George H. HITCHINGS, Gertrude B. Elion and Irving Goodman.

Patent Appeal No. 7221.

United States Court of Customs and Patent Appeals.

March 11, 1965.

Rehearing Denied May 6, 1965.

James M. Mason, New Haven, Conn., David Paul Weaver, Washington, D. C., for appellants.

Clarence W. Moore, Washington, D. C. (Raymond E. Martin, Washington, D. C., of counsel), for Com'r. of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH and ALMOND, Judges.

SMITH, Judge.

On October 7, 1955, appellants filed in the United States Patent Office an application¹ (hereinafter "parent") disclosing and claiming certain organic compounds and a process for making them. Shortly thereafter, in November of 1955, appellants filed a Canadian patent application containing a disclosure nearly identical to that of the parent application. The Canadian application subsequently matured into Canadian Patent No. 560,171 (hereinafter "Canadian patent"), which issued July 8, 1958. The parent application did not fare so well. In June of 1957 the examiner finally rejected all of its claims "as being based upon a fatally defective disclosure of utility." Appellants filed an appeal with the board and submitted a brief, but the appeal was subsequently withdrawn and the application abandoned.

However, on March 1, 1960, several days before the parent application became abandoned, appellants filed another United States application² (hereinafter "instant" application), as a continuation-in-part of the parent application. The present appeal is from a board decision sustaining the examiner's final rejection of claims 3 and 4 of the instant application.

There are two separate grounds of rejection. First, the examiner rejected the claims of the instant application as "fully met" by the Canadian patent, which issued more than one year prior to the actual filing date of the instant application. Appellants did not dispute the disclosure of the Canadian patent, but sought to dispel the statutory bar it created under 35 U.S.C. § 102(b) by establishing as their effective date the filing date of the parent application, pursuant to 35 U.S.C. § 120. The examiner, however, held there was no continuity between the parent and instant applications, since the former had been found wanting in its disclosure of utility, and thus concluded that appellants were not entitled to the earlier filing date, citing Ex parte Buc, 114 USPQ 552 (P.O.B.A. 1957). The examiner also held that appellants could not re-contest the validity of the unappealed rejection of the parent application, since that rejection was said to be res judicata.

The second ground of rejection is directly concerned with the merits of the instant application itself. The examiner refused to allow the appealed claims on the ground that the specification fails "to teach how the invention is to be used," as required by 35 U.S.C. § 112.

This appeal thus presents the following three basic questions: 1) May appellants now be heard to argue that the final rejection of the claims in the parent case was improper, and that, as a matter of law, the parent specification did contain sufficient supporting disclosure of utility? 2) If so, was the disclosure of utility in the parent application sufficient? 3) If so, does the instant application contain the required teaching of how to use the claimed invention?

The Patent Office has answered all of these questions in the negative, and in order for appellants to prevail, all must be answered in the affirmative. Since the pertinence of each of the latter two questions depends upon the answer to those preceding it, we shall consider them in the order stated above.

I. Res Judicata

On several occasions recently, this court has had to consider the doctrine of res judicata in various contexts. See, e. g., Switzer v. Sockman, 333 F.2d 935, 52 CCPA 759; In re Szwarc, 319 F.2d 277, 50 CCPA 1571; In re Fried, 312 F.2d 930, 50 CCPA 954. In those cases we have examined many of the fundamental problems encountered in applying res judicata. In this case, however, we need not concern ourselves with such problems, for we are convinced that principles of res judicata should not apply where the initial decision is no more than an unappealed final rejection of an examiner.

In Overland Motor Co. v. Packard Motor Co., 274 U.S. 417, 47 S.Ct. 672, 71 L.Ed. 1131 (1927), the Supreme Court held that an unappealed final rejection of a claim is not necessarily res judicata with respect to the question of patent-ability of a similar claim to the same invention contained in a divisional application filed after the initial rejection. The Court indicated that the decision to treat such a rejection as res judicata was optional, and rested with the Patent Office. And since the divisional application had matured into a patent, the Office was considered to have waived the option.

In so holding, the Court referred to In re Barratt's Appeal, 14 App.D.C. 255 (1899), in which the Court of Appeals for the District of Columbia had reached a similar conclusion. In Barratt, the Court pointed out that

"While the rules that govern the finality and conclusiveness of adjudications at the common law do not apply, in the strict sense, to administrative or quasi-judicial action in the Executive Departments of Government, yet in administrative action, as well as in judicial proceeding, it is both expedient and necessary that there should be an end of controversy. * * *

* * * * * *

"In what we have said we do not desire it to be understood that the Patent Office may not, if it thinks proper so to do, entertain and adjudicate a second application for a patent after the first application has been rejected. What we decide is, that it is not incumbent upon the office as a duty to entertain such applications * * *."

As was recognized by the Barratt court in 1899, and as is clear today, the inexorable and universal applicability of the traditional doctrine of res judicata to judicial proceedings does not always hold for administrative proceedings. Indeed, Professor Davis has said that the "central problem of res judicata in administrative law is to discover when or to what extent the traditional doctrine as developed in the judicial system should be applicable to administrative action."³ We have considered the problem in light of the guideline suggested by Davis and have concluded that a final rejection which has not been prosecuted to a final determination on appeal before the Patent Office Board of Appeals or a court should not be considered res judicata.

Of the factors which we have considered in arriving at this conclusion, one of the most significant has been the amazing diversity of opinion within the Patent Office itself. This circumstance would seem to indicate that there has been an utter lack of a uniform Patent Office policy with respect to the problem of res judicata.

For example, in Ex parte Buc, supra, the board had before it a fact situation nearly on all fours with the present case. The holding was that an examiner's final rejection would be considered res judicata. In so deciding, the board relied upon Lavin v. Pierotti, 129 F.2d 883, 29 CCPA 1235, and Whittier v. Borchardt, 154 F.2d 522, 33 CCPA 1023. Both of those cases involved interference proceedings and in both this court held that an examiner's final rejection was an act "judicial in character" and therefore should be considered res judicata.

However, in an opinion dated later than the Lavin case but earlier than the Whittier case, the board took a contrary position. Thus, in Ex parte Davidson, 58 USPQ 343 (P.O.B.A.1943), the board stated:

"The examiner has also rejected the claims on the ground of res adjudicata. * * *

"Appellant argues that he should not be refused the claims on appeal because of his failure to appeal from the final rejection in his earlier application. He points out that the course followed by applicant in this case is that recommended by Wolcott in the Manual of Patent Office Procedure which provided that in the case of continuation where an application has been prosecuted to a final rejection, an applicant may have recourse to filing a continuation in order to introduce into the case a new set of claims and to establish a right to further examination by the Primary Examiner. Appellant points out that the continuation application was filed before the time for appeal had expired for the purpose of putting the description and claims in accurate form. He cites a number of decisions, some by this Board, in which rejection on the ground of res adjudicata in similar circumstances has not been affirmed.

"It is considered unnecessary to discuss these decisions as it is apparent from the reference to the Manual of Patent Office Procedure that applicant\'s procedure is tolerated and this ground of rejection will not be affirmed."

The Davidson case was later cited with approval by the board, even in the interim between the Lavin and Whittier cases and the Buc case. See Ex parte Smith, 88 USPQ 121 (P.O.B.A.1950); Ex parte Turinsky, 100 USPQ 443 (P.O.B.A.1953).

In 1961, four years after the Buc decision, the board decided Ex parte Pfleger, 131 USPQ 439. In that case, certain claims of the appealed application were identical with claims which had appeared in a previous application and which had been finally rejected. Since no appeal had been taken from the earlier rejection, the examiner held the earlier rejection to be res judicata with respect to the claims in the later application, relying on the Lavin and Whittier cases. In reversing, the board said:

"We have considered the decisions referred to by the examiner, but are not convinced as to the applicability of the interparties situations there presented to the establishment of a precedent for the present ex parte action. It rather appears to be the policy of the Office to hold res judicata applicable as a ground of rejection where

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