Application of Szwarc

• Decision Date: 27 September 1963
• Docket Number: Patent Appeal No. 6462,7000.
• Citation: 319 F.2d 277
• Parties: Application of Michael Mojzesz SZWARC.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

319 F.2d 277 (1963)

Application of Michael Mojzesz SZWARC.

Patent Appeal Nos. 6462, 7000.

United States Court of Customs and Patent Appeals.

June 28, 1963.

Rehearing Denied September 27, 1963.

Cruzan Alexander, St. Paul, Minn. (James D. Stice, St. Paul, Minn., of counsel), for appellant.

Clarence W. Moore, Washington, D. C. (Joseph Schimmel, Washington, D. C., of counsel), for Commissioner of Patents.

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

SMITH, Judge.

Appellant has appealed the rejection of 3 product and 8 process claims in his application¹ for patent on certain polymers and processes for the production thereof. The rejection is based on appellant's British Patent which issued more than one year prior to the filing date of the appealed application. 35 U.S.C. § 102(b). The primary issue in this case arises under 35 U.S.C. § 120 and requires a determination of whether the present application is entitled to the benefit of the filing date of an earlier U.S. application² for patent filed by appellant, the filing date of which is early enough to avoid the statutory bar of 35 U.S.C. § 102(b).

History of Present Proceedings

The rather complicated fact situation presented by the two consolidated appeals may be summarized as follows:

"1. Appellant, Szwarc, on Sept. 19, 1947, filed a British application which relates to the same subject matter as the presently appealed application.

"2. A U.S. application, Ser. No. 48,339, identical with said British application, was filed on Sept. 8, 1948. (Hereafter termed the "parent" application).

"3. On Mar. 7, 1951 the reference British patent, No. 650,947, was issued on the said British application.

"4. The present application, Ser. No. 306,940, was filed on Aug. 28, 1952, as a `continuation-in-part\' of what appellant asserts to be his parent application, Ser. No. 48,339.

"5. Claims 42-47, 49, 50 and 52 of the `parent\' U.S. application, Ser. No. 48,339, were finally rejected by the examiner as `lacking utility\'. These claims were amended after final rejection in accordance with Rule 116 of the Rules of Practice of the U.S. Patent Office and became claims 54 (a process claim) and 55 (a product claim) which were appealed to the Board of Appeals.

"6. The Board of Appeals, relying upon our decision in In re Bremner et al., 182 F.2d 216, 37 CCPA 1032, affirmed the examiner\'s rejection of claims 54 and 55 of the `parent\' application.

"7. After the Board had affirmed the examiner\'s rejection of said claims 54 and 55, a civil action against the Commissioner under 35 U.S.C. § 145 was filed by Petrocarbon Ltd., the then assignee of appellant Szwarc. The District Court, D. C., in an unreported Memorandum Decision, ruled in favor of the Patent Office, Petrocarbon Ltd. v. Watson.

"8. The District Court\'s decision in Petrocarbon Ltd. v. Watson was affirmed by the Court of Appeals, D. C., 101 U.S.App. D.C. 214, 247 F.2d 800. (Certiorari denied, 355 U.S. 955, 78 S.Ct. 540, 2 L.Ed.2d 531; Petition for rehearing denied, 356 U.S. 978, 78 S.Ct. 1134, 2 L. Ed.2d 1146).

"9. The claims of the present application stand rejected under 35 U.S.C. § 102(b) as being barred by the said British Patent 650,947 issued to Szwarc more than a year prior to Aug. 28, 1952, the filing date of the presently appealed application. Benefit of the filing date of the `parent\' application under 35 U.S.C. § 120 was denied by the examiner, which action was affirmed by the Board of Appeals. In a decision upon reconsideration, the board held the decision in Petrocarbon Ltd. v. Watson to be res judicata on the question of whether the parent application disclosed the invention as required by the first paragraph of 35 U.S.C. § 112, and held that this prevented appellant from avoiding the present rejection by recourse to 35 U.S. C. § 120.

"10. In our initial consideration of this case, in Appeal No. PA 6462, we noted that while the appealed decision was based on res judicata, the record did not disclose the necessary identity or privity of parties between the present appellant Szwarc and Petrocarbon Ltd., the party in interest in the prior litigation. We therefore remanded the case to the Patent Office `for a factual determination as to the relationship, if any, between the parties involved in the Petrocarbon case and the party in interest here involved\'. In re Szwarc, 280 F.2d 436, 47 CCPA 1167.

"11. The Board of Appeals, in a decision dated Oct. 13, 1961, set forth facts of record in the Patent Office which it found sufficient to show identity or privity of the parties Szwarc and Petrocarbon Ltd. and denied appellant\'s requested remand to the primary examiner. Szwarc\'s Request for Reconsideration and his Petition to the Commissioner were both denied.

"12. The board decision dated Oct. 13, 1961 was appealed and became our Appeal No. PA 7000. We granted Szwarc\'s Petition for Rehearing in PA 6462 and both appeals were consolidated for reargument and decision."

PA 6462

The issue presented by PA 6462 is whether under 35 U.S.C. § 120 the present application is entitled to the benefit of the filing date of appellant's earlier U.S. application. It is the position of the board and solicitor that the decision in Petrocarbon Ltd. v. Watson, supra, is res judicata on this issue.

The Parties

The first requirement of res judicata is that the second suit must involve the same parties or their privies. Commissioner of Internal Revenue v. Sunnen, 333 U.S. 591, 68 S.Ct. 715, 92 L.Ed. 898. In the case at bar, we obviously do not have the same parties as those before the court in Petrocarbon Ltd. v. Watson, supra. Since the record in PA 6462 was silent as to any relationship establishing privity between the parties, we remanded the same to the board for a factual determination of the relationship upon which the finding of res judicata could properly be based. In re Szwarc, 280 F.2d 436, 47 CCPA 1167. While there still remains some doubt as to whether the information presented by the Board of Appeals on Remand sufficiently establishes privity of the parties,³ Petrocarbon Ltd. and Szwarc, which warrants application of res judicata, we need not here pass on this matter in view of the concession made at oral argument by appellant's attorney that the M. W. Kellogg Company was the party in interest in Petrocarbon Ltd. v. Watson, supra, and is the party in interest here.

The Issues

The second requirement of res judicata is identity of issues. If the second action between the same parties or privies is upon the same claim or demand, the judgment in the prior action operates as an absolute bar to relitigation not only of those matters actually determined in the prior suit but also any other matter which might have been acted upon in the prior suit. Cromwell v. County of Sac, 94 U.S. 351, 24 L.Ed. 195. This aspect of the doctrine of res judicata, sometimes called res judicata by bar or merger, differs from the second aspect of res judicata, estoppel by judgment. If the second action is upon a different claim or demand, an estoppel by judgment, more limited in its scope than res judicata by bar, operates as an estoppel only as to those matters upon which a determination or final verdict was actually rendered. Cromwell v. County of Sac, supra. Because the distinction between res judicata by bar and estoppel by judgment is often a source of confusion, the definitive statements of the Supreme Court in Commissioner v. Sunnen, supra, 333 U.S. at pages 597-598, 68 S.Ct. at page 719 are here quoted at some length:

"It is first necessary to understand something of the recognized meaning and scope of res judicata, a doctrine judicial in origin. The general rule of res judicata applies to repetitious suits involving the same cause of action. It rests upon considerations of economy of judicial time and public policy favoring the establishment of certainty in legal relations. The rule provides that when a court of competent jurisdiction has entered a final judgment on the merits of a cause of action, the parties to the suit and their privies are thereafter bound `not only as to every matter which was offered and received to sustain or defeat the claim or demand, but as to any other admissible matter which might have been offered for that purpose.\' * * *

"But where the second action between the same parties is upon a different cause or demand, the principle of res judicata is applied much more narrowly. In this situation, the judgment in the prior action operates as an estoppel, not as to matters which might have been litigated and determined, but `only as to those matters in issue or points controverted, upon the determination of which the finding or verdict was rendered.\' Cromwell v. County of Sac, supra, 94 U.S. 353. And see Russell v. Place, 94 U.S. 606 24 L.Ed. 214; Southern Pacific R. Co. v. United States, 168 U.S. 1, 48 18 S. Ct. 18, 42 L.Ed. 355; Mercoid Corp. v. Mid-Continent Inv. Co., 320 U.S. 661, 671 64 S.Ct. 268, 88 L.Ed. 376. Since the cause of action involved in the second proceeding is not swallowed by the judgment in the prior suit, the parties are free to litigate points which were not at issue in the first proceeding, even though such points might have been tendered and decided at that time. But matters which were actually litigated and determined in the first proceeding cannot later be retaliated. Once a party has fought out a matter in litigation with the other party, he cannot later renew that duel. In this sense, res judicata is usually and more accurately referred to as estoppel by judgment, or collateral estoppel. * * *"

Having in mind the above stated distinctions between res judicata by bar and estoppel by judgment or collateral estoppel and applying it to the present case, we find that the present record presents a different cause or demand than the cause or demand litigated in the Petrocarbon case.

As stated in the Memorandum Decision of the District Court in the Petrocarbon...