Stoudt v. Guggenheim, Appeal No. 81-510.

• Decision Date: 18 June 1981
• Docket Number: Appeal No. 81-510.
• Parties: Thomas H. STOUDT and Karl H. Nollstadt, Appellants, v. Bernhard GUGGENHEIM and Hans-Rudolf Muhlemann, Appellees.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

651 F.2d 760

Thomas H. STOUDT and Karl H. Nollstadt, Appellants, v. Bernhard GUGGENHEIM and Hans-Rudolf Muhlemann, Appellees.

Appeal No. 81-510.

United States Court of Customs and Patent Appeals.

June 18, 1981.

Frank M. Mahon, and Carroll G. Harper, (Lawrence A. Stahl, with him on brief) of Fitzpatrick, Cella, Harper & Scinto, New York City, for appellants.

James S. Waldron and Morris Fidelman, Washington, D. C., for appellees.

Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER, and NIES, Judges.

MARKEY, Chief Judge.

The Patent and Trademark Office Board of Patent Interferences (board) awarded priority of the contested count to Bernhard Guggenheim and Hans-Rudolf Muhlemann (Guggenheim), the junior party, on the ground that Thomas H. Stoudt and Karl H. Nollstadt (Stoudt), the senior party, was estopped to contest the priority of the subject matter of the count. We reverse and remand.

Background

The Previous Interference

In an interference involving the same applications, priority was awarded to Guggenheim for the invention defined by these counts:

1. An enzyme capable of hydrolyzing a streptococci-derived dental plaque glucan having a majority of -(1 3) glucosidic bonds.

2. A dental treating composition comprising a dental treating carrier and an effective amount of an enzyme capable of hydrolyzing a streptococci-derived dental plaque glucan having a majority of -(1 3) glucosidic bonds.

During the motion period in that interference, Stoudt moved under Rule 231¹ to add a further count which corresponds exactly to the count now before us:²

A dental treating composition comprising a dental treating carrier, dextranase and an effective amount of an enzyme capable of hydrolyzing a streptococci-derived dental plaque glucan having a majority of -(1 3) glucosidic bonds.

The proposed count thus differed from count 2 of the earlier interference only in the inclusion of dextranase in the carrier composition.

In his motion, Stoudt explained that the proposed count was necessary to draw into interference further subject matter common to the applications of both parties. In support of his assertion of patentability of the proposed count, Stoudt referred to this portion of section 1105.03 of the Manual of Patent Examining Procedure (MPEP):³

A good test to apply is whether different proofs may be required to prove priority as, for example, in the case of a generic original count and a proposed count to a species, or vice versa. If the answer is affirmative, the motion to add the proposed count should be granted....

Stoudt then noted that different priority proofs would be required, because the composition of the proposed count comprised three elements and the composition of count 2 comprised only two. Stoudt argued that the subject matter of the proposed count was thus materially different from that of count 2.

The interference examiner denied Stoudt's motion to add on the ground that the proposed count was not patentably distinct from count 2.

The examiner granted Guggenheim's motion to obtain the benefit under 35 U.S.C. § 119 of the filing date of a British provisional specification with respect to counts 1 and 2, and declared Guggenheim the senior party. Stoudt petitioned the Commissioner from the denial of his motion to add and also from the granting of Guggenheim's motion for benefit of the British provisional specification. That petition was denied. Subsequently Stoudt filed an abandonment of contest and the interference was dissolved.

The Present Interference

Stoudt then amended his application to include the proposed count as a claim and submitted an affidavit under Rule 132⁴ with accompanying experimental data purporting to show that the subject matter of the claim was patentably distinct from count 2 of the interference. That affidavit described the results of experiments which showed that the plaque-dispersing effect of the enzyme composition containing both dextranase and cariogenanase was far greater than would have been anticipated from the activity of the individual enzymes dextranase and cariogenanase.⁵ The patent examiner agreed that the claim was patentably distinct and caused the present interference to be declared.

During the motion period of the present interference, Guggenheim moved to dissolve on grounds that: (1) the count is not patentable to Stoudt because it is not patentably distinct from the issue of the earlier interference between the parties, and (2) Stoudt is barred under the doctrine of res judicata.

Guggenheim's position that the count is not patentably distinct from the issue of the earlier interference is based, in part, on a contention that Stoudt's failure to present evidence of unobviousness in the combination of enzymes during the earlier interference estopped Stoudt from denying at least the prima facie obviousness of the count.

The interference examiner denied Guggenheim's motions, noting:

As to 1) supra, Guggenheim takes the position that the present count is not patentably distinct from the issue in the prior interference, and since Stoudt failed to present evidence of synergism in the combination of enzymes in said prior interference then Stoudt is now estopped to deny at least the prima facie obviousness of the present count. The examiner knows of no estoppel in this situation. 37 C.F.R. 1.257(b) does not require any more of the junior party than to move in the previous interference. This Stoudt has done....

As to 2) supra, Guggenheim takes the position that since a count corresponding to the instant count was raised and decided in the prior interference not to be patentably distinct from the count then in issue, that Stoudt is barred from again asserting the patentability of the count in this interference. The examiner does not believe that the doctrine of res judicata should apply in this situation and that it is in the best interest to go forward with the interference.

That examiner also denied Guggenheim's motion for benefit under 35 U.S.C. § 119 because the British application contained no support for the proposed count and thus failed to meet the requirements of 35 U.S.C. § 112.

The board, however, awarded priority to Guggenheim. In its accompanying opinion, the board initially noted its jurisdiction under Rule 258(a)⁶ to review questions of res judicata and estoppel as matters considered ancillary to priority.

The board reasoned that the doctrine of res judicata can apply only where the same cause of action was determined on its merits in the previous proceeding. Because the board could not say the examiner's finding of patentable distinctness was clear error, the board said it was constrained to hold that the "classical" theory of res judicata did not preclude Stoudt from pursuing priority with respect to the present count.

The board went on, however, citing In re Pritchard, 59 CCPA 1284, 463 F.2d 1359, 175 USPQ 17 (1972), to describe more general principles of estoppel, which it felt required the presentation of all available evidence with the motion during the earlier interference.

The board's "estoppel" view was based on Rule 231(b), and its perceived purpose to insure the resolution of priority in a single contest respecting all common subject matter disclosed by the parties. Citing a need to prevent presentation of nominal and inadequate motions, the board held Stoudt estopped from pursuing priority on the present count by his failure to "properly" move during the pendency of the earlier interference, that is, by his failure to introduce his affidavit evidence at that time.

Priority of invention of the subject matter of the count was then awarded to Guggenheim, the junior party.

Issue

The issue presented is whether a party who moved unsuccessfully to add a count in an interference, and subsequently obtained ex parte allowance of a corresponding claim on evidence not presented during that interference, is estopped from contesting priority on such count in a second interference.

OPINION

The parties agree that Rule 231 defines the duty of a party seeking to amend counts in an interference, and that Rule 231 does not explicitly require introduction of evidence in support of a motion to add. Though nothing precludes an offer of such evidence, a requirement that it be offered, carried to its logical extreme would shift the evidentiary period to an earlier stage. Discovery and oral argument being unavailable during the motion period, few evidentiary safeguards would exist at that time. We see no reason to judicially expand the scope of the motion period by requiring the submission of evidence with motions to add.

Guggenheim says the board has not "created" any new form of estoppel at all, but rather has applied one established form of res judicata, because Stoudt's motion under Rule 231 was insubstantial, legally incomplete, and insufficient to preserve the issue of the patentable distinctness of the present count. We do not agree.

This court has broadly applied principles of res judicata to final decisions of the Patent and Trademark Office, Lavin v. Pierotti, 29 CCPA 1235 (Patents), 129 F.2d 883, 54 USPQ 400 (1942), to interlocutory decisions of that Office, Winkelmann v. Calvert, 33 CCPA 1206, 154 F.2d 1012, 69 USPQ 406 (1946), and even where, as here, a prior interference has been terminated by dissolution, See Avery v. Chase, 26 CCPA 823, 101 F.2d 205, 40 USPQ 343 (1939).⁷ No basis appears for such application to the facts of the present case.

Where the prior judgment between the same parties is not strictly res judicata because it resolves a different and distinct issue e. g., a patentably distinct count, that judgment may nonetheless create an estoppel as to matters actually in issue or points controverted. United States v. Silliman, 167 F.2d 607 (CA 3 1948), cert. denied, 335 U.S. 825, 69 S.Ct. 48, 93 L.Ed. 379 (1948); 1B Moore's Federal Practice ¶ 0.4051, at 622-624 (2d ed. 1974).

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