Full opinion text
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 application 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,* 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. § 103, 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, 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. 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. 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 authorized 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. . Serial No. 223,816, filed September 14, 1962. . This court issued its final order to the Patent Office on November 2, 1962. . “In view of the difference of kind disclosed in the affidavit,” said the examiner, “the rejection predicated upon the Herr and Sondheimer et al references is no longer applicable.” The board agreed: * * * In essence, appellant urges that he has a new application which entitles him to a new adjudication of the patentability of the appealed claims, including consideration of the evidence previously refused consideration in his parent application. Upon such new* adjudication, the appealed claims must be found patentable over the art, the Examiner having withdrawn the references. (Emphasis supplied.) . Numerous decisions are cited, pro and con, involving the doctrine of res judicata, a creature of the courts, not of Congress. AVe have examined them all, including In re Szwarc, 319 F.2d 277, 50 CCPA 1571, so heavily relied on by the solicitor, without finding any one so directly in point with the facts here as to be controlling. The board, while regarding In re Lundberg, 280 F.2d 865, 47 COPA 1140, as “most authoritative ancl best express [ing] the principles which should guide us,” found no case expressly in point, stating: Factually, the Gustavson et al. [14 USPQ 332] and Schott [136 USPQ 383] cases, supra, cited by appellant, and the Ittner [85 USPQ 24] and Prutton [40 CCPA 975, 204 F.2d 291, 97 USPQ 447] cases, supra, included in our list, come closest to the facts of the present case, although none is identical in every respect. In these cases, new evidence was introduced in the second proceeding to support the' patentability of the appealed claims. In the two cases relied upon by appellant, the rejection was reversed; in the other two cases, the rejection was affirmed. (Emphasis supplied.) We note that the board, sitting en banc, declined to follow Schott in Ex Parte Budde, 150 USPQ 469. . We note the somewhat irreconcilable provisions of The Manual of Patent Examining Procedure, § 706.03 (w), as applied to the facts hero: A prior adjudication against the inventor on the same or similar claims constitutes a proper ground of rejection as res judicata. Where a different question of patentability is presented the rejection of res judicata does not apply. It should be readily apparent that the mere fact the present claims are identical to those sought to be patented earlier is not, of itself, necessarily determinative of whether the same issue, cause of action, or “question of patentability” is involved in the two proceedings. . Theories and assumptions of what appellant might have done before appealing to this court are not for us to pass on. Our concern is with what he actually has done in seeking to establish and protect his rights. The Patent Office has not challenged appellant’s right to proceed as he has. . See, for example, 35 U.S.O. § 120.
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). 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 Lxtndberg 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 at the evidence, and has decided that the claimed compounds are not obvious. The Patent Office has already reviewed the question of patentability on the merits but, having done so, says its former stand, now changed, must be adhered to only because decisions of this court compel it. On this second application, the Patent Office has been entirely satisfied that Herr is entitled to his patent under the patent statute but takes the position that this court says he must not have it. I find nothing in Lundberg to compel such an anomalous result. I do not mean to imply that the fact the Patent Office has already considered the merits of the rejection has anything to do with our decision here. I shall discuss later its obligation to do so. In re Prutton, the other case principally relied on below and in the dissent, was cited in Lundberg. The question in Prutton was whether the issue was the same as the issue passed on by the Court of Appeals for the District of Columbia on a parent application, of which the application on appeal was a continuation-in-part. As Judge Almond’s dissenting opinion tends to indicate, the facts in Prutton are much closer to those here than the facts of Lundberg. As here, on the second application the board accepted affidavit evidence not before it on the first application and reversed a rejection on a reference while sustaining the res judicata rejection. This court approved. The Prutton opinion, citing a number of cases, seems to derive from them a rule, which it followed, to the effect that the claims of the second application must be “patentably different” from the claims previously adjudicated in order to avoid a holding of res judicata. It then embarked on a determination of whether the claims were patentably different and, finding they were not, affirmed the res judicata rejection, notwithstanding the opinion of the board that the claims were patentable over the reference. I cannot clearly distinguish Prutton from this case and therefore I have great sympathy with the view of the board that it dictates an affirmance. I likewise necessarily sympathize with the dissent. My position on Prutton, after giving it and the precedents it relies on in turn careful study, is that it reached the wrong conclusion and should be overruled. In my opinion, at least with respect to the reference the board found to be overcome by the affidavit evidence on the new application, a new issue of patentability was presented and a decision thereon in applicant’s favor would not “nullify the decision of the Court of Appeals in the earlier case.” That court had a different issue before it, a different patentability problem. As the opinion of the board here, with its reference to many cases pro and con, and any independent examination of the question, will amply demonstrate, the past history of res judicata in ex parte Patent Office cases is a history of inconsistency. The Fourth Edition of Mc-Crady’s Patent Office Practice deals with the subject in Sec. 138, amply footnoted with citations, the general tenor of which is that the Patent Office may or may not apply res judicata in any given situation, prefacing the discussion with the statement that The Patent Office is not a “court”, and because it is not a court it cannot render a “judgment”, hence its decisions or other actions cannot give rise to “res judicata” in the strict legal sense of that term. There next follows a quotation from one of the earliest cases in the field, Barratt v. Duell, 14 App.D.C. 255, 1899 C.D. 320 (cited by Judge Almond as “In re Barratt’s Appeal”) which set at an early date the noncommittal tone of the subsequent accumulated decisions on this subject. Therein the court concluded by saying: 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, and that, if it refuses to entertain them, it has a perfect legal right so to do. [Emphasis added.] I suggest, in passing, that the statement is meaningless unless taken to mean that on a new application the Office need not reconsider on the merits the same arguments previously made on an earlier application since I know of no way in which it can refuse to “entertain and adjudicate” any complete application filed with the prescribed fee. It is necessary, even to arrive at a res judicata rejection, to “entertain” an application and consider it to the extent of carefully determining its relation to the previous application. By the time an examiner has finished consideration of this point, as illustrated by what happened in both this case and Prutton, he may very well be in a position to say that on the record the claims are patentable under the statute and that he would allow them but for decisions of the court that he should apply “res judicata” to deny them. Res judicata is a judicial doctrine the purpose of which is to settle disputes and put an end to litigation, enforcing ultimate repose. This is a matter of public policy, and a good one when applied to the situations for which it was designed. But the ex parte prosecution of patent applications cannot properly be characterized as either dispute or litigation. Moreover, there is another public interest to be considered, inherent in the patent laws, which is to bring patentable inventions into the open through granting patents on them. And in addition to the technological disclosure aspect of the patent grant is the further service to the public it performs in providing an incentive to commercialize the invention, thereby giving the public not only knowledge but usable commodities. Society stands to lose when a patent is refused on an invention patentable under the statute. This patenting process has little in common with the settlement of disputes between wrangling private parties and certainly its object is not to bring about peaceful repose in society. Its object is, on the contrary, to produce industrial and economic ferment and to goad inventors and entrepreneurs into activity through basic psychological appeals to self-interest. The public interest calls for the grant of patents on every invention patentable according to the tests laid down in the patent statutes. The Patent Office has ruled that such an invention is present here and has raised only the legal theory of res judicata as an obstacle to its patenting. In doing so I think it misapplies the theory. The Prutton opinion rests on the following precedents as authority, which I list and shall discuss in chronological order: Blackford v. Wilder, 28 App.D.C. 535, 1907 C.D. 491; In re Edison, 30 App.D.C. 321, 1908 C.D. 327; In re Ellis, 24 CCPA 759, 86 F.2d 412, 31 USPQ 380 (1936); and Hemphill Co. v. Coe, 74 App.D.C. 123, 121 F.2d 897. Citing Ellis three times, Hemphill twice, and the others once, the court appears to derive its “patentably different” rule merely from certain words in those opinions without too much thought for their context, a rule clearly in conflict with the result we now reach. Since Barratt v. Duell, supra, is referred to in each of the above cases except Ellis, and in Judge Almond’s dissent, I will first comment on it. Barratt was a case in the Court of Appeals for the District of Columbia in 1899 when that court was the sole reviewing court for the Patent Office. The same court had previously considered an earlier application on the same invention. Barratt v. Seymour, 11 App.D.C. 177, 1897 C.D. 506. In that first case the court’s opinion had suggested that the applicant file a bill in equity under R.S. 4915, a procedure then permitted even after appeal. Instead, he filed a new application “for the same subject matter * * * with more full and ample specifications and drawings, a more thorough showing of the prior condition of the art, and evidence bearing on the patentability of the alleged invention.” The Commissioner rejected on the ground of “res adjudicata” by reason of the court decision and also for “want of patentable novelty.” The court affirmed. The court’s inconclusive view of the binding effect of its prior decision has been quoted above. What seems to impress the author of the dissenting opinion here is the series of questions the court asked itself: * * * after exhaustion of the manifold right of appeal allowed to him by the great liberality of the patent laws [there were more appeals then than now], why should a second application be allowed or entertained ? [2] Is there any reason why the determination of the matter should not be regarded as conclusive? [3] If a second application could be regarded as proper, why not ten or twenty successive applications? [4] Where are the applications to stop, and what would become of the public business, if it were in the power of one person to obstruct the operations of the Patent Office by repeated and persistent applications ? These questions answer themselves. Far from being an able expression of the public policy considerations which should apply, this impresses me as a burst of rhetoric considerably removed from reality. Answering these questions in sequence, [1] Allowing and entertaining an application must be distinguished. The Patent Office has to entertain every application. Allowance depends on compliance with the statutory prerequisites. The second application may comply whereas the first did not. If I apply for a driver’s license, I have to pass eye and driving tests. I may fail. If I come back with glasses and the requisite skill, should my new application be entertained and allowed? Or am I forever barred because I appealed the first denial? [2] Yes, there is every reason why the first determination should not be conclusive. The applicant may be bringing the required statutory quid pro quo which he did not bring before. [3] Why not ten or twenty? To be realistic, why not two or three? Is this not authorized practice? [4] The applications will stop when the application offers nothing new and the applicant is merely repeating himself, whereupon the Office will be justified in merely denying them for the same reasons as previously stated. No applicant will keep this up very long. As for what will become of the public business, one applicant filing a new application every year or two, out of 90,000 a year, will not much impede the business of the Office, especially when the examiner need not make a new search. These seem to me to be the answers to the court’s questions in Barratt and I do not find much support in them for application of res judicata. It seems to me a proper function of the Patent Office to send applicants away patentless until they have learned what they must do to comply with the law. They do not always know. It is sometimes unclear. The law has a way of changing. Ex parte Budde, supra, Brenner v. Manson, 383 U.S. 519, 86 S.Ct. 1033, 16 L.Ed.2d 69. There is no law to prevent filing applications and every application filed is required by law to be examined. 35 U.S.C. § 131. What is there to be gained by telling an examiner- — who has perhaps not been to law school — to reject a second application which is not materially different from one previously rejected, whether or not appealed, for “res judicata” instead of for the same reasons applied in the first case, whatever they may have been? See 35 U.S.C. § 132. Apparently the Patent Office has never made up its mind on this point. Compare MPEP 201.07, 201.11, and 706.03 (w). If the same reasons do not apply because the situation is different in some legally critical way, perhaps the application should be allowed. The matter is not one which can be suitably controlled by a single general rule, such as “patentably different” claims, whatever that means. Blackford v. Wilder was an interference, an inter partes dispute over priority. So was another case decided by the same court shortly thereafter, Horine v. Wende, 29 App.D.C. 415, 1907 C.D. 615. That there is an essential difference between ex parte and inter partes cases with respect to res judicata in the Patent Office was long ago recognized. Emerson Stringham in “Patent Office Rejections as Res Judicata,” 9 JPOS 399 (1927), said: It will be appreciated that these two questions are entirely distinct. An interference proceeding has determined for at least some purposes the rights of two parties who have in effect been involved in litigation with each other. The question of whether to reopen a decision that has been made in a contest between private parties is altogether different from the question of the extent to which an applicant for a patent should be regarded as having lost his right to a patent, because he discontinued his efforts to obtain a patent in ex parte proceedings. In Horine the court, in applying the “principle of estoppel by former adjudication” said (emphasis mine) it was “equally applicable to proceedings of a judicial nature in the Patent Office.” An interference is of such a nature. What is said in opinions in such cases should not be applied unthinkingly to ex parte cases. In re Edison, decided within two years after the Blackford and Horine cases in the same court, was an ex parte ease involving a second application containing claims at least some of which the Patent Office had held differed only in scope from claims of the earlier application which had been appealed twice to the Examiners-in-Chief and the Commissioner, as was then permitted. The second application had of course been through the same two appeals before reaching the court and had been rejected both for res judicata and unpatentability over the prior art. The court affirmed the former rejection, citing Barratt, Blackford, and Horine, saying “any changes merely broadening claims that have been once determined, do not affect the conclusiveness of the former adjudication.” Apparently there was no change other than the changes in the claims. The case resembles Lundberg. There was no apparent reason for a different decision than on the first application. In re Ellis does not clearly indicate the legal basis of the affirmance. The claims stood rejected as unpatentable “over subject matter held unpatentable in the abandoned application” of the appellant, prosecuted through the Patent Office, an action under R.S. § 4915 having been commenced but dropped. Referring to the board decision on the abandoned case, the court said “as to all subject matter actually contained in any of its claims, * * * appellant is bound thereby,” citing In re Becker, 74 F.2d 306, 22 CCPA 843, (1934). The latter case involved res judicata as to some claims, the court, in affirming relying on Barratt, Edison, and in addition an inter partes trademark cancellation case. At the same time, the case was before the court on a rejection based on the same references used in the former case and the claims in question were substantially the same. The court in Ellis also cited In re Cole, 82 F.2d 405, 23 CCPA 1057, which was not a res judicata situation but a rejection on counts of a dissolved interference and prior art. At best, Ellis is a somewhat ambiguous precedent. Hemphill v. Coe was first adjudicated in this court under the name In re Lawson, 70 F.2d 373, 21 CCPA 1091, one holding of the court being that the disclosure in the parent application was inoperative. A second application was filed but was subject to an intervening bar by public use unless the filing date of the parent was available. In considering the new rejection of the second application on the public use bar, the Court of Appeals for the District of Columbia refused to reconsider the question of inoperativeness which had been decided by this court, a question which related, of course, to the identical application on which this court had ruled. In effect, its decision was to accept as final the decision of this court on the inadequacy of the parent application as a disclosure. This seems to be a proper and reasonable application of res judicata principles having little or no bearing on an issue of patentability resting on the adequacy of the later application. Having reviewed the precedents relied on in Prutton and returning to the decision in that case, it does not seem to me that the precedents support the test there applied of “patentably different” claims or the refusal to accept the finding of the board on new evidence that the claimed invention was a statutorily patentable invention. On policy and sound reasoning, I consider the result in Prutton to have been erroneous, putting aside, of course, the rejections on references which were not passed upon. I would overrule it and I consider that the majority decision here implicitly does so. There are other decisions with which Judge Smith is dealing in his concurring opinion and which I therefore am not discussing, being content to express agreement with his views. “A person shall be entitled to a patent unless * * *.” So begins 35 U.S.C. § 102 wherein certain statutory conditions for patentability are recited. Similarly, section 101 says that “Whoever invents or discovers” certain kinds of inventions “may obtain a patent therefor, subject to the conditions and requirements of this title.” An applicant for patent is entitled to a patent as a matter of statutory right when he meets the “requirements and conditions.” Chapter 11 of Title 35 states how application for patent shall be made and chapter 12 opens with section 131 which says: The Commissioner shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Commissioner shall issue a patent therefor. [Emphasis added.] Sections 120 and 121 expressly recognize the long-standing practice of filing successive applications. Since every application has to be examined anyway, it does not seem that the doctrine of res judicata or the principles which underlie it have much practical application to ex parte practice in the Patent Office. The dissent herein suggests there is some significance to the fact that appeals have been taken outside the Patent Office to “a Federal appellate tribunal,” seeming to concede that below this level or prior to taking such appeal a different situation may prevail. I am unable to see significance in this distinction. If an applicant is entitled to the examination of a new application, as he certainly is under the statute, it seems to me he is entitled to the concomitant rights of review which go with it. It must be remembered that we have a limited jurisdiction. We never decide the right to a patent. All we decide is whether a particular rejection was right or wrong. Our decision governs “further proceedings in the case.” 35 U.S.C. § 144. In re Johnsen, 359 F.2d 905, 53 CCPA 1401. We cannot tell the Commissioner to issue a patent. Similarly, the courts of the District of Columbia, under 35 U.S.C. § 145, when they disagree with the rejection, can do no more than “authorize the Commissioner to issue such patent on compliance with the requirements of law.” (My emphasis.) They cannot compel him to issue it and they do not direct him to. After a judgment authorizing grant, he may refuse it for new reasons, and sometimes does. Decisions on either type of review do not, therefore, finally settle the right to a patent so far as the Patent Office is concerned. So why should they settle it so far as the applicant is concerned ? To summarize my views on the applicability of res judicata principles to ex parte patent prosecution, hoping thereby to reduce some of the inconsistencies, I do not regard the principles as wholly inapplicable. Where an appellate court has decided a specific question, for example that the disclosure of an application is inoperative as in Hemphill v. Coe and In re Lawson, or that claims are not supported by the disclosure of an application within the meaning of 35 U.S.C. § 112, as was the case with product claims 36, 38, and 39 in In re Szwarc discussed in Judge Smith’s opinion, the doctrine of collateral estoppel should normally prevent relitigation of that issue. The broader, all-inclusive issue of the patentability of claims, however, depends on numerous factors which may be found in the words of the claims themselves, in the disclosures of the specification, in extraneous evidence, in factors relating to the admissibility of evidence, and possibily elsewhere. A change in any one of these considerations may make the difference between patent-ability and unpatentability and no simple general rule, such as whether the claims alone are “patentably different,” can be controlling. Res judicata is not the simple principle it may appear to be on first acquaintance and was devised in connection with the litigation of disputes, not with respect to the application for government grant of statutory rights dependent for issuance on compliance with stated conditions. The several policies which underlie it such as putting an end to controversy, conserving the time of the courts, avoiding inconsistent decisions, and encouraging the making of the best case the first time, must be balanced against the policies underlying the patent laws, particularly bringing about the disclosure of technology in issued patents and encouraging the investment of risk capital by granting patent rights, whenever inventions patentable under the statutes are presented. It is not in the public interest to prevent the issuance of patents on such inventions. In the administrative process of patent granting, including appellate review of rejections, estoppel by prior judgment should be applied only in the clearest cases of attempted reargument of previously decided issues. I vote to reverse in the present case because the issue here is different from that decided on the prior application. . Thirteen members of the board participated, lacking but one member who disqualified himself. Three opinions were written, the two members who had been on the board deciding Ex parte Schott, 136 USPQ 383, disagreeing with the repudiation of that case by the majority. A third member appears to have felt that Schott should have been distinguished on its facts. . There were two additional rejections on sejiarate prior art references, besides the one the board reversed, which the court did not reach because of its affirmance of the res judicata rejection. . In this connection I cannot refrain from commenting on the following incredible passage at the end of the solicitor’s brief: At the present time no Patent exists on the claimed compounds. If appellant obtains the relief he seeks, namely a patent on those compounds, the public right to be free of the patent monopoly is surely impaired. [Emphasis added.] The public has no right to be free of a patent monopoly on the compounds unless it has a right to the compounds. The determination of the Patent Office in this very case that they are patentable, in the absence of a holding of res judicata, is proof enough that the public has no right to them, that they are not in the public domain. Why, then, has the public a “right to be free of the patent monopoly” ? If the solicitor means that res judicata' gives the public the right to them, then he is assuming the very point he is trying to prove.
SMITH, Judge (concurring). The opinion written by the Chief Judge reaches a result with which I am in full accord. Since the decision in the present case will materially affect future rejections predicated on res judicata, it seems desirable to amplify the statement of facts on which the present decision is predicated and to add some additional observations as to rationale which should govern its application in administrative proceedings. The Facts Here do not Warrant the Application of Res Judicata The pertinent facts of record may be briefly summarized. Appellant Herr filed application No. 583,923 on May 10, 1956, as a division of a parent application which had been filed' August 8, 1955. The rejection of claims in the divisional application was affirmed in our prior decisions, In re Herr, 304 F.2d 905, 907, 50 CCPA 705. The issue before us in this decision arose from the examiner’s rejection of all claims as being “unpatentable over” a patent to Herr and Heyl, No. 2,769,019, filed July 9, 1953 and issued on October 30, 1956. The examiner stated, “in view of the absence of a showing of unexpected results the action is made FINAL.” Thereafter appellant appealed the rejection and filed an affidavit of one Stafford allegedly-demonstrating unexpected results. Following receipt of the affidavit, the examiner, by letter of August 1,1958, advised the case was “in condition for allowance.” The pending appeal was dismissed by order of the board but applicant was advised that “the case cannot be passed to issue due to a possible interference.” Interference No. 89,720 was declared which was later resolved in favor of appellant. Following resumption of ex parte prosecution, the examiner, by letter of December 28, 1959, rejected the claims “as lacking invention over Herr.” The previous allowance over Herr was said to be “improper and inadvertent.” At this time the examiner took the position that the previous affidavit “cannot be accepted.” On March 16, 1960, the examiner made the rejection final, and stated that the specification does not “provide a clear unequivocal disclosure that the compounds originally claimed are anabolic agents.” Appellant appealed. Appellant petitioned the board for an early hearing pointing out that the only objection to the appealed claims was based on Herr, the single reference cited in the first office action of January 24, 1957. Appellant pointed out that after once successfully removing any objection based on Herr and also succeeding in an interference, he now finds himself returned to the same position he once occupied over 3 years previously, namely, the rejection made in the first office action. .Appellant pointed out that during the interim certain of the appealed claims were relevant to two pending interferences. Appellant stated: * * * The picture as a whole is one in which applicant’s rights will be irreparably damaged unless an early decision is rendered by the Board of Appeals in this application. Moreover, the general public will suffer irreparably if patents are issued to others or delayed to applicant because of the patent confusion which is bound to result if the patentability of the claims in this case is not determined promptly. The arguments before the board may be summarized as follows. The examiner argued: * * * In the absence of a showing of both new and unexpected results the instant claims are not seen to define patentably over the present state of the art. See In re Hass, 1944 C.D. 242. The affidavit submitted under Rule 132 filed May 1, 1958, (Paper No. 6) is not seen to overcome the rejection because it disclosed a utility for the compounds which is not alleged within the specification. * * * Appellant argued: The reason for the incorrect position of the Patent Office is not known. * * * The statement of usefulness as “novel androgens and anabolic agents” is clearly directed to the compounds claimed in this application. The fact that it also applies to the compounds claimed in the parent application is immaterial. The statement is certainly not exhausted merely because it applies to two different individual products, both disclosed in the same case as novel compounds. The board affirmed the examiner’s rejection and its opinion is adequately discussed in our previous opinion, supra. In our opinion, three judges joining, the issue was stated to be one of obviousness under 103. In resolving this issue, we considered the Patent Office’s argument that the structure of the claimed compounds was obvious in view of the prior art. Appellant argued that the claimed compounds were not obvious in view of the prior art when their properties were considered. We did not consider appellant’s argument as we determined that the specification did not teach one of ordinary skill in the art that the claimed compounds possessed oral anabolic and androgenic activity. We concluded, in view of the fact that testosterone and 17-methyltestosterone were known “standards,” that the 17 methyl derivative of Herr would have been an “obvious structural change to a chemist of ordinary skill in that field.” Our opinion appears to proceed on the basis that the chemical compounds in issue may be “prima facie” obvious from a consideration of their structure and the structure of prior art compounds. It has been said that where the claimed •compounds are “prima facie” obvious it is “incumbent” upon the applicant to submit evidence of an “unexpected” property or result, see, e. g., In re Heyna, 360 F.2d 222, 53 CCPA 1331. The inquiry under section 103 requires*, however, a consideration of the claimed invention as a whole. A property of or a result attained by a chemical compound which is not communicated by its chemical structure, may be persuasive of either non-obviousness or obviousness. Thus, properties and results are factual evidence concerning the invention which must be considered in resolving the issues arising under section 103. The invention is not simply the chemical structure. To support a section 103 rejection the public must be shown to be in constructive possession of the invention by evidence that the invention would be obvious to one of ordinary skill in the art. Thus the inventor who discovers a chemical compound, albeit closely related structurally to the prior art compounds, which possesses unexpected properties or attains unexpected results may have made a patentable invention. Our previous decision held that the specification considered there did not teach one of ordinary skill in the art that the claimed compounds possessed the properties relied on by appellant. These facts which appellant sought to supply by affidavit, and the issue arising thereunder, were therefore not properly before us for consideration in our previous inquiry. In the present appeal a basis has been laid and the facts are properly before us as evidence to be considered in resolving the issue under section 103. In addition, the present record shows the Patent Office agrees that the claimed compounds are new and unobvious. The board, however, affirmed the examiner’s rejection of the appealed claims “on the grounds of res judicata.” The claims presented here are identical to those before us in our previous opinion. The board was apparently of the view that presenting the same claims was per se conclusive of the applicability of res judicata. The board in its opinion reasoned in part as follows: * * * it is impossible for appellant to argue any unobvious difference in the claims. The identical claims do not acquire a different meaning or scope merely because the new application contains additional disclosure of properties and utility. * ***** * * * * insofar as appellant now relies upon the newly disclosed androgenic and anabolic activity and utility, he must appropriately restrict himself, as by the presentation of claims in method of use form, if he wishes to argue that he has now made a new contribution which is not subject to res judicata. We repeat, appellant’s problem is created by his determination to obtain claims of the identical meaning and scope as the claims of his parent application, albeit the disclosures of the two applications are not identical. In the sense that the claims are identical and therefore define the same compound, they do not “acquire a different meaning” or “scope.” However, I fail to appreciate the significance of the board’s reasoning in view of the inquiry required under section 103. Chemical compounds may be “claimed,” that is, defined, by a recitation of formula, structure, properties, or the process of making the compound. Had appellant chosen to “claim” his invention by reciting properties or utilizing a product-by-process claim, instead of relying on the same claim, it could not be maintained that these claims did not take on a “different meaning” as they would define subject matter which is admittedly unobvious in view of the prior art. Appellant would appear to avoid the reasoning of the board by merely utilizing a different form of claim. It does not seem to me that the form of claim used is either relevant or controlling. The subject matter sought to be patented, the invention, must be considered, not the form of claim utilized. The board was also of the opinion that appellant should restrict himself to “claims in method of use form.” From this statement I assume the board intended that appellant claim a process of using the claimed products, section 100 (b). This type of reasoning was presented in In re Papesch, 315 F.2d 381, 50 CCPA 1084. Therein the examiner reasoned, “The obvious compound is not made less obvious by its properties in an art use. * * * It appears that if * * * [a patentable] invention is present, it resides in the use of the claimed compounds as anti-inflammatory agents and should be claimed as such.” 315 F.2d at 384, 50 CCPA at 1088. We disagree with this reasoning. We quoted the following, 315 F.2d at 389, 50 CCPA at 1095, from In re Larsen, 292 F.2d 531, 49 CCPA 711: -» * * ^he allowance of the claims to the compounds was based on the fact that they possessed unique, and presumably unexpected, properties. Since there was nothing to indicate that the compounds, when made, would have these properties, it was not obvious to make the compounds. In such a case the allowance of claims to the compounds must depend on the proposition that it was unobvious to conceive the idea of producing them, within the meaning of Title 35 U.S.C. § 103. [Emphasis added.] As to “structural obviousness” the opinion in Papesch quotes the following, 315 F.2d at 390, 50 CCPA at 1096, from In re Lambooy, 300 F.2d 950, 49 CCPA 985: A comparison of the structural formulas of these two compounds shows clearly that there is substantial structural similarity. But more appears from the facts of this case than structural similarity, facts which raise genuine question as to the real significance of such bare structural similarity, whatever label may be attached to it. * * * There is no evidence in the record which would lead one skilled in this art to expect that the differences in molecular structure between riboflavin and appellant’s compound would cause this difference in properties. In In re Petering, 301 F.2d 676, 683, 49 CCPA 993, 1002, we stated: •x- * * Although it is also true that some of the specific compounds of Karrer [the reference] * * * are structurally rather similar to the compounds defined in claims 5, 11 and 12, * * * there is a significant difference in properties between appellants’ compounds and Karrer’s compounds. [Emphasis added.] ^ S 44 4Í* # 44 We do not agree with the board that the unexpected properties of the compounds defined in claims 5, 11 and 12 should not be considered in determining the patentability of these claims. The compounds are not described in Karrer within the meaning of 35 U.S.C. § 102(b). In determining whether the claimed compounds are obvious within the meaning of 35 U.S.C. § 103, we think their properties may and should be considered, and having considered the properties, we are convinced the compounds * * * are patentable over Karrer. We concluded in Papesch, 315 F.2d at 390, 50 CCPA at 1097: From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing. The graphic formulae, and the chemical nomenclature, the systems of classification and study such as the concepts of homology, isomerism, etc., are mere symbols by which compounds can be identified, classified, and compared. But a formula is not a compound and while it may serve in a claim to identify what is being patented, as the metes and bounds of a deed identify a plot of land, the thing that is patented is not the formula but the compound identified by it. And the patentability of the thing does not depend on the similarity of its formula to that of another compound but of the similarity of the former compound to the latter. There is no basis in law for ignoring any property in making such a comparison. An assumed similarity based on a comparison of formulae must give way to evidence that the assumption is erroneous. It seems to me that the board here, in effect, but reargues the reasoning advanced and rejected in Papesch, namely, that unexpected properties of a chemical •compound should be claimed in the form of a process, see 315 F.2d 381, 50 CCPA at 1088. Whether appellant seeks a patent to new and unobvious compounds or to a new and unobvious process of using these compounds is irrelevant to the determination of whether the present rejection on res judicata is proper. Properties inhere in the compound as in Papesch and must be considered. The problem in applying res judicata to ex parte Patent Office proceedings has been considered by the Board of Appeals in several cases. Thus, in Ex parte Gustavson, 14 USPQ 332 (1932) the board overruled a rejection based on res judicata stating: We have considered our former decision and are of the opinion that these claims were not held unpatentable on their merits but on the ground that they were not supported by the original disclosure and further that certain affidavits which were relied on by the appellant did not establish comparative facts which would show wherein the construction by the rejected claims possessed certain advantages over the art cited as alleged in the arguments for their allowance. Appellant has now filed a new application Serial No. 502,-350, December 15, 1930, in which the construction claimed is adequately disclosed and has supported his contentions relative thereto by new affidavits, thus prima facie overcoming the grounds upon which the former decision was based. Under these conditions we are of the opinion that the rejection on the ground of res ad judicata should not be -insisted on. In Ex parte Jameson, 23 USPQ 179 (1934), the board considered a problem very analogous to that here before us. In resolving it, the board stated: After our decision in application No. 161,463, appellants filed the present application on appeal in which the specification was enlarged to describe the use of pectin and sugar and the value of such ingredients as incorporated with the fruit juice solids in the production of a powder was emphasized. We note that application No. 161,463 has become abandoned. We feel therefore that the question of res adjudicata as here raised is unwarranted inasmuch as the present application overcomes the lack of disclosure in the prior application and that our decision was rendered principally because of the lack of disclosure in the former application. In Ex parte Schott, 136 USPQ 383 (1962), claims to a new abacus useful as a calculating device were previously rejected under section 103. This rejection was affirmed on appeal. Appellant filed a second application with claims to a new abacus useful as a teaching device for small children learning the decimal system. These claims were also rejected under section 103. After comparing the claims the board’s conclusion was “that the two claims define precisely the same structure, although using somewhat different verbiage.” 136 USPQ at 385. The examiner was of the view that the obviousness of the claimed abacus was res judicata in view of the previous board decision. The board stated: * * * the evidence in the instant appeal * * * presents the entirely new issue, namely of subject matter which, because of its novelty, permits effectuation of a new utility in teaching, this being a concept foreign to the reference devices. Thus, although the claim covers precisely the same physical structure, a different issue of patentability is pre- ■ sented for consideration. We were unable to find any decision by this Board or any court reviewing a decision of this Board on analogous facts, namely where the claim is identical as to structure but new evidence and new issues of patentability are presented for consideration. [Emphasis added.] Res judicata was held inapplicable. The board clearly felt it was its duty and function to consider the obviousness of the invention, the subject matter sought to be patented since this had not been considered previously. Cf. Weeks v. Warp, 95 U.S.App.D.C. 235, 221 F.2d 108, (1955) (“same subject matter” and “same disclosure”). Identity of claim language was not controlling. As one writer has indicated: The comparison of claims, however, does not totally resolve the issues of the applicability of res judicata. Rather, the same question of patentability or issue must appear, and the claims must be considered in this context. If, in this area, there is the confusion that has been evidenced in case law terminology, it is submitted that clarity and uniformity would be promoted if the rejection specified the precise statutory grounds of rejection. Even if the same statutory ground of rejection is relied upon in the second application, for example, section 112 of the act, the issue as to different or even the same claims may not have been previously litigated. [Citations omitted.] Additionally, the issue of obviousness of an invention under section 103 may require consideration of such matters as commercial success, long felt but unsolved needs, failure of others, etc. * * * to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy. Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 694, 15 L.Ed.2d 545, (1966). In Ex parte Osborn, 25 USPQ 260, a claim to an airplane construction was rejected, and affirmed by the board, as “devoid of invention [obvious].” However, the board refused to be bound by its prior decision, stating: * * * We believe that on the record of the other application, that decision was justified, but since that time a historical event has occurred which we think furnishes evidence materially affecting the situation. * * * The “historical event” was that the airplane so constructed won a $100,000.00 first prize in the Guggenheim competition. The board observed: In the face of such overwhelming proof of lack of appreciation of the usefulness of floating ailerons with the slotted wing and trailing edge flaps, it seems rather presumptuous for this Office to insist any longer that the combination was obvious. Perhaps there never has been a better opportunity to demonstrate that those most highly skilled in an art had not thought of adding two improvements together to get a result that seemed to involve nothing more than the sum of the advantages. * * * The factual requirements which the Supreme Court has recognized as being an essential part of the determinations under section 103 seem to me to require that proceedings at the administrative level must not be unduly foreclosed so as to deny applicants the opportunity to supply the factual materials required to determine these issues. While the Schott decision was not followed by a majority of the board sitting en banc in Ex parte Budde, 150 USPQ 469 (1966), I find it significant that the majority decision does not discuss or overrule the Gustavson, the Jameson or the Osborn cases, supra, although all were referred to in the first of the concurring opinions. Neither does the majority opinion in Budde refer to the factual aspects of section 103 issues discussed by the Supreme Court in Graham, a little less than a month earlier than the Budde decision. The present case, however, requires that we consider the res judicata issue which is here presented in the light of the Supreme Court’s latest pronouncement as to the nature of the determinations which must be made under section 103. When this is done, I think the Jameson, Osborn and Schott decisions provide a more rational basis for resolution of the res judicata issue in section 103 rejections than does the Budde decision. In passing, I express my agreement with the views of the concurring board members in Budde. I do not think the fact situation in Budde required overruling Schott. It is clear the majority in Budde felt compelled to the result there reached by the decisions of this court in In re Prutton, 204 F.2d 291, 40 CCPA 975; and in In re Lundberg, 280 F.2d 865, 47 CCPA 1140. However, 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. Lundberg, as a precedent, is viable only within its particular fact framework as Judge Rich has demonstrated in his concurring opinion. Thus, neither Prutton nor Lundberg requires an affirmance of the res judicata rejection here. Three other decisions of this court, while not controlling on the present fact situation, contain general observations concerning the problem of applying res judicata to Patent Office proceedings and should be briefly considered. These cases are: In re Fried, 312 F.2d 930, 50 CCPA 954 (1963); In re Szwarc, 319 F.2d 277, 50 CCPA 1571, (1963) and In re Hitchings, 342 F.2d 80, 52 CCPA 1141 (1965). In In re Fried, 312 F.2d 930, 50 CCPA 954, we reviewed the requirements of res judicata. The first application there ended in an unappealed examiner’s rejection, which, under present office practice is not considered as giving rise to res judicata. Be that as it may, the first application involved support for those claims, section 112, and the second application also involved support for different claims which were narrower in scope, section 112 via section 120, the purpose being to gain the benefits of an earlier filing date. While we affirmed the decision of the board, we did so on the basis of the merits of the case and not res judicata. We said different claims presented a different issue. Nothing was said about any converse. The plain fact is that every application usually presents a range as to subject matter that may be claimed and to that end many types of claims exist. Claims may be either too broad or too narrow to satisfy section 112 for a given specification. Each claim must be examined in light of the specification. The “scope” or “form” of claim is no conclusive guideline or solution to determining “issues” and whether res judicata is applicable, as this appeal demonstrates. Insofar as the alternative provided by section 120 and office practice is concérned, discussed in Fried, thére was no intention there to decide cases in the future involving different fact situations. And the “alternative” here, discussed supra, appears to have been something less than a free choice. In In re Szwarc, 319 F.2d 277, 50 CCPA 1571, we again were concerned with section 120. Therein we held, as to certain product claims, that collateral estoppel existed as to whether the specification satisfied section 112 in view of the fact that the form of claim employed included a specific product upon which a federal court had previously held the specification was deficient u