In an interesting decision today at the Board of Patent Appeals and Interferences (BPAI), the Board found in favor of the Applicant with regard to a rarely used rejection based on res judicata.
The case of Ex parte Aggarwal (Appeal No. 2010-011553) involved error detection software for hypertext. There was an earlier appeal where the Appellant made a first patentability argument with regard to claims 1-5 and the Board affirmed the Examiner's rejection of claims 1-5. The result of the earlier appeal was that the Board remanded back to the Examiner with regard to other claims.
On remand, the Appellant did not amend claims 1-5 but made different patentability arguments for those claims. Since claims 1-5 did not change since the earlier appeal, the Examiner rejected claims 1-5 based on res judicata, stating that the Board already rejected claims 1-5 in a previous proceeding. This led to the second appeal, and this decision.
The Board framed the issue like so:
the dispute before us hinges on whether Appellants' failure to raise a particular patentability issue before the Board in the earlier appeal based on evidence that was entered and considered by the Examiner during prosecution before that appeal can be presented in a later appeal to effectively create a new record and thus present new patentability questions involving the same claims and rejections to avoid res judicata.
The answer to that question is yes. If an Appellant fails to raise a certain issue of patentability in an earlier appeal, he can still raise it in a later appeal of the same claims, even if the supporting evidence was present before the earlier appeal.
The BPAI noted the following case law:
"Res judicata" is "[a]n issue that has been definitively settled by judicial decision. . . . The three essential elements are (1) an earlier decision on the issue, (2) a final judgment on the merits, and (3) the involvement of the same parties, or parties in privity with the original parties." BLACK'S LAW DICTIONARY 1425 (9th ed. 2009) (citing RESTATEMENT (SECOND) OF JUDGMENTS §§ 17, 24 (1982)). When Appellants submit new affidavits not considered previously to make a new record, thus presenting different questions of patentability, the doctrine of res judicata does not apply "even if the claims are viewed as identical to those in the prior case." In re Russell, 439 F.2d 1228, 1230
The Board felt that the new issue of patentability was not previously heard, considered or decided upon, which is a required element of res judicata. The Board stated "Although the evidence on which this issue turns was previously entered and considered by the Examiner before the earlier appeal, it was simply not germane to the issues raised in the earlier appeal and, not surprisingly, not discussed by Appellants, the Examiner, nor the Board in connection with that appeal." As a result, the Board found that the res judicata doctrine did not apply to claims 1-5 and the rejection of claims 1-5 based on the res judicata doctrine was reversed.
What does this mean for practitioners? This means that you can get a do-over at the Board. Specifically, if you lose at the BPAI for a first set of claims, and you can somehow make it back to the Board, you can re-argue the rejection of the first set of claims, as long as you bring up new issues of patentability. Of course, this isn't the easiest route to get claims allowed. The wait time to get to the Board is at least 2 years for each round. But it's nice to know that you have the flexibility to bring up new issues in a later appeal. You are not locked out by the Board's previous unfavorable decision.
Post Script: the Board ended up rejecting claims 1-5 on obviousness grounds, leaving nothing for the Appellant.
Continue reading "Board of Patent Appeals Rules on Res Judicata Rejection" »