Appeal Number: 2006-1650
Application Number: 09/903,500
for the re-appeal and thus a renewed consideration by the Board of the same claims
as previously considered based on the same record. See In re Russell, 439 F.2d
1228, 1230, 169 USPQ 426, 428 (CCPA 1971)(res judicata rejection reversed
where two new affidavits were presented to change evidentiary record); Ex parte
Swanson, 215 USPQ 564, 565 (Bd. App. 1982) (examining the patentability of the
same invention for a second time on a different record does not create an onerous
burden on the PTO).
In a prior appeal, Appeal No. 2003-2167, this Board considered the
patentability of claims 12 and 14-36 in Appellant’s parent application. The
Examiner’s rejections of all claims were affirmed. Subsequent to that Decision,
Appellant filed an RCE. According to Appellant’s Brief, claims 12, 18, and 19
have been amended (Br. 4). Thus, according to Appellant, claims 21-36 have not
been amended and are the same claims considered by this Board in Appeal No.
2003-2167. Furthermore, the evidentiary record remains the same. Thus, the issue
raised by the appeal of these unamended claims is precisely identical to the issue
raised with respect to these claims in the prior appeal. Having previously decided
the disposition of these claims on the same evidentiary record, this re-appeal, as it
were, is merely a stratagem to outflank the regulations established for the orderly
review of Board decisions we quoted at the outset. Accordingly, we will not revisit
our prior decisions in this manner.
Consequently, we DISMISS the appeal as to claims 21-36, the patentability
of claims 21-36 having been previously decided on the same record. The appeal
will go forward as to claims 12 and 14-20, claims that were amended subsequent to
the Decision rendered in Appeal No. 2003-2167.
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