Appeal No. 95-3678
Application 07/545,786
Res Judicata is applicable only when there are no new
issues of fact or law to be resolved. Appellant specifically
amended previously appealed claim 1 in response to a new ground
of rejection made in the previous Board decision. Thus, claim 1
which is now on appeal before us, is not the same claim that was
considered in the previous Board decision. Therefore, it is
improper to hold that the patentability of claims 2-4 and 7-9,
which depend from amended claim 1, is precluded by Res Judicata.
See, for example, In re Craig, 411, F.2d 1333, 162 USPQ 157 (CCPA
1969). Therefore, since factual and legal considerations
affecting the patentability of claims 2-4 and 7-9 have changed
since the previous decision of the Board of Patent Appeals and
Interferences, the failure to consider these claims based on the
ground of Res Judicata was in error. To the extent that we have
considered the examiner’s withdrawal of these claims to be a
rejection on the ground of Res Judicata, such rejection is
reversed.
With respect to claims 10 and 15, these are the same
claims that were considered by the Board in the previous
decision. Appellant has made no arguments directed to the
impropriety of the rejection on Res Judicata as it applies to
these claims. Appellant has limited his arguments on this issue
10
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