Appeal No. 2000-2033
Application 08/331,851
This prima facie case of obviousness has not been rebutted by
additional evidence from the appellant. Accordingly, the
rejections of claims 1, 4 through 6 and 7 through 10 are
affirmed. The applied art does not establish the prima facie
obviousness of claims 11 through 15. The rejection of these
claims is reversed. Our reasons follow.
Appellant’s first argument is that the new rejection of
claims 1 and 4 through 15 is unwarranted under the doctrine of
res judicata, or law of the case, in view of the full reversal of
the same claims on evidence in the record by the prior decision
of the Board. However, the predecessor to our reviewing court
has previously dealt with this issue. The court stated in In re
Borkowski, 505 F.2d 713, 718, 184 USPQ 29, 32-33 (CCPA 1974):
Appellants’ contention that the prior board
decision reversing a rejection under 35 U.S.C. § 103
over Borkowski et al. in a parent application should
have been "res judicata" to the examiner in this case
is unpersuasive. This court stated in In re Craig, 411
F.2d 1333, 56 C.C.P.A. 1438 (1969), that the policy and
purpose of the patent laws preclude the applicability
of any doctrine akin to the judicially-developed
doctrine of "res judicata" to bar the granting of
patents on inventions that comply with the statute.
The same policy and purpose precludes reliance on any
such doctrine to force the granting of patents on
inventions that do not comply with the statute. The
Patent Office must have the flexibility to reconsider
and correct prior decisions that it may find to have
been in error.
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