Appeal No. 2001-0869 Page 11
Application No. 08/453,347
Deckler arose out of “an interference proceeding . . . between Deckler and
Grataloup, . . . [in which] the Board awarded priority of invention to Grataloup.”
Id. at 1451, 24 USPQ2d at 1448. Deckler’s application was returned to ex parte
prosecution, rejected on various grounds, and appealed. See id. “The Board
affirmed the examiner’s rejection of claims 1 through 3 and 7 on the ground that
the decision in the interference precluded Deckler from allowance of those
claims, because they define the same invention as the interference count.” Id.
Deckler appealed to the Federal Circuit, and the court affirmed, holding that
[t]he Board’s decision that the interference judgment bars Deckler
from obtaining a patent for claims that are patentably
indistinguishable from the claim on which Deckler lost the
interference constituted a permissible application of settled
principles of res judicata and collateral estoppel. Under those
principles, a judgment in an action precludes relitigation of claims or
issues that were or could have been raised in that proceeding.
Id. at 1452, 24 USPQ2d at 1449. The court concluded that
[t]he interference judgment conclusively determined that, as
between Deckler and Grataloup, Grataloup was entitled to claim the
patentable subject matter defined in the interference count. It is
therefore proper, and consistent with the policies of finality and
repose embodied in the doctrines of res judicata and collateral
estoppel, to use that judgment as a basis for rejection of claims to
the same patentable invention.
Id.
In this case, interference 103,998 involved Appellants’ U.S. Patent
5,179,078 and application 07/330,446, filed by Yoshimura et al. The sole count
in the interference read as follows: “A method of treating neoplasms or tumors in
be estopped with respect to any claims which correspond, or properly could have corresponded,
to a count as to which that party was awarded a favorable judgment.” 37 CFR § 1.658(c).
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