Appeal No. 2001-0869 Page 19
Application No. 08/453,347
and designated as corresponding to the count of the ‘884 interference.
Appellants, however, did not do so and are now precluded from allowance of
claims that are not patentably distinct from the claims corresponding to the lost
count. See In re Deckler, 977 F.2d at 1452, 24 USPQ2d at 1449:
The 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.”
(Emphasis added.)
Summary
We reverse the rejection for nonenablement and enter a new ground of
rejection of claims 1-3 and 7-16. Thus, claims 4-6 are not subject to any pending
rejection.
This decision contains a new ground of rejection pursuant to 37 CFR
§ 1.196(b). 37 CFR § 1.196(b) provides, "[a] new ground of rejection shall not be
considered final for purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of proceedings (37 CFR § 1.197(c) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner . . . .
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