Appeal 2007-3920
Application 90/007,025
have only been provided with a copy of a later Board decision that is not
germane to the issue on appeal.7
Preclusions, including res judicata, are powerful and necessary
procedural tools, but they are not magic bullets. Proving a preclusion
generally requires careful construction of a supporting case. The present
appeal illustrates some of the many ways in which a "res judicata" theory
can go awry.8 Since the res judicata theory has not been adequately
developed in the record before us, we do not give it any weight.
Obviousness of claim 3 in view of prior claims
An obviousness-type double-patenting analysis is essentially the same
as an obviousness analysis with one key exception: one of the "prior art
references" is not necessarily prior art, but rather a previously issued claim.
Often (as in this case) the specification underlying the claim is not prior art
so the disclosure of the invention in the specification cannot be used as
evidence of prior art.
In analyzing obviousness, the scope and content of the prior art must
be determined, the differences between the prior art and the claims
7 Examiner's Answer (Ans.) 6, providing a 1992 Board decision. On a
procedural note, the only evidence the examiner purports to rely upon (Ans.
3) are the two patents. We also note that the initial reexamination request
cited (but did not provide) the earlier and purportedly decisive 1990 Board
decision.
8 There is an implication of serious prosecution misconduct in the res
judicata argument. As with the res judicata theory, no misconduct has been
established in the record before us.
4
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