Res Judicata in Patent Prosecution

In the common law, res judicata (the thing that was decided) applies to a situation where a final judgement has been made, yet a party is trying to re-litigate the same case. Res judicata maintains the previous judgement and avoids repetition, thus preserving the effect of the first judgment.

Res judicata is also applicable in prosecution before the USPTO. MPEP § 2190 discusses the issue and explains how the USPTO views the doctrine:

A patent owner or applicant may be precluded from seeking a claim that is not patentably distinct from a claim that was previously rejected if the rejection was affirmed on appeal and the decision on appeal became final. A res judicata rejection should be applied only when the earlier decision was a decision of the Patent Trial and Appeal Board (or its predecessor Board) or any one of the reviewing courts and when there is no opportunity for further court review of the earlier decision. See In re Hitchings, 342 F.2d 80, 85, 144 USPQ 637, 641 (CCPA 1965) (holding that unappealed rejections from examiners cannot have a preclusive effect).

There are, of course, exceptions to this rule, including when an applicant has “new evidence.” In re Herr, 377 F.2d 610, 153 USPQ 548 (CCPA 1967) (res judicata not applicable despite similarities between previously adjudicated and current claims because applicant provided new evidence of patentability).

Despite the clear exceptions, USPTO examiners can sometimes take the broad statements in the MPEP as gospel and refuse to consider that an exception may apply. An example is appeal 2022-003276, Application 15/090,845. Here, the applicant had previous lost an appeal (where the claims were rejected as failing written description and enablement) and had come back with additional evidence (the citation of a new paper). The examiner applied the rejection as follows:

T]he decision by the Patent Trial and Appeal Board, of October 29, 2020, affirmed the . . . [35 U.S.C. §] 112(a) written description and enablement rejection[s] of the claims with respect to the unbounded bypass ratio. Under the principles of Res judicata, the claims are not appealable.

The Applicant went back to the Board and argued that that res judicata is not applicable to the present claims because they submitted new evidence (a technical report). Specifically, the applicant pointed to MPEP § 2190 and cited In re Herr, 377 F.2d 610 (CCPA 1967) and In re Russell, 439 F.2d 1228 (CCPA 1971), both holding that “res judicata [was] not applicable despite similarities between previously adjudicated and current claims because applicant provided new evidence of patentability”. The Board agreed, finding:

We find Appellant’s argument persuasive. In Herr, the claims in the original appeal were identical to the claims in the later appeal, but Appellant submitted new evidence of patentability in the later appeal.

While the applicant here was successful in overcoming the issue of res judicata, they were ultimately unsuccessful on the substantive issues because the new evidence submitted was dated after their priority date.

So, even if your appeal is at first rejected by the PTAB and new evidence is available that might alter the decision, res judicata should not act as a procedural block.

Inventor, attorney, and applicant - persistence is (not) futile.

It is always interesting to read the prosecution history of a case where the inventor is a patent attorney, and especially where the inventor is the applicant as well. Today we have an example where the attorney is the inventor, applicant, and further practicing at a large law firm. If the examiner thought that they were going to wear down the applicant with burdensome restrictions, continually shifting rejections, and reopening of prosecution in response to an appeal brief, then they picked the wrong applicant.

The case is 13/746,876 and relates to a compact microwave oven that can be stably positioned for use in multiple orientations to handle different containers (i.e., both containers that are larger in the vertical direction and containers that are larger in a horizontal direction). FIG. 1 from the application is provided below:

The claim on appeal is presented below:

1. A microwave oven comprising:
a housing including first and second outer surfaces upon which the microwave oven can be set for operation;
a magnetron located inside the housing;
a wall located within the housing and between a microwavable space and the magnetron, the wall forming a portion of the microwavable space and providing a surface upon which a food item is placed when the housing is set on one of the first or second surfaces for operation;
a door hinged along a hinged outer surface of the housing, the hinged outer surface different than the first and second outer surfaces; and
a user interface located on an outer surface of the housing, the user interface outer surface separated from the hinged outer surface by the first and second surfaces.

The inventor/attorney/applicant did everything they could here, likely knowing the examiner was going to be difficult (e.g., from examiner statistics). Below are some statistics from ironcrowai.com (shameless plug):

The application was filed in 2013 and, as noted above, the applicant had to deal with restrictions (which were traversed), re-opening in response to an appeal, and a variety of rejections. The one that finally made it to appeal involved a combination of two references, but even after almost a decade the examiner never really laid out how the combination was being applied to the claims (violating the mapping rule). The PTAB summarized the issue here:

… These rejections are problematic in that the Examiner makes findings regarding the teachings of Reale and findings regarding the teachings of Gard (see, e.g., Final Act. 3–6 (setting forth findings regarding Reale), 6–10 (setting forth findings regarding Gard)), but does not specify what claim elements Reale lacks or specifically propose modifying Reale to incorporate the features of Gard, much less provide particular reasoning explaining why it would have been obvious to make modifications to Reale to incorporate the specific features identified in Gard. The Examiner states that “[i]t would have been obvious . . . to modify Reale as suggested and taught by Gard to couple microwave energy in the power range 400 to 1000 W (or a level as required for the volume of the enclosure) into the oven cavity.” Id. at 10. This cryptic statement does not appear to be germane to the features of Gard alluded to by the Examiner on pages 6–10 of the Final Office Action. Consequently, the rationale for the rejections is not entirely clear.

Despite these shortcomings, the PTAB continued to evaluate the rejection on the merits. According to the board, the rejection relied on the idea that the microwave in the primary reference Reale had a housing having two (or first and second) surfaces upon which the microwave may be set for operation. Problematic for the examiner, Reale’s microwave (which had a top loading door) used a gel for cooking the contents, where the gel would essentially spill out if the microwave was placed on any other surface than the one shown. The examiner’s response to this issue was that one skilled in the art would close the door before changing the orientation, or simply not use the gel. However, the examiner failed to cite any evidence in support of this assertion. The PTAB found the examiner’s reasoning was erroneous:

… One of the problems with the Examiner’s rejection is that it is predicated on a reference (Reale) that is specifically designed (with a purpose to evenly heat components) in a manner that does not lend itself particularly well to the capability of being placed selectively on either of two surfaces for operation. An object of Reale’s invention is to provide “a method and apparatus for providing at least somewhat uniform heating.” Reale ¶ 11. In order to achieve this objective, “[a] heating medium is located in the internal compartment and adapted to contact and at least partially surround the item.” Id. ¶ 13. … The Examiner’s finding that Reale’s microwave can be used with or without the heating medium is presumably premised on Reale’s disclosure that “the internal compartment 16 of the microwave 10 may be filled with a heating medium such as, for example, a microwavable gel 18.” Id. ¶ 25 (emphasis added). Although the use of the word “may” might hint that Reale is open to alternative embodiments in which the internal compartment is not filled with a heating medium, Reale does not specifically disclose any such alternative embodiment that would achieve the degree of uniform heating contemplated by Reale. Reale discloses that its “invention achieves substantially even expansion of a component, to a great extent, by submerging the first component 20 in a heating medium and heating the heating medium, which completely encapsulates the first component 20, to provide relatively uniform heating to the entire surface area of the first component 20.” Id.¶ 29.
The top-load design in Reale’s disclosed embodiment is ideally tailored for use with a microwave having an internal compartment filled with a flowable heating medium, such as microwave gel. A person having ordinary skill in the art would not interpret Reale’s microwave as having any other orientation, other than the one shown in Reale’s Figure 2, with door 12 disposed on the top surface, for operation. Although it may be possible to provide sufficient sealing around door 12 to prevent spillage if Reale’s microwave is rotated into another orientation, with door 12 disposed on a side surface, rather than the top surface, absent impermissible hindsight using information gleaned from Appellant’s disclosure, it is not apparent why one of ordinary skill in the art would have been prompted to do so.

Here the particular disclosure of Reale is important to the Board’s analysis and conclusion. Often times when a reference discloses a feature “may” be provided, an examiner can get away with modifying or deleting it without much need for evidence to do so. Here, however, Reale’s explanation of the advantages made clear that the gel was integral to achieving the result. Further, the idea that Reale’s microwave could be oriented on a different surface caused specific technical problems that the examiner addressed with mere speculation.

The case is still pending an close to allowance, so it looks like this attorney’s persistence paid off. However, many inventors and applicants do not have the luxury of being their own attorney and the patience to tolerate a decade of tortuous examination.