Res judicata may constitute a proper ground for rejection. However, res judicata rejections 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.
The timely filing of a second application copending with an earlier application does not preclude the use of res judicata as a ground of rejection for the second application claims. A patent owner or applicant is precluded from seeking a claim that is not patentably distinct from a claim that was finally refused or canceled during an administrative trial. Similarly, a patent owner is precluded from seeking an amendment of a specification or drawing that was denied entry during a trial if the application or patent for which the amendment is sought has the same written description as the patent or application that was the subject of the administrative trial. See 37 CFR 42.73(d)(3).
When making a rejection on res judicata, action should ordinarily be made also on the basis of prior art, especially in continuing applications. In most situations the same prior art which was relied upon in the earlier decision would again be applicable.
In the following cases a rejection of a claim on the ground of res judicata was sustained where it was based on a prior adjudication, against the inventor on the same claim, a patentably nondistinct claim, or a claim involving the same issue.
In re Freeman, 30 F.3d 1459, 31 USPQ 2d 1444 (Fed. Cir. 1994).
Edgerton v. Kingland, 168 F. 2d 121, 75 USPQ 307 (D.C. Cir. 1947).
In re Szwarc, 319 F.2d 277, 138 USPQ 208 (CCPA 1963).
In re Katz, 467 F.2d 939, 167 USPQ 487 (CCPA 1970) (prior decision by District Court).
In the following cases for various reasons, res judicata rejections were reversed.
In re Fried, 312 F.2d 930, 136 USPQ 429 (CCPA 1963) (differences in claims).
In re Szwarc, 319 F.2d 277, 138 USPQ 208 (CCPA 1963) (differences in claim).
In re Hellbaum, 371 F.2d 1022, 152 USPQ 571 (CCPA 1967) (differences in claims).
In re Herr, 377 F.2d 610, 153 USPQ 548 (CCPA 1967) (same claims, new evidence, prior decision by CCPA).
In re Kaghan, 387 F.2d 398, 156 USPQ 130 (CCPA 1967) (prior decision by Board of Appeals, final rejection on prior art withdrawn by examiner “to simplify the issue,” differences in claims; holding of waiver based on language in MPEP at the time).
In re Craig, 411 F.2d 1333, 162 USPQ 157 (CCPA 1969) (Board of Appeals held second set of claims patentable over prior art).
In re Fisher, 427 F.2d 833, 166 USPQ 18 (CCPA 1970) (difference in claims).
In re Russell, 439 F.2d 1228, 169 USPQ 426 (CCPA 1971) (new evidence, rejection on prior art reversed by court).
In re Ackermann, 444 F.2d 1172, 170 USPQ 340 (CCPA 1971) (prior decision by Board of Appeals, new evidence, rejection on prior art reversed by court).
Plastic Contact Lens Co. v. Gottschalk, 484 F.2d 837, 179 USPQ 262 (D.C. Cir. 1973) (follows In re Kaghan).