Application of Milton E. Herr

ALMOND, Judge

(dissenting, with whom KIRKPATRICK, J., joins).

In the commendable pursuit of an abstract ideal known as perfect justice, the majority seemingly attempts in this ■case to abolish the legal doctrine of res .judicata in ex parte patent cases. If the majority decision is allowed to stand, then the legal doctrine of res judicata will be essentially abolished in ex parte patent cases. Obviously, if res judicata is inapplicable as a ground of rejection when patentability of the same claims to the same applicant has been previously adjudicated adversely to the applicant in a final decision on the merits by a Federal appellate court, as the majority here decides, then similar decisions of lower tribunals, e. g. the Patent •Office Board of Appeals, could not possibly give rise to a res judicata rejection. Likewise, a final decision on the merits adverse to patentability of slightly different, but patentably indistinct, claims could not possibly lay a foundation for a res judicata rejection.

I am thoroughly convinced that the rules of law and underlying rationales expressed by the Supreme Court, this court, and the District of Columbia courts in numerous opinions involving the application of the res judicata doctrine to patent cases should govern here. The sound public policy considerations which form the basis for the doctrine are especially convincing. On the negative side, I am not at all persuaded by the arguments advanced by the majority and appellant, which arguments I shall subsequently analyze, after presentation of the case law which formerly prevailed in this court prior to the present majority decision.

One of the leading cases on application of the res judicata doctrine to ex parte patent cases is that of the Court of Appeals for the District of Columbia, our jurisdictional predecessor in such cases, in In re Barratt’s Appeal, 14 App.D.C. 255 (1899). There, as here, the same claims had previously been held unpatentable on the merits by the Federal appellate court which at the time reviewed Patent Office decisions on the record established in the Office. Subsequent to the final (court) decision, as here, the same applicant presented the same claims in a second application, which contained additional specification disclosures not present in the parent application. Likewise, the meager record in the prior case was enlarged by additional evidence, especially with regard to the state of the art, in Barratt’s second case. Speaking of the new evidence in the second record, and the expanded application disclosures, the court stated, 14 App.D.C. at 259 :

The new application does not make a different case. The case is the same precise case. The subject matter of invention is the same. The claim is the same. Only the specifications and drawings are more full; and the state of the art at the time of the alleged *629 invention is more fully and satisfactorily shown. But all this * * * at the utmost amounts to no more than a clearer and better declaration or additional proof of the alleged invention. It does not make any new case; and it does not justify the filing of any new application.

The above-quoted language is fully as applicable to the facts of the present case as it was to the quite similar facts of the second Barratt case in 1899. The Court of Appeals also ably expressed the sound public policy considerations which provide the foundation for res judicata rejections in ex parte patent cases, 14 App.D.C. at 258 :

When, on the other hand, an application for a patent is after due examination rejected, and finally determined against the applicant after exhaustion of the manifold right of appeal allowed to him by the great liberality of the patent laws, why should a second application be allowed or entertained? Is there any reason why the determination of the matter should not be regarded as conclusive? If a second application could be regarded as proper, why not ten or twenty successive applications ? Where are the applications to stop, and what would become of the public business, if it were in the power of one person to obstruct the operations of the Patent Office by repeated and persistent applications? These questions answer themselves. * * *

To which I can only add my agreement that these questions certainly do answer themselves. Yet the majority is “inclined to discount, the somewhat exaggerated fears of the Patent Office of the potential procedural bedlam resulting from our holding here.”

The Barratt case was cited and quoted from with evident approval by the Supreme Court in Overland Motor Co. v. Packard Motor Co., 274 U.S. 417, 420 , 47 S.Ct. 672, 673 , 71 L.Ed. 1131 wherein the Court stated:

It is quite true that, after such [unappealed final] rejection, the Commissioner of Patents might have refused to consider his divisional application, as he made it without suggestion or consent by the Patent Office. In a qualified and limited sense a claim rejected as this was constitutes res judicata in favor of the Government and against the applicant. * * *

The Court then quoted, 274 U.S. at 421 , 47 S.Ct. at 673 , with approval the following language from the Barratt case, 14 App.D.C. at 257 , with regard to the reasons why the res judicata doctrine should apply to ex parte patent cases:

While the rules that govern the finality and conclusiveness of adjudications at the common law do not apply, in the strict sense, to administrative or quasi-judicial action in the Executive Departments of government, yet in administrative action, as well as in judicial proceeding, it is both expedient and necessary that there should be an end of controversy. * * * Especially is this principle-applicable to the proceedings of the Patent Office, which are so nearly akin to judicial proceedings as to be most appropriately designated as quasi-judicial.

The Supreme Court then quoted with, approval, 274 U.S. at 421 , 47 S.Ct. at 673 , an important qualification on the doctrine of res judicata in Patent Office-proceedings, i. e. the waiver principle, as stated by the Court of Appeals in Barratt, 14 App.D.C. at 261 :

In what we have said we do not desire it to be understood that the Patent Office may not, if it thinks proper so to do, [favorably] entertain and adjudicate a second application for a patent after the first application has been rejected. What we decide is, that it is not incumbent upon the office as a duty to [favorably] entertain such applications, and that, if it refuses to [favorably] entertain them, it has a perfect legal right so to do. An applicant is not legally aggrieved by such refusal [to waive the res judicata doctrine].

*630 In the Overland case, the Supreme Court held that the Patent Office had waived its res judicata objection as to presentation of the same, previously finally adjudicated claim in the second case by granting the patent including said claim. In the present case, the Patent Office has certainly not waived its available res judicata objection, and I do not read the majority opinion as holding that the Office has in fact so waived it. As is well known, a waiver is a voluntary or intentional relinquishment of a known right. There is absolutely nothing in the record or briefs which might establish such a waiver, either express or implied. The appellant does not even argue the possibility of such a waiver. The examiner asserted the res judicata doctrine as a ground of rejection in each of the four Office actions and his Answer before the board in this case, and the board and the Solicitor, on behalf of the Commissioner, state that res judicata is the sole remaining ground of rejection here. Thus, there clearly has been no waiver by the Patent Office of the doctrine, and this court manifestly has no more authority to waive it on behalf of the Patent Office than we have authority to waive any other rights to which the parties before this court are entitled.

The Barratt and Overland cases were both cited and followed by this court in In re Prutton, 204 F.2d 291 , 40 CCPA 975, (1953), shortly after the January 1, 1953, effective date of the Patent Act of 1952, Title 35 U.S.C. In the Prutton case, the claims in a parent application had previously been held obvious and unpatentable on the merits over a single prior art reference, Downing patent No. 2,285,853, by the Court of Appeals for the District of Columbia. A continuation-in-part application with additional disclosure and different, broader claims was subsequently filed by the same applicant. Although the claims of the new application were held by the board to be unobvious in view of, and patentable over, the same reference on the new record established in the Patent Office in the second case, as is the case here, the board nevertheless affirmed the examiner’s res judicata rejection, while reversing the prior art rejection on the merits. With regard to this apparent anomaly, this court stated, 204 F.2d at 295 , 40 CCPA at 980:

We think this simply means that the present board thought the claims in the earlier [parent] application were erroneously held unpatentable over Downing * * *. The board clearly considered this to be immaterial insofar as the question of res judicata was concerned, and properly so. Res judicata applies whether the final decision in the earlier application was right or wrong, or was induced by want of the particular evidence offered to the board in this case, Blackford v. Wilder, 28 App.D.C. 535 , unless the appealed claims are patentably different from those refused in that application. In re Ellis, supra, 86 F.2d 412 , [24 CCPA 759].

Moreover the board’s reversal of the prior art rejection on Downing * * and its affirmance of the rejection of res judicata is not in fact anomalous, although seemingly so at first impression. It was necessary for the board to have ruled on the merits of the prior art rejection based on Downing * * *, in view of the possibility that the rejection on res judicata might be reversed on appeal. Otherwise, the former rejection, not having been expressly overruled by the board, would be regarded by this court as having been affirmed. * * *

The application of these principles to the facts of the case at bar is as follows. Res judicata applies here even though the final decision on the merits in the parent Herr application may possibly have been induced by failure to consider the first Stafford affidavit offered to the examiner in this case. In fact, the decision was probably not so induced. Appellant took the position that, if the Stafford affidavit of May 1, 1958 had been considered in his parent case, the claimed subject matter would have been held unobvious and patentable on the *631 original record. Yet, when the present continuation-in-part application was filed, thereby laying a foundation for the affidavit showing, the examiner still contended that the claims were obvious and unpatentable over Herr et al. patent No. 2,769,019, the reference applied against the same claims in the parent case which was previously before this court. The examiner adhered to this position on reconsideration of the matter. Only after two additional affidavits were filed on June 25, 1964, did the examiner, on July 28, 1964, withdraw the obviousness rejection factually based on the Herr et al. patent and rely solely on the res judicata doctrine as a ground of rejection. Prior to that time, the examiner consistently applied both grounds of rejection, res judicata and obviousness under 35 U.S.C. § 103 in view of the Herr et al. reference, against appellant’s claims.

Since the claims of the present continuation-in-part application are identical to the previously adversely adjudicated claims, there can be no serious question that the appealed claims are not different at all, let alone “patentably different,” from the claims held by this court to be obvious and unpatentable under 35 U.S.C. § 103 in the first Herr case. Also, the examiner’s reconsideration of the claims on the merits in light of the new record established in this second case, and his holding that the claims define unobvious subject matter on the present enlarged record, clearly do not amount to waiver of the res judicata doctrine, which he continued to repeatedly assert, just as the board’s similar reconsideration and holding of unobviousness in view of the new record established in the second Prutton case,, supra, did not amount to a waiver of res judicata. In reconsidering the issue of obviousness of the previously adjudicated claims in light of the new record, the examiner was merely following the guidelines set forth by this court in Prutton , “in view of the possibility that the rejection on res judicata might be reversed on appeal,” as in fact has occurred here. It was “necessary” for the examiner to act as he did in order to avoid undesirable piecemeal examination. See also Judge Rich’s concurring opinion in the instant case.

The only significant differences between the Prutton case, which likewise involved a continuation-in-part application, and the present one are that (1) the prior decision in the first Prutton case was by the Court of Appeals for the District of Columbia, while the prior decision in the first Herr case was by this court; and (2) the claims in the second Prutton case were different, but not patentably so, from the previously adversely adjudicated claims, while here the claims in the two cases are identical. With regard to the latter difference, this should present an a fortiori case in view of the Prutton rationale requiring patentably distinct claims.

With regard to the former matter, this is also a difference without a distinction. While I am fully aware that this court was once regarded as equivalent to an administrative agency, and that there is a school of thought to the effect that res judicata should not apply to administrative agency decisions, it is now well settled that this tribunal is an Article III court, not an administrative agency or an Article I court. Brenner v. Manson, 383 U.S. 519 , 86 S.Ct. 1033 , 16 L.Ed.2d 69 , (1966). Thus a final decision on the merits by this court adverse to the patentability of an appellant’s claims should be held to give rise to a proper res judicata rejection, when the same applicant presents either the same, or patentably indistinct, claims in a subsequently filed application, 1 just as a similar final decision by the Court of Appeals for the District of Columbia Circuit makes proper such a res judicata rejection by the Patent Office. In re Prut-ton, supra. Even if this court were still considered to be an administrative agency, which clearly it is not, the following *632 recent statement by the Supreme Court in United States v. Utah Construction & Mining Co., 384 U.S. 394, 421-422 , 86 S.Ct. 1545, 1559 , 16 L.Ed.2d 642 (1966), is pertinent:

Occasionally courts have used language to the effect that res judicata principles do not apply to administrative proceedings, but such language is certainly too broad. When an administrative agency is acting in a judicial capacity and resolves disputed issues of fact properly before it which the parties have had an adequate opportunity to litigate, the courts have not hesitated to apply res judicata to enforce repose. [Cases cited.] * * *

The Prutton case was cited and followed by this court in In re Lundberg, 280 F.2d 865, 867-8 , 47 CCPA 1140, 1143-1144 (1960), wherein the following pertinent guidelines were set forth:

The starting point is a comparison of what is claimed here with the relevant claims in the prior case. If the claimed subject matter is the same, the prior adjudication is binding * * *

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Patentability over prior art is not reconsidered as a virgin problem. On the contrary, the prior decision stands, right or wrong, for all disputed issues there decided, In re Prutton, 204 F.2d 291, 295 , 40 CCPA 975, 980, and we determine patentability of the new claim over the adjudicated claim, considering prior art, if necessary, only if substantial differences between the claims exist. The public policy which is implemented by this rule is that there shall be an end to litigation, that when one has exhausted the remedies provided by law he shall not be permitted to go through the process all over again.

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In cases appealed to this court, or taken to the District of Columbia courts under 35 U.S.C. § 145 , involving the ex pa?'te prosecution of patent applications what must be borne in mind with respect to res judicata is the distinction between claims to different inventions on the one hand and different claims to the same invention on the other. Where different inventions are claimed, res judicata does not preclude a new consideration; but where an applicant is merely presenting new claims to the same invention, the patentability of which he has already argued before the court, reconsideration of the issue of patentability is proscribed by the doctrine of res judicata.

As here, the prior decision on the merits adverse to patentability in the first Lundberg case was by this court. Although the second Lundberg case involved a continuation application with the same specification and different, but patentably indistinct, claims, while the present case involves a continuation-in-part application with a slightly different specification and the same claims that were previously adversely adjudicated on the merits under 35 U.S.C. § 103 by this court in the first Herr case, the above-quoted guidelines set forth by this court in Lundberg are equally applicable to the present case, which, like Prutton , involves a continuation-in-part application.

Since “the claimed subject matter is the same” here as in the first Herr case, “the prior adjudication is binding,” and “the prior decision stands, right or wrong, for all disputed issues there decided,” including the ultimate issues of whether these claims are patentable to appellant and whether these presently appealed, and previously adversely adjudicated, claims are obvious and unpatentable under 35 U.S.C. § 103 in view of the disclosures of Herr et al. patent No. 2,-769,019. The new claims are manifestly not patentable “over the adjudicated claim[s],” since the two sets of claims are identical, and no differences whatsoever, let alone “substantial differences between the claims exist.” Appellant does not even present new and different claims to the same invention, but rather presents for a second full day in court *633 the same old claims to the same invention, certain chemical compounds claimed as compositions of matter, the claims being unrestricted by any use, or method of preparation, limitations.

Although appellant is reduced to the necessity of contending in his brief that “the patentability of the claims was not considered by the court [in the first Herr case], and appellant could not argue it as an issue,” examination of the court’s opinion in that case reveals that “[appellant contends here, as below, that (1) the claimed compounds would not be obvious to a person of ordinary skill in the art * * 304 F.2d at 909, 50 CCPA at 708. Since appellant “has already [unsuccessfully] argued before the court” the issue of patentability of the same claims to the same invention, “reconsideration of the issue of patent-ability is proscribed by the doctrine of res judicata.” In re Lundberg, supra. With regard to the matter of whether the invention is the same or different here from that in the first Herr case, appellant makes these manifestly fallacious arguments in his brief:

And if the invention is different by virtue of a more complete and full disclosure of it then res judicata is no bar.

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Even though the wording of the claims is the same as before, the invention they represent, i. e. certain particular unobvious substances, is not the same as before. * * *

Obviously, if “the wording of the claims is the same as before,” which is the case here, then “the invention they represent,” i. e. certain chemical compounds unrestricted as to use or method of preparation, must necessarily be “the same as before.” These compounds remain the same compositions of matter per se regardless of whether they are disclosed in the specification to possess properties giving rise to 1, 10, 100, or 1,000 uses, and regardless of whether 1, 10, 100, or 1,000 methods of preparing the compounds are disclosed in the specification. The “more complete and full disclosure,” contrary to appellant’s argument, certainly does not make the claimed compounds themselves any different, when considered as compositions of matter per se, as they are claimed.

The opinion of this court in In re Fried, 312 F.2d 930, 931 , 50 CCPA 954, 957 (1963), stresses that “['s]ince different claims are here presented the issues decided in the parent application and those to be here decided are not the same.” In contrast, the issue presented in this ease is identical to the issue presented, and decided adversely to appellant, in the first Herr case, namely, whether the subject matter of the appealed claims is obvious under 35 U.S.C. § 103 in view of the disclosures of Herr et al. patent No. 2,769,019. The claims, prior art reference, and statutory ground of rejection (section 103) are the same in both cases. In Fried , this court declined to follow the Overland case, supra, on the grounds that (1) different (narrower) claims were before this court in Fried , whereas the same claims were involved in Overland, and (2) the Overland case was decided 26 years prior to enactment of the Patent Act of 1952.

In the present case, where the claims are identical to the previously adversely adjudicated claims, as in Overland, the majority simply omits all mention of this Supreme Court case, which cannot be distinguished so easily here as in Fried . I would respectfully suggest to the majority that, if Overland is to be overruled, expressly or impliedly, then either the Supreme Court itself or Congress should do it. Basic Supreme Court decisions such as Overland and Brenner v. Manson, supra, should not be so narrowly construed (as to be virtually limited to their own particular facts) by lower Federal courts, including this one, in deciding patent cases. See Hazeltine Research, Inc. v. Brenner, 382 U.S. 252 , 86 S.Ct. 335 , 15 L.Ed.2d 304 (1965).

With regard to the effect of the Patent Act of 1952, this court stated in Fried, 312 F.2d at 933 , 50 CCPA at 959:

It seems to us the clear intent of 35 USC § 120 and of the present pro *634 cedures in the Patent Office relative thereto have established a practice under which an applicant may (1) appeal an examiner’s adverse ruling or (2) acquiesce in the ruling and file a continuation application with new claims therein.

The alternative in Fried has now become the conjunctive in the present case. After appealing the examiner’s adverse ruling to the Board of Appeals and then to this court in the first Herr case, appellant refused to acquiesce in this court’s ruling on the merits adverse to patentability of the previously adjudicated, and presently appealed, claims under 35 U.S.C. § 103 , and filed a continuation-in-part application with the same old claims therein. The majority says that we must approve this unorthodox procedure, or else be guilty of “unjustly enrich [ing] the public” by applying the well-established legal doctrine of res judicata in favor of the Patent Office, which represents the public interest. See, generally, “Developments in the Law — Res Judicata,” 65 Harv.L.Rev. 818, 882-884 (1952).

I simply cannot agree. Even though the present board decision is reversed, this does not necessarily mean, of course, that appellant will obtain a patent on these claims, since it is well settled that res judicata does not apply in the usual sense against the Patent Office. See, e. g. Jeffrey Mfg. Co. v. Kingsland, 86 U.S.App.D.C. 13 , 179 F.2d 35 (1949). 2 Thus, the public may yet be “unjustly enrich [ed],” notwithstanding the majority effort to prevent it, and litigation in the Federal courts to obtain these claims in dispute may truly become virtually “endless.”

In In re Szwarc, 319 F.2d 277, 280-281 , 50 CCPA 1571, 1575-1576 (1963), this court stated the twofold requirements of res judicata as follows:

The first requirement of res judicata is that the second suit must involve the same parties or their privies. Commissioner v. Sunnen, 333 U.S. 591 , [ 68 S.Ct. 715 , 92 L.Ed. 898 ]. * * *

The second requirement of res judicata is identity of issues. If the second action between- the same parties or privies is upon the same claim or demand, the judgment in the prior action operates as an absolute bar to relitigation not only of those matters actually determined in the prior suit but also any other matter which might have been acted upon in the prior suit. Cromwell v. County of Sac, 94 U.S. 351 [ 24 L.Ed. 195 ]. * * *

In the case at bar, we obviously have the same parties as those before this court in the first Herr case. The ultimate issues of patentability on the merits of the presently appealed, and previously adversely adjudicated, claims to appellant and obviousness of the claimed subject matter in view of the Herr et al. patent No. 2,769,019 under 35 U.S.C. § 103 are the identical ultimate issues which were presented to, and finally decided by, this court in the first Herr case. Thus both requirements of the legal doctrine of res judicata are fulfilled in this case, and the Patent Office refusal to grant appellant a patent on these previously adversely adjudicated claims should be sustained by this court, unless the “identity of issues” requirement means that the specific issues of evidentiary fact must be identical, as well as the general issues of ultimate fact and law. This would transform the second requirement of res judicata into an identity of records requirement, as opposed to the identity of issues requirement. As I read the majority opinion, this is exactly the interpretation placed *635 on the second requirement, which effectively destroys the doctrine of res judicata insofar as ex parte patent cases are concerned. If res judicata requires identity of records, rather than merely identity of issues of ultimate fact and law, then the effect of the doctrine may always be overcome by filing, in conjunction with a new application, an affidavit showing commercial success or satisfaction of a long-felt need or want, or even merely filing copies of new patents or publications to show more completely the state of the art at the time the claimed invention was made.

If this is the majority view, I cannot agree that the issues of ultimate fact and law presented by the record of a case are inherently limited by that record, so that changing the record, even ever so slightly, necessarily changes the ultimate fact issues per se so that they are no longer identical, just as the specific issues of evidentiary or mediate fact are no longer identical because of the different record. See The Evergreens v. Nunan, 141 F.2d 927 , 152 A.L.R. 1187 , (2d Cir. 1944). See also Baenitz v. Ladd, 124 U.S.App.D.C. 237 , 363 F.2d 969 (1966).

The public policy rationale expressed in the dissenting opinion in Szwarc, 319 F.2d at 288 , 50 CCPA at 1585, is fully applicable here:

He [appellant] has had his day in court. * * * He now seeks a second day in court, urging us to set what would be an intolerable precedent of legal chaos and uncertainty by reviewing, indeed by reversing, a question which has already been decided by a court of competent jurisdiction. That we cannot do.

The case of Ex parte Gustavson, 14 USPQ 332 (Bd. Apls. 1932), relied on heavily by appellant below and to a lesser extent here, is similar to the Fried and Szwarc cases in that the issue in the first case was sufficiency of disclosure to support the claims of the parent application. As the board pointed out, the claims of the first Gustavson case “were not held unpatentable on their merits but on the [formal] ground that they were not supported by the original disclosure.” In contrast, there was no issue under 35 U.S.C. § 112 as to sufficiency of the specification disclosure to support the claims (as distinguished from the affidavit showing of unobviousness) of the first Herr case. The ultimate issue in that ease was obviousness of the claimed subject matter under 35 U.S.C. § 103 . That issue has been finally determined adversely to appellant and the determination may not be legally questioned unless the Patent Office waives its res judicata objection, which it has not chosen to do here.

Unlike the Fried, Szwarc and Gustav-son cases, and like the Barratt, Prutton, and Lundberg cases, the issue in the first Herr case was one of patentability of the claims on the merits under 35 U.S.C. § 103 , not sufficiency of supporting disclosure for the claims under 35 U.S.C. § 112 . The rules and underlying public policy rationales of the latter group of precedents clearly dictate an affirmance in the present case on the ground of res judicata.

The “defects in the disclosure” of appellant’s parent case, to which the majority refers, were certainly not defects under 35 U.S.C. § 112 , in the ordinary patent sense of the word. The only “defect” was that the specification did not lay a foundation for consideration of the first Stafford affidavit, not that the original specification did not adequately support the claims under 35 U.S.C. § 112 . As the board correctly pointed out in its opinion for the case at bar:

In the parent of the present application, on the other hand, there was never any question concerning the sufficiency of the disclosure of the claimed compounds. The claimed compounds were adequately disclosed, as well as the method of making them and their utility. It was a complete disclosure forming ample basis for adjudicating the patentability of the claims presented therein.

*636 The majority stresses that none of the cited cases “is identical in every respect” to the present case. I do not find this particularly surprising, because of the extreme fact situation here. It is staggering to think that an applicant, subsequent to a final adjudication on the merits by a Federal appellate court adverse to patentability of his claims, would then proceed to file another application with the same identical claims in the Patent Office. What is even more staggering, however, is that the majority effectively waives the Patent Office right to reject these identical claims on the ground of res judicata. Perhaps not since the Barratt case at the . turn of the century has a case appeared before a Federal appellate court presenting such an extreme fact situation with regard to applicability of the res judicata doctrine tc ex parte patent cases. At least, in the Prutton, Lundberg, Fried and Szwarc cases, different claims were presented for adjudication in the continuation or continuation-in-part applications, although these cases mostly involved claims which were patentably indistinct from the claims previously adversely adjudicated in the respective parent cases, either on the merits with respect to the issue of obviousness under 35 U.S.C. § 103 , or with regard to the formal issue of sufficiency of supporting disclosure for the claims under 35 U.S.C. § 112 .

With respect to the Gustavson and Schott cases, the latter being no longer a viable precedent since it was “expressly repudiate^]” and overruled by the board, sitting en banc, in Ex parte Budde, 150 USPQ 469 (1966), it is possible that the board, as an appellate tribunal within the Patent Office, may possess the requisite authority to waive res judicata rejections on behalf of the Office. Even if this should prove to be the case, the rationale would not apply to this court, which is in no way, shape, or form part of the Patent Office and has no authority from either Congress or the Commissioner to waive rights to which the Patent Office may be entitled, such as the right to rely on the well-established legal doctrine of res judicata as a defense for its refusal to grant a patent in an appropriate case coming within the doctrine, such as this one.

While the majority speaks in terms of appellant’s “right” to a patent on the presently appealed, and previously adversely adjudicated, claims, it is clear to me that this so-called “right” is barred by the final judgment of this court in the first Herr case. The different record, and especially the fact that the Patent Office now temporarily considers the claims to be unobvious in view of the new and different record in this case, is "immaterial.” In re Prutton, supra. In the words of the famous Latin maxim of which res judicata are the opening words:

Res judicata facit ex albo nigrum; ex nigro, album; ex curvo, rectum, ex recto, curvum. A thing adjudged makes white, black; black, white; the crooked, straight; the straight, crooked. 1 Bouv.Inst. no. 840.

While the majority views the provisions of the Manual of Patent Examining Procedure, § 706.03 (w) as “irreconcilable,” it is clear that the same, or substantially the same, claims do not present a significantly different issue of patentability, which is presented only when the new claims are patentably distinct from the old claims previously adversely adjudicated on the merits by an appellate tribunal. See In re Prutton, In re Lundberg, supra.

The majority expresses the view that affirmance of the res judicata rejection in this case would “unjustly enrich the public at the expense of the inventor, a result we feel confident Congress could not have intended.” I am not at all confident about the Congressional intent to which reference is made, in the absence of items of legislative history, of which the majority cites none. It is interesting to note that this court, which recently possessed only limited appellate jurisdiction, has now, by majority fiat, become a court of general jurisdiction *637 with inherent equity powers to prevent unjust enrichment.

I am firmly of the opinion that waiver of res judicata is discretionary with the Commissoner and that he may delegate this discretion in the first instance to the primary examiners. If the examiner abuses his discretion by refusing to waive the doctrine in an appropriate case calling for such waiver, then the remedy lies in a petition to the Commissioner to exercise his supervisory authority over the examiner. Ultimate review of the Commissioner’s discretionary actions, upon eventual exhaustion of available administrative remedies, may be had in District Court under the Administrative Procedure Act, 5 U.S.C. § 1009 . My point is that waiver of, or refusal to waive, the res judicata doctrine is a discretionary matter, reviewable by equitable petition and not by legal appeal. Thus neither the board nor this court should consider the equitable issue of whether the circumstances of this case make the examiner’s refusal to waive the doctrine of res judicata an abuse of discretion on his part. Although no express or implied waiver of the doctrine by the Patent Office can possibly be found on the record of this case, the majority effectively holds that the Commissioner or his authorized representative, the primary examiner, ought to have waived the doctrine, and that their refusal to do so in effect amounts to an arbitrary and capricious abuse of discretion, since it leads to unjust enrichment of the public. I do not think that this court should consider such issues as abuse of discretion and associated unjust enrichment, since such questions are clearly beyond the scope of our strictly limited jurisdiction. See In re Wiechert, 370 F.2d 927 , 54 CCPA 957.

The “somewhat exaggerated fears of the Patent Office” which the majority is “inclined to discount” are well and appropriately stated by the board as follows :

Moreover, if appellant’s position were adopted, it would permit an applicant to present a claim to a compound based upon a particular disclosure of properties and utility and, upon rejection in view of prior art, to prosecute such claim to an appellate decision. If unsuccessful, he could then file a new case with the identical compound claim but disclosing additional properties and utility and insist on unobviousness by virtue of this added material. Unsuccessful in his second attempt to obtain a patent, he could then file a third application with the same claim but with new disclosure of properties and utility. This procedure could be continued until he finally found some aspect which would serve to [patentably] distinguish from the prior art. We do not regard this recital as a reductio ad absurdum, but as a practical illustration of the endless litigation which res judicata is designed to prevent.

The majority is unable “to see why, as a practical matter, an applicant would deliberately” resort to the procedure here authorized. The most obvious reason is to delay issuance of the patent as long as possible, in order to complete testing and development work on the new invention and establish a commercial market therefor. As stated in Woodling, “Inventions and Their Protection,” Second Edition (1954), pp. 312-3:

There are some inventors who purposely seek delay. At first glance such a course may seem ill-advised in view of the fact that there is no protection until the patent is granted. * * * However, there actually are many advantages to be gained in protracting the prosecution which may greatly outweigh the disadvantages of not being able to sue infringers during the pendency of the application. The most obvious reason for delay is to cause the 17-year term of the patent to coincide with the manufacturing period which will produce the maximum financial return. This observation is particularly true where the invention is born before its time.

Another reason for delay is to give the inventor sufficient time for ex *638 periment and consultation before his patent issues. * * *

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Besides affording an opportunity for experiment, delay makes it possible for the inventor to analyze the construction of competing devices and to make his patent cover features of the competitor’s device which are common to those shown in his application. * * *

As a classic example of an invention “born before its time,” for which deliberately delayed prosecution in the Patent Office was most advantageous, Wood-ling states the following at pp. 306-307:

The longest prosecution on record took 36 years. On October 22, 1880, Charles F. Fritts, an inventor, filed a patent application for a method of recording and reproducing soound (the modern sound movie) by a photographic process * * *. It was a meritorious invention. On October 31, 1916, after a period of more than 36 years, the Patent Office granted the Letters Patent.

Obviously, there was a much greater market imminent for sound movies in 1916 than in 1880. I do not believe that sound public policy favors encouraging an attorney to put his worst foot forward in representing his clients' interests in the initial stages of patent application prosecution. Yet this is exactly what the majority decision encourages. Attorneys will now be well advised to hold back their best evidence in reserve until it is in their clients’ interests to allow their patents to issue, after a sufficient period of deliberate delay in prosecution. In the interim, attorneys may present first their weakest evidence of patent-ability to the Patent Office, and remain safe and secure in the knowledge that, even if an appellate court decision adverse to patentability of the claims on the merits under 35 U.S.C. § 103 is obtained, a new application may still be filed with the same identical claims and somewhat stronger evidence of patent-ability submitted, retaining the best evidence thereof in reserve until it is in the clients’ best interests to allow patents to issue on their applications.

The “overriding reason” stated by the majority for reaching the result here “is that Congress has authorized the course appellant has followed, and doubtless expects compliance by the Patent Office and the courts,” citing 35 U.S.C. § 120 .

I am sure it would come as quite a surprise to the drafters of the Patent Act of 1952 to learn that section 120 must be interpreted as abolishing the res judicata doctrine in ex parte patent cases. In identical language the House Report No. 1923, 82nd Congress, 2d Session (1952), p. 20, and Senate Report No. 1979, 82nd Congress, 2d Session (1952), p. 20, both read as follows with respect to section 120, U.S.Code Cong. & Admin. News 1952, p. 2394:

This section represents present law not expressed in the statute, except for the added requirement that the first application must be specifically mentioned in the second.

The Reviser’s Note, 35 U.S.C.A. § 120 , reads the same as above. See also Federico, “Commentary on the New Patent Act,” 35 U.S.C.A. pp. 31-33 (1954).

In view of the clear legislative history of section 120 to the effect that it is mere codification of “present [case] law” which prior to 1952 was “not expressed in the statute,” it is beyond my comprehension how the majority can possibly interpret this section as evidence of Congressional intent to abolish the well-established legal doctrine of res judicata in ex parte patent cases. Obviously, a new application may be filed with new claims which are patentably distinct from the previously adversely adjudicated claims. See In re Prutton, In re Lundberg, supra. Likewise, if an adverse appellate tribunal decision on the merits is avoided, a new application may be filed with new evidence of patent-ability for the same claims that were finally rejected by the examiner in the previous case. Appellant could have pursued this procedure instead of taking an *639 appeal in his first case. In re Fried, supra. But the doctrine of res judicata, if not waived, manifestly precludes the obtaining of a patent on a new application with the same claims which were previously adversely adjudicated in a final decision on the merits under 35 U.S.C. § 103 by a Federal appellate court, as here, regardless of whether the new case is a continuation, In re Lundberg, supra, or continuation-in-part application, In re Prutton, supra, and regardless of whether new evidence of patentability is made of record in the second or continuation-in-part application. In re Barratt’s Appeal, In re Prutton, supra. Since the above-cited cases, especially Barratt and Overland, reflect “present [case] law” at the time of enactment of the Patent Act of 1952, I am unable to read 35 U.S.C. § 120 as abolishing the then existing case law on the applicability of the res judicata doctrine to ex parte patent cases. See Weeks v. Warp, 95 U.S.App.D.C. 235 221 F.2d 108 , (D.C.Cir. 1955), which, like Prutton and Lundberg , was decided subsequent to enactment of the 1952 Act.

I also note with interest the following statement which appears in In re Lundberg, 280 F.2d at 872 , 47 CCPA at 1148-1149:

With respect to appellants’ general allegation that they were entitled to have their [continuation] application passed on according to the law as set forth in the Patent Act of 1952, our review convinces us that the applications have been so treated at all times subsequent to the effective date [January 1, 1953] of that act. The applications formerly before us were certainly so treated in this court [in accord with the “present law”]. However, we did not always agree with appellants on the construction of various provisions of that act, nor do we now.

Apparently, the majority view of this court as to the effect of the Patent Act of 1952 on applicability of the legal doctrine of res judicata to ex parte patent cases has completely changed since the Lundberg case was decided in 1960. In contrast, the position of the Court of Appeals for the District of Columbia Circuit with regard to this doctrine has remained substantially constant, at least from the 1899 Barratt case to the 1955 per curiam decision in Weeks v. Warp, supra.

For the reasons stated above, I would affirm the decision of the board on the ground of res judicata.

. And it has been so held. See Weeks v. Warp, infra.

. See also In re Citron, 326 F.2d 418 , 51 CCPA 869, (1964). If the Patent Office had lost the first Herr case, however, rather than won it, then res judicata would indeed apply against the Office with respect to a rejection involving the same claims, the same prior art reference, and the same statutory ground of rejec- . tion, such as we have here.