The opinion
SMITH, Judge
(concurring).
I agree with the decision of the majority on the issue of “nonobviousness” over the prior art under 35 U.S.C. § 103 . However, I believe that before this issue can properly be decided, it is necessary to dispose of the rejection of appellants’ claims on the ground of res judicata. My opinion is that this rejection should have been reversed. In re Hellbaum, 371 F.2d 1022 , 54 CCPA 1051 (1967).
The application here on appeal is denominated by the appellants as a “continuation” of Serial No. 767,583 filed October 16, 1958, in which an appeal to the Board of Appeals resulted in a decision adverse to the appellants. All of the presently appealed claims were rejected on the ground of res judicata in view of a prior decision by the board on the claims in the earlier application.
It seems to me that a primary consideration necessarily is whether this rejection on the ground of res judicata is proper. If proper, the rationale which underlies it is that the same issues now presented to the board had been decided adversely to appellants’ position. Here, we have alternative grounds of rejection, but the res judicata rejection, if sustainable, would, in my view, be dispositive.
Turning then to the merits of the res judicata rejection, I note that the examiner enumerated the following differences in the appealed claims over the previously adjudicated claims:
* * * The only differences between the present claims and the previously considered claims and as admitted by appellants (note page 9, last paragraph of the brief) is that claims 1 and 4 define the resin composition as “being capable of remaining within the viscosity range (1 to 35 million poises) for at least two weeks under storage conditions at room temperature”. Claims 2 and 3 specify stability “for months” under the same conditions. The present claims are otherwise structurally similar to claims 8-10 of the appealed [parent] application and the Court of Appeals has previously held that claims in an applicants’ earlier application considered unpat-entable over certain patents, the applicants are bound by that decision, and only if the claims on appeal are pat-entably different from the subject matter of those claims is appellant entitled to have them considered on their merits. In re Prutton [40 CCPA 975, 204 F.2d 291 , 97 USPQ 447 (1953)]. The present claims merely by more clearly reciting viscosity conditions under specified storage conditions are not deemed patentably distinct over the previously considered claims which were rejected as unpat-entable over the patents of record. * * *
The board affirmed, elaborating somewhat to the effect that:
The first change is mentioned on page 18 of appellants’ brief while at the same time acknowledging that the prior art shows a roll of material, but there is no indication why the figure of 100 feet was selected, other than the fact that it is a round figure of three digits. Clearly, appellants cannot as *1023 sert that a 50 foot roll or a 90 foot roll is patentably distinguishable from “a roll of at least 100 feet in length.” We do not consider this change to be worthy of further discussion.
The second change involves a more precise definition of the storage conditions, causing the Examiner to omit a rejection on the ground of indefiniteness, but the substantive aspect of the claim, as regards its patentability over the art, has not been affected in any way.
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The foregoing holding leads to the conclusion that res judicata is here applicable, consistently with the decisions in In re Prutton, [supra,] and In re Lundberg et al., [47 CCPA 1140, 280 F.2d 865 , 126 USPQ 412 (I960)] unless there is some good reason why the principles of these decisions are not controlling.
Appellants contend that the affidavits of Gerald R. Modig and Hubert J. Tierney in the present record constitute evidence justifying a different decision and they rely upon certain decisions to support their position. [Emphasis added.]
After distinguishing certain decisions, the board stated:
In accordance with the foregoing discussion, the newly submitted affidavits of Modig and Tierney can have no effect on the issue of res judicata, and the rejection on this ground must be sustained.
I think it is quite clear that the decision of the board affirming the examiner’s rejection on that ground may not stand. Initially, the claims here presented in this appeal, differing as they do from the claims previously adjudicated may well present different issues of patentability than were previously decided. In re Hellbaum, supra; In re Szwarc, 319 F.2d 277 , 50 CCPA 1571 (1963); In re Fried, 312 F.2d 930 , 50 CCPA 954 (1963). The board’s reliance upon our decisions in Prutton and Lund-berg in deciding that the change in appellants’ claims present again the same issues of patentability is not proper. See In re Herr, 377 F.2d 610 , 54 CCPA 1315 (1967) (especially concurring opinions). Moreover, appellants’ change eliminated the prior rejection on the ground of indefiniteness. A “definite” claim, in my view, presents a substantially different issue of patentability than an “indefinite” claim.
In any event, the fundamental error of the board resides in its failure to give “effect” to the “newly submitted affidavits of Modig and Tierney.” In re Herr, supra. Appellants’ development of a broader factual base upon which to urge patentability is the essence upon which legal conclusions under section 103 are predicated. That development may not be arbitrarily foreclosed by the Patent Office by improperly asserting that the same issues had previously been decided. 1 Thus, I would reverse the decision of the board insofar as it affirms the examiner on the issue of res judicata.
. See Schwartz, Res Judicata as Applied in Patent Office Prosecution and Patent Enforcement Litigation, 49 J.P.O.S. 637 (1967).