If you’re going to appeal your application to the Board twice, res judicata should make you think twice

Sometimes it makes sense to appeal an application more than one time. Perhaps the Examiner isn’t complying with the direction from the first Board decision. Maybe an invention is so valuable that you’d rather avoid overlimiting the claims with lots of prosecution history estoppel and claim amendments and instead try getting broader claim scope through the appeal process the second time. Or maybe the application is in such a desperate state that another appeal is the only good option left. Regardless of the motivation for appealing twice, a good practice tip shown in a recent ex parte decision shows the importance of making sure that the claims are different enough from a previously unfavorable outcome.

In Ex Parte Tsypkaykin (PTAB Jun 20, 2019), on appeal was an obviousness rejection. The PTAB had previously decided a substantially similar obviousness rejection a few years previous in Ex Parte Tsypkaykin (PTAB Sept. 22, 2016). Buchanan Ingersoll went up against Examiner Jay Hann the first time and lost, but in the second attempt had made claim amendments. It was Round II of Buchanan Ingersoll vs Examiner Hann.

In the recent decision, the Board first adopted the Examiner’s findings regarding the obviousness rejection, affirming the rejection. The panel then agreed with the Examiner that the claim amendments are synonymous or “not patentably distinct” from the previous claim, which rejection was affirmed previously. See MPEP 706.03(w), 706.07(h)(XI)(A). Here are the amendments to the representative

Thus, the rejection was also affirmed based on res judicata.

A good law student should be able to tell you about the doctrine of res judicata. This is a doctrine of judicial efficiency and fairness, which is that an issue that has been decided once need not be decided again. What that good law student may not know is how res judicata applies to administrative bodies, such as the USPTO. At least from the patent prosecution perspective, the PTAB seems open to using this doctrine if the claims are not patentably distinct from claims that were previously affirmed as rejected.

How often does res judicata get applied by the board? In short, extremely rarely. For one, it is rare that an application gets appealed twice. It’s even more rare for res judicata. Of over 100,000 decisions, the Anticipat database showed 45 such decisions with the key word match.

Interestingly, both decisions were penned by Gregg I. Anderson. Given the small cohort of PTAB judges for tech centers, having the same PTAB judge write the opinion for two decisions is not out of the ordinary. Here, Judge Anderson may have recognized familiar argumentation and was not convinced the second time. As a former litigator, he was also familiar with res judicata. The two panels had two overlapping judges: the second panel consisted of administrative patent judges Carolyn D. Thomas, Jeremy J. Curcuri, and Gregg I. Anderson while the first panel included Jeremy J. Curcuri, Gregg I. Anderson and Eric B. Chen.

Keep in mind res judicata when pursuing a second appeal. It might save you a lot of effort and time.