Application of Milton E. Herr

The Board of Appeals wrote a carefully reasoned opinion (Mar. 29, 1965) in this case and, a year afterward, gave extensive en banc consideration to the problem of res judicata in the Patent Office. Ex parte Budde, 150 USPQ 469 (Mar. 14, 1966).1 The en banc consideration was stated to have been “because of the importance of the legal issue,” and it is indeed important. It is also a question of some difficulty and much confusion.

In deciding this case the board majority placed primary reliance on two of our decisions, Lundberg and Prutton.. As to the first it said:

In our opinion, the case of In…