Thursday, January 03, 2013

The Board discusses double-patenting in a Bristol-Myers case

The good news for BMS in Ex parte Bandyopadhyay was that the obviousness rejection was reversed. The bad news: the double-patenting rejections were maintained.

The funny part of the case was that the Board cited In re Kaplan, 789 F.2d 1574 (CAFC 1986) to illustrate a point on double-patenting apparently misunderstood by BMS.

In fact. in Kaplan, the CAFC took the Board to task for misunderstanding double-patenting:

We turn now to consideration of the obviousness aspect of this obviousness-type double patenting rejection, which had to be based, of course, on what is claimed in the Kaplan patent. The board relied on Kaplan claim 4, which depends from claim 2, which depends from claim 1. These claims are set forth above. The board relied on the fact that claim 4 calls for "an organic solvent." The board did not say that the use of appellants' "solvent mixture of tetraglyme and sulfolane" would be obvious from claim 4. Indeed, in that portion of the board's opinion in which it reversed all of the examiner's rejections, the board held, on the record which contains appellants' declarations, that they, not Kaplan, invented the use of those mixed solvents, that appellants had antedated Kaplan as a reference under 35 U.S.C. Sec. 102(e), that the Kaplan patent cannot be used to show obviousness under Sec. 103, and that appellants' claim was not obvious from a cited patent to Pruett et al. It also reversed a rejection under Secs. 102(g)/103 for obviousness which used Kaplan as the sole basis. Then it turned about and made an obviousness-type double patenting rejection based on Kaplan's claim 4. This rejection was predicated on the novel argument, particularly set out in the board's second opinion on rehearing, that Example 45 in Kaplan (which is appellants' invention, disclosed in Kaplan's patent to conform with the best mode requirement of Sec. 112) "provides some of the support for the term 'organic solvent' as used in claim 4 of the Kaplan patent."

Thus, after concluding that the Kaplan patent is not available to show obviousness of appellants' claimed process, the board has nevertheless used Kaplan to show obviousness in a double patenting context, for it relied on no other reference. Moreover, that part of the Kaplan disclosure used to do this is a description of appellants' joint invention. The board's claim-support theory does not suffice to justify this anomalous result. There is adequate support for the "organic solvent" limitation in claim 4 apart from appellants' specific mixed solvent invention, including the disclosure of the separate solvents in the mixture which are separately claimed by Kaplan. There is no way the board could have found appellants' claimed invention to be an obvious variation of what Kaplan claims except by treating the Kaplan patent disclosure as though it were prior art. This has repeatedly been held in our precedents to be impermissible. In re Vogel; In re Aldrich; In re Boylan, all supra. In effect, what the board did was to use a disclosure of appellants' own joint invention which had been incorporated in the Kaplan sole disclosure to show that their invention was but an obvious variation of Kaplan's claimed invention. That amounts to using an applicant's invention disclosure, which is not a 1-year time bar, as prior art against him. That is impermissible. D. Chisum, Patents Sec. 3.08, Sec. 5.03[f].

The PTO brief argues that Vogel sanctions such use of Kaplan's disclosure. We disagree. We do not find the factual situation here comparable to that in Vogel; neither was the reasoning of the board underlying the Vogel rejection comparable to the claim-supporting theory of the board in this case. Each double patenting rejection has to be decided on its own facts. Vogel dealt with one difficult-to-analyze situation, this case presents a different one.

Leonard Kaplan, once a professor at University of Chicago (and there-known to LBE), later became a patent lawyer. Roy Pruett was a colleague of LBE at Exxon.


Post a Comment

<< Home