Friday, November 14, 2008

CAFC on obviousness-type double-patenting

The case IN RE BASELL POLIOLEFINE ITALIA S.P.A. involves U.S. Patent 6,365,687, which has a rather ancient pedigree:

The ’687 patent issued from U.S. application Ser. No. 07/883,912 (“the
’912 application”), which was filed on May 12, 1992 and is “a continuation, of U.S.
application Ser. No. 07/719,666, filed Jun. 24, 1991, now abandoned, which is a
continuation of 07/607,215, filed Oct. 29, 1990, now abandoned, which is a continuation
of 06/906,600, filed Sep. 10, 1986, now abandoned, which is a continuation of
06/498,699, filed May 27, 1983, now abandoned, which is a continuation of 04/710,840,
filed Jan. 24, 1958, now abandoned, which is a divisional of 04/514,097, filed Jun. 8,
1955, now abandoned.
” ’687 patent col.1 ll.5-14.

The deciding issue was one of obviousness-type double-patenting:

Because we conclude that the Board’s decision can be affirmed based on its
obviousness-type double patenting rejection in view of the ’987 patent, we focus our
inquiry on that issue. Double patenting is a question of law that we review de novo. In
re Emert, 124 F.3d 1458, 1460 (Fed. Cir. 1997).
[The Emert case involved Exxon; one
might contemplate other Exxon/Esso cases of relevance to this case.]


“The doctrine of double patenting is intended to prevent a patentee from obtaining a time-wise
extension of [a] patent for the same invention or an obvious modification thereof.” In re
Lonardo, 119 F.3d 960, 965 (Fed. Cir. 1997).

***Judge Newman in dissent noted several issues:

The PTO apparently recognized that there was a problem with its initiation of this
reexamination, for the Board stated that if this court were to find that the reexamination
had been improperly initiated, on remand the PTO would simply institute another
under the amended statute. Ex parte Basell, Appeal No. 2004-1390,
Reexamination Control No. 90/006,297, at 122 n.37 (Aug. 19, 2004).
[Does this remind anyone of the CAFC discussing the Duffy appointments problem?]


The delays due to patent interferences are notorious, and here there were three,
involving multiple parties and multiple countries. Interference delays generally flow from
not only the complexity of the subject matter and requisite proofs, but also the due
process that PTO procedures assure in these complex inter partes proceedings,
including the rights of appeal and the authorized judicial proceedings.


Expert polymer scientists testified that it would not have been predicted whether or how the higher
olefins would behave in this system, or which catalysts would be effective.


The presence of overlapping subject matter, and the
specific choice of catalyst, present technological questions that were answered by the
experts, without contradiction. The record contains no contrary authority, no citations or
references or arguments, other than the flawed presumption of “homology” created by
my colleagues.


In General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272 (Fed. Cir. 1992), the court stressed the
critical role of patentable distinction in obviousness-type double patenting:
[T]he determining factor in deciding whether or not there is double
patenting is the existence vel non of patentable difference between two
sets of claims. The phrases actually used in the opinion include
“patentably distinguishable,” “patentable distinctions,” and “whether such
differences would have been obvious to one of ordinary skill in the art.”
They are all equivalent.

Id. at 1278-79.


In sum, in view of the recognition that the process in the ‘687 claims is patentably
distinct from the ‘987 claims, double patenting can not lie. See Application of Sarett,
327 F.2d 1005, 1016 (C.C.P.A. 1964) (reversing rejections for obviousness-type double
patenting because generic and specific claims may nonetheless be patently distinct);
see generally In re Jones, 958 F.2d 347, 350 (Fed. Cir. 1992) (explaining that a
disclosure of a chemical genus does not automatically render obvious any species
within the genus).



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