DOUBLE-PATENTING DEPTH CHARGE SINKS SUBMARINE PATENT

In Re Basell Poliolefine Italia S.P.A., [2007-1450] (November 13, 2008) [LOURIE, Newman, Linn] The Federal Circuit affirmed the decision of the BPAI that U.S. Patent 6,365,687 was invalid for obviousness-type double patenting.
DISCUSSION: The ’687 patent, entitled “Process for the Polymerization and Copolymerization of Certain Unsaturated Hydrocarbons,” issued on April 2, 2002, claiming priority from Italian Application No. 25,109, filed July 27, 1954. On a Commissioner ordered reexamination, the claims were rejected for obviousness-ness type double patented, and the BPAI affirmed, finding that the circumstances did not dictate the application of a two-way test for double patenting. The Board concluded that the patentees “significantly controlled the rate of prosecution throughout the chain of ancestor applications,” and thus the one-way test applied. The Federal Circuit first noted that double patenting is a question of law, and that the determination of whether a one-way or two-way analysis applies is also a question of law. The Federal Circuit noted that the judicially created doctrine of obviousness-type double patenting “prohibit[s] a party from obtaining an extension of the right to exclude through claims in a later patent that are not patentably distinct from claims in a commonly owned earlier patent.” In determining double patenting, a one-way test is normally applied, in which the examiner asks whether the application claims are obvious over the patent claims. In unusual circumstances, where an applicant has been unable to issue its first-filed application, a two-way test may apply, in which “the examiner also asks whether the patent claims are obvious over the application claims.” The Federal Circuit explained that the two-way test is “a narrow exception to the general rule of the one-way test” that arose out of the concern to prevent rejections for obviousness-type double patenting when the applicants filed first for a basic invention and later for an improvement, but, through no fault of the applicants, the PTO decided the applications in reverse order of filing, rejecting the basic application although it would have been allowed if the applications had been decided in the order of their filing. The Federal Circuit readily concluded that the applicant was the cause of the delay and thus they were not entitled to the two-way test for double patenting.
The Federal Circuit also rejected the patentee’s complaint that the Board did not conduct a full Graham analysis, noting “this court has endorsed an obviousness determination similar to, but not necessarily the same as, that undertaken under 35 U.S.C. § 103 in determining the propriety of a rejection for double patenting.