Federal Circuit Finds Obviousness-Type Double Patenting Where Claims Recited Interchangeable Combinations of Genus and Species Elements

In In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371 (Fed. Cir. 2008), Basell Poliolefine Italia, S.P.A. (“Basell”) appeals two decisions of the United States Patent and Trademark Office (“PTO”) Board of Patent Appeals and Inferences (“Board”) that affirmed the rejections of all claims of U.S. Patent 6,365,687 (“the ‘687 patent”) as unpatentable under 35 U.S.C. §§ 102(b) and 103(a) and the doctrine of obviousness-type double patenting.  The ‘687 patent’s pending claims generally involve the production of crystalline copolymers of alpha-olefines having four or more carbon atoms, using a catalyst obtained by reacting an aluminum alkyl with a titanium halide.

On June 7, 2007, the PTO initiated a Director-ordered reexamination for all claims based on double patenting in view of two expired patents issued to Natta, U.S. Patents 3,256,235 and 3,403,139. During the course of reexamination, the Examiner added double patenting rejections based on two other expired patents issued to Natta, including U.S. Patent 3,582,987 (“the ‘987 patent”).  On March 30, 2005, the Board affirmed the double patenting rejections. The Board determined that the patentees were entitled only to a one-way test for double patenting because the patentees “significantly controlled the rate of prosecution throughout the chain of ancestor applications.” The Board also upheld the Examiner’s double patenting rejections on each ground.

In a second appeal, on March 29, 2007, the Board finalized all of the obviousness-type double patenting rejections. The Board also affirmed additional rejections based on a Vandenberg (U.S. Patent 3,058,963), but the Federal Circuit did not address this issue.

On appeal, Basell argues that the Board erred in rejecting the claims for obviousness-type double patenting in view of the ‘987 patent. Basell first asserted that the Board erred by failing to apply a two-way test for double patenting. 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 re Berg, 140 F.3d 1428, 1432 (Fed. Cir. 1998). Only in unusual circumstances, in which an applicant has been unable to issue its first-filed application because “the PTO [wa]s solely responsible for the delay in causing [a] second–filed application to issue prior to [a] first,” may a two-way test apply. In those cases that are a narrow exception to the general rule of the one-way test, “the examiner also asks whether the patent claims are obvious over the application claims.” Id. Here, however, the record showed that Natta’s actions had a direct effect on the prosecution, and, thus, the PTO was not solely responsible for the prosecution delays. The Federal Circuit, therefore, agreed with the Board that the two-way test for double patenting did not apply.

Basell’s second argument was that the ‘987 patent was considered during original prosecution of the ‘687 patent and thus cannot be considered during reexamination under the previous version of 35 U.S.C. § 303(a). The ‘987 patent was cited during the prosecution of a different patent application, which was ultimately abandoned, and the claims of that application differed from the claims of the ‘687 patent in that the recited catalyst contained a titanium chloride limitation, whereas the ‘687 patent encompasses catalysts that generally include the generic titanium halides. Because the earlier rejection based on the ‘987 patent involved different claims than those at issue, the Federal Circuit agreed with the Director that the Board was not precluded from relying on the ‘987 patent in its double patenting rejection.

The main issue before the Federal Circuit was then whether the claims of the ‘687 patent defined an obvious variation of the claims of the ‘987 patent. The Federal Circuit noted that both the claims of the ‘987 patent and the ‘687 patent cover alpha olefins of C4 to C6, and the ‘987 patent covers genuses that include the other elements of claim 1 of the ‘687 patent.  The Federal Circuit noted that, “[w]hile it is true that a generic expression does not render obvious all of the species that it encompasses, these claims are both generic and specific to each other in interchangeable ways, involving the same groups of species.”  For this reason, the Federal Circuit agreed with the Board’s conclusion that the claims of the ‘687 patent were not patentably distinct from claim 1 of the ‘987 patent.

The Board and the Federal Circuit also looked at statements from the two patents’ specifications as evidence of what was intended to fall within the meaning of the claims. Relying on In re Kaplan, 789 F.2d 1574 (Fed. Cir. 1986), Basell asserted that the rejection had to be reversed because the Board improperly used the ‘987 patent specification to narrow the scope of the ‘987 patent claims in determining that the claims were not patentably distinct. The Federal Circuit pointed out, however, that In re Vogel, 422 F.2d 438 (CCPA), which reaffirmed the holding in Kaplan, held that while not usable as evidence of prior art, a patent’s specification may be used to determine whether an application claim is merely an obvious variation of an invention claimed in a patent by using it to learn the meaning of terms and to “interpret the coverage of [a] claim.” Thus, the use of the specification for purposes of definition was permissible, whereas the use of the specification for evidence of prior art is not.  Since the Board opinion referred to the specification solely for purposes of defining the claim terms and not as prior art itself, the Federal Circuit found that the references to the specification in the Board opinion were not improper.

Basell’s last major assertion was that the double patenting rejection should have been reversed because the Board failed to expressly conduct an analysis under Graham v. John Deere Co., 383 U.S. 1 (1966), as of the earliest filing date claimed in the ‘687 patent. The Federal Circuit, however, found that the Board carefully considered claim 1 of the ‘987 patent and the claims of the ‘687 patent and determined that a person of ordinary skill in the art would have found the ‘687 patent claims to have been obvious. Moreover, the Federal Circuit noted that obviousness for purposes of obviousness-type double patenting is “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.” quoting In re Braat, 937 F.2d 589, 592-93; 19 USPQ2d 1289, 1292 (Fed. Cir. 1991).  Thus, the Federal Circuit found no basis for reversing the Board’s decision merely because the Board failed to expressly set forth each of the Graham factors in its analysis.

In total, the Federal Circuit found that the Board did not err in concluding that the pending claims of the ‘687 patent were barred under the doctrine of obviousness-type double patenting, and, thus, affirmed the Board’s decision.

Significance to Patent Applicants

In re Basell Poliolefine Italia provides a reminder as to how broadly the doctrine of obviousness-type double patenting is defined, and more importantly, the type of evidence that is required for an Examiner to make a prima facie obviousness-type double patenting rejection.  So long as a genus feature in one claim of a first patent covers a species feature in another claim of a second patent, the Examiner may decide that there is an obviousness-type double patenting issue and will use the specification as evidence of claim scope to determine whether a genus is known to cover the species.  Moreover, in establishing a prima facie rejection, it appears that the Examiner need only point out that the genus feature of one patent covers the species feature of another patent without going into the more detailed analysis normally required for finding obviousness under 35 U.S.C. §103.  When faced with such an analysis, it is thus incumbent on the applicant to provide evidence of non-obviousness, or to file a terminal disclaimer.

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