Ex Parte 5,648,497 et al

Patent Trial and Appeal Board

Jun 19, 2013

90009811 (P.T.A.B. Jun. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/009,811 08/25/2010 5,648,497 5903
23492 7590 06/20/2013
PAUL D. YASGER
ABBOTT LABORATORIES
100 ABBOTT PARK ROAD
DEPT. 377/AP6A
ABBOTT PARK, IL 60064-6008
EXAMINER
HUANG, EVELYN MEI
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
06/20/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PUBLIC PATENT FOUNDATION
Requester

v.

ABBOTT LABORATORIES
Patent Owner and Appellant
____________

Appeal 2012-012613
Reexamination Control 90/009,811
Patent U.S. 5,648,497
Technology Center 3900
____________

Before LORA M. GREEN, RICHARD M. LEBOVITZ, and
RAE LYNN P. GUEST, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL

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Appeal 2012-012613
Reexamination Control 90/009,811
Patent 5,648,497

4
rows with no shading list the ‘114, ‘587, and ‘387 applications that led to the
‘206 species patent.
746,020 the '020 application 8/15/1991 CIP
777,626 the '626 application 10/23/1991 CIP
998,114 the '114 application 12/29/1992 CIP
121,673 the '673 application 9/14/1993 CON 5,354,866
158,587 the '587 application 12/2/1993 CIP
270,210 the '210 application 8/23/1994 DIV
410,623 the '623 application 3/24/1995 DIV 5,268,497 
(7/15/1997)
423,387 the '387 application 4/25/1995 CON 5,541,206 
(7/30/1996)

The ‘206 species patent (basis for Examiner’s rejection)
1. The ‘206 patent claims benefit to the ‘626 application, filed
October 23, 1991.
2. The ‘387 application, which issued as the ‘206 patent, was filed
April 25, 1995 and issued July 30, 1996.
3. The claims of the ‘206 patent were narrowed during a
reexamination of it, canceling claims 1-6, 9, and 11-15, amending claim 7,
and confirming the patentability of claims 8, 10, and 16-19.
4. Claim 7 of the ‘206 patent, after reexamination, is an independent
claim directed to a compound of a formula having a “2-monosubstituted-4-
thiazolyl or 2-monosubstituted-4-oxazolyl wherein the substituent is ethyl or
isopropyl” and “R7 is 5-thiazolyl or 5-oxazolyl.”
5. Claim 8 of the ‘206 patent is drawn to specific oxazolyl species.
6. Claim 10 of the ‘206 patent is drawn to specific thiazolyl species.
Claims 16-19 depend from claim 10.
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The ‘497 genus patent (currently under reexamination)
7. The ‘497 patent claims benefit to the ‘626 application, filed
October 23, 1991.
8. The ‘623 application, which issued as the ‘497 patent, was filed
March 24, 1995 and issued July 15, 1997.
9. Claim 1 of the ‘497 patent has claims to a genus of thiazolyl
compounds. The genus is said to encompass the thiazolyl compounds of
claims 7, 8, and 10 of the ‘206 patent. Answer 4.

IV. ISSUE
The claims of the ‘206 patent are a species of the genus claimed in the
‘497 patent. FF4-6 & 9. The ‘497 genus patent was filed before the ‘206
species patent, but issued after it. FF2, FF3, FF8, & FF9. The Examiner
has rejected claims 1-8 of the ‘497 genus patent under the non-statutory
doctrine of obviousness-type double-patenting as obvious in view of the
narrower claims of the ‘206 species patent, applying the so-called “one-way”
test of patentability. Answer 3-5. Patent Owner contends that the “two-
way” test of obviousness-type double patenting should apply. Appeal Br.
32. Under the two-way test, Patent Owner contends patentability of claims
1-8 of the ‘497 patent should be confirmed because Claims 7 and 10 of the
‘206 species patent are not anticipated or rendered obvious by claims 1-8 of
the ‘497 genus patent. Id. at 70. Thus, the issue in this appeal is whether the
one-way or two-way test is the applicable test for the obviousness-type
double patenting rejection in the instant reexamination.
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V. DISCUSSION
“The doctrine of double patenting is intended to prevent a patentee
from obtaining a time-wise extension of patent for the same invention or an
obvious modification thereof.” In re Lonardo, 119 F.3d 960, 965 (Fed. Cir.
1997). “It requires rejection of an application claim when the claimed
subject matter is not patentably distinct from the subject matter claimed in a
commonly owned patent.” In re Berg, 140 F.3d 1428, 1431 (Fed. Cir.
1998). “Obviousness-type double patenting . . . is judicially created and
prohibits an inventor from obtaining a second patent for claims that are not
patentably distinct from the claims of the first patent.” Lonardo, at 965.
Two different tests have been set forth to determine whether the
claims of an application are obvious over the claims of a commonly-owned
patent. The “one-way” test asks whether the application claims2 under
examination are obvious in view of the patent claims.3 Berg, 140 F.3d at
1432. The one-way test is the test usually applied in obvious-type double
patenting rejections. In unusual circumstances, a “two-way” test is applied
in which a second question (the second “way”) is asked: whether the patent
claims are obvious in view of the application claims. Id.
“The two-way test is only appropriate in the unusual
circumstance where, inter alia, the United States Patent and
Trademark Office (PTO) is ‘solely responsible for the delay in
causing the second-filed application to issue prior to the first.’”
Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 n.7 (Fed.
Cir. 2001) (quoting Berg, 140 F.3d at 1437); see also Basell,

2 In this case, the claims of the ‘497 patent, currently under reexamination.
3 In this case, the claims of the ‘206 patent.
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547 F.3d at 1376; Emert, 124 F.3d at 1461 (applying the one-
way test because the applicant “had significant control over the
rate of prosecution of the application,” “was responsible for the
delays in prosecution,” and “orchestrated the rate of
prosecution”); In re Goodman, 11 F.3d 1046, 1053 (Fed. Cir.
1993) (applying the one-way test because “PTO actions did not
dictate the rate of prosecution”); . . . In short, the applicant is
entitled to the narrow exception of the two-way test when the
PTO is at fault for the delay that causes the improvement patent
to issue prior to the basic patent.
In re Fallaux, 564 F.3d 1313, 1316 (Fed. Cir. 2009)
“The essential concern” when the two-way test was implemented
“was 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.” Berg, 140 F.3d at 1432.
In this case, the Examiner’s position is that the genus claims of the
‘497 genus patent are obvious in view of the species claims of the
commonly-owned ‘206 patent, particularly because at least one of the
species claims of the ‘206 patent is said to anticipate the ‘497 genus claim 1.
Answer 4-5. The Examiner applied the one-way test in making this
determination because “the claims of the ‘497 [genus] patent could have
been filed in the ‘206 [species] patent application or its parent or
grandparent application [the ‘020 and ‘626 applications] prior to the 3/24/95
filing date of the ‘497 patent application.” Answer 7. The Examiner
concluded:
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Appellant could have presented the ‘497 patent claims earlier in
one of its parent or grandparent applications but failed to do so.
The rate of prosecution of the ‘497 patent application was thus
dictated by Appellant, and not by the USPTO. As such, the
two-way test is inapplicable.
Id. at 14.
Patent Owner contends that the two-way test is applicable here
because the actual filing date of the ‘497 genus patent was before the ‘206
species patent, but the ‘497 patent issued last because of administrative
delay by the USPTO. Appeal Br. 47-48. In other words, the applications
were filed in the correct order – genus first and species second – but delays
solely attributable to the USPTO led to the issuance of the later filed ‘206
species patent before the earlier filed ‘497 genus patent. Id. at 48. Patent
Owner also contends that Berg does not apply because both sets of claims in
the ‘206 species patent and ‘497 genus patent could not have been filed in
the same application. Id. at 51.
Patent Owner also argues that the Examiner did not provide support
for the conclusion that the claims in the ‘497 patent could have been
submitted in the ‘206 patent. Reply Br. 8-9. Patent Owner also contends
that the basis of the rejection relying on this alleged fact is a new ground of
rejection. Id. at 9.
The Examiner’s determination that the claims of the ‘497 patent could
have been filed in earlier ancestor applications was made during the
reexamination proceeding. In the Final Rejection, the Examiner found that
the claims of the ‘497 patent have support in the ‘626 and ‘020 applications.
Final Rejection 3. The Examiner found that the priority date of the instant
claims is August 15, 1991, the filing date of the ‘020 Application. Id. In
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setting forth the basis of the rejection, the Examiner also found that the
claims of the ‘497 patent, directed to compounds having A and B thiazolyl
as substituents, have support in the ‘020 and ‘626 priority application. Id. at
8. We focus our analysis on the ‘626 application.
The ‘497 patent arose from the ‘623 application, filed March 24,
1995, which is stated in the related application data to be a divisional of the
‘210 application, filed August 23, 1994, which is stated to be a divisional of
the ‘673 application, filed September 14, 1993, which in turn is listed as a
continuation of the ‘626 application, filed October 23, 1991. See also ‘497
patent, col. 1, ll. 4-20. Since there are no intervening continuation-in-part
applications between the ‘623 and ‘626 applications where material could
have been added or subtracted, the Examiner had a reasonable basis to
presume that the specification of the ‘626 application is the same as that of
the ‘623 application that gave rise to the ‘497 patent. Because the
specifications are the same, and the claims are said to be described in the
‘623 application, the Examiner also had basis to presume the claims are also
described in the ‘626 application. The Examiner also reasonably relied upon
the inventors’ express statements in the ‘497 patent, listing ancestry back to
the ‘626 and ‘020 applications (‘497 patent, Section [62]; col. 1, ll. 4-10), in
finding the claims to have been described in these predecessor applications.
Taken together, the evidence was sufficient for the Examiner to have made
the conclusion that the ‘497 patent claims were fully described in the ‘626
application.
Patent Owner contends that the Examiner’s rationale about the claims
of the ‘497 patent being supported in the ‘206 patent and its ancestors
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constituted a new rejection. We disagree. The Examiner clearly stated the
same rationale in the Final Rejection. The Examiner stated:
Indeed, in all of the prior applications of the ‘497 patent family,
including 07/746,020 (filed 8/15/91, abandoned), 07/777,626
(filed 10/23/91, abandoned), 08/121,673 (filed 9/14/93, issued
as US 5,354,866 on 10/11/94) and 08/270,210 (filed 8/23/94,
abandoned), Patent Owner elected to prosecute claims directed
to compounds wherein A and B are pyridinyl (a 6-membered
nitrogen containing heter[o]cyclic ring), which were distinct
from the instantly claimed compounds wherein A and B are
thiazolyl (a 5-membered heterocy[c]lic ring containing a sulfur
and a nitrogen).
As such, in contrast to the situation of Braat, but similar
to the situation of Basell or Fallaux, Patent Owner submitted
the instant claims for the first time after many years of
deliberate, prolonged prosecution of other substantially
different claims. The delay, if any, in this case was not solely
due to the USPTO as argued by the Patent Owner; rather, it was
entirely attributable to the Patent Owner.
Final Rejection 8 (emphasis added).
Patent Owner contends that the Examiner’s legal analysis is flawed
and that the “relevant question is whether later-filed claims to an
improvement could have been filed in an earlier-filed application to a basic
invention.” Reply Br. 7. “Contrary to the position set forth in the
Examiner’s Answer, there no requirement that a later-filed application to an
improvement include claims to a broader basic invention. Such a
requirement would discourage, if not penalize, an applicant from making
improvements and filing improvement applications, thereby frustrating the
objectives of the patent statute . . ..” Id. at 8.
The Examiner did not assert that it was necessary that the later filed
application contain claims to the basic invention. The Examiner’s position,
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with which we agree, is that the “basic invention” (the genus) was described
at least as early as October 23, 1991 in the ‘626 application and thus claims
could have been presented at this time. While the Examiner did state that
the ‘497 patent claims could have been filed in the ‘206 patent application,
the Examiner also expressly stated alternatively that the claims could have
been filed in the ancestor ‘020 and ‘626 applications. Answer 7 & 14 (see
quoted passages above).
Despite the thiazolyl subject matter being present in the ‘626
application, the inventors did not choose to present thiazolyl compounds for
examination until March 24, 1995, only after filing two intervening
applications (the ‘673 application, filed September 14, 1993 and the ‘210
application, filed August 23, 1994) to different subject matter. In both these
intervening applications, the inventors chose to elect and prosecute pyridyl
compounds despite each application fully describing the claimed thiazolyl
compounds. In sum, the inventors delayed filing claims to the thiazolyl
compounds for at least 1,248 days, from October 23, 1991 (filing date of the
’26 application) until March 24, 1995 (filing date of the ‘387 application).4
Patent Owner contends that the USPTO administrative delay during
prosecution of the ‘497 patent family resulted in 1,387 days of delay,
pointing to “delays” that occurred during the examination of the ‘626, the
‘673, and the ‘210 applications. Appeal Br. 67. However, in none of these
applications were thiazolyl compound claims presented and examined.
Thus, all of the alleged delays in the preceding ‘626, ‘673, and ‘210

4 This period would be even longer if the filing of the ’020 application is
considered.
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applications occurred while the inventors chose to prosecute subject matter
other than the thiazolyl compounds of the ‘497 patent. These supposed
delays by the USPTO did not impede the Patent Owner from electing to file
an application to the claimed thiazolyl compounds. Rather, Patent Owner
made a choice to wait 1,248 days. In Fallaux, 564 F.3d at 1316, the Federal
Circuit affirmed a Board decision in which the Board found that the inventor
had ‘“dictated’ the rates of prosecution” by “elect[ing] to prosecute other
applications and delay filing the Fallaux application until six years after the
‘170 application was filed.” Id. at 1317. This same principle applies here.
The Examiner correctly decided that the one-way test is applicable.
For the above reasons, we affirm the obviousness-type double-
patenting rejection of claims 1-8 as obvious in view of claims 7 and 10 of
the ‘206 patent.

VI. PROPRIETY OF OBVIOUSNESS-TYPE DOUBLE PATENTING
REJECTIONS
Patent Owner contends that the USPTO does not have the authority to
use non-statutory obviousness-type double patenting as a basis for rejecting
the claims of a patent or application. Appeal Br. 16.
The Board’s jurisdiction in ex parte reexamination is over rejections
from the final rejection of any claim by the examiner. 35 U.S.C. § 134(b).
The question of whether the USPTO has the authority to apply non-statutory
double-patenting rejection is not within the Board’s jurisdiction to decide.
Nonetheless, we note that the Federal Circuit has determined that it is
appropriate for the Patent Office to consider, and, thus, for the Board to
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Patent 5,648,497

13
review, obviousness-type double patenting rejections during a
reexamination. See Lonardo, 119 F.3d at 965-967 (including a discussion of
the Patent Office’s authority to decide obviousness-type double patenting
rejections in reexamination pursuant to 35 U.S.C. §303(a)). We decline
Patent Owner’s request not to follow the majority decision in Lonardo.

TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

Patent Owner:

Paul D. Yasger
ABBOTT LABORATORIES
100 Abbott Park Road
Dept. 377/AP6A
Abbot Park, IL 600064-6008

Third Party Requester:

PUBLIC PATENT FOUNDATION
55 Fifth Avenue
Suite 928
New York, NY 10003