Ex parte Bailey

Board of Patent Appeals and Interferences

May 1, 2000

08119655 (B.P.A.I. May. 1, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JACK H. BAILEY
____________
Appeal No. 1996-1838
Application No. 08/119,655
____________
ON BRIEF
____________
Before STONER, Chief Administrative Patent Judge, HAIRSTON and
NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 8, 10, 11, 32, 34, 35, 37, 54 to 59 and 61
to 65, which are all of the claims pending in this
application.
We REVERSE.
Appeal No. 1996-1838 Page 2
Application No. 08/119,655
Appeal No. 1996-1838 Page 3
Application No. 08/119,655
Since the other grounds of rejection set forth in the1
final rejection (Paper No. 16, mailed October 20, 1994) were
not set forth in the examiner's answer we assume that these
other grounds of rejection have been withdrawn by the
examiner. See Ex parte Emm, 118 USPQ 180, 181 (Bd. App.
1957).
BACKGROUND
The appellant's invention relates generally to systems
for storing digital information, and, more particularly, to
video disc systems for storing digital information in a pulse-
length modulation format (specification, p. 1). A copy of the
claims under appeal is set forth in the appendix to the
appellant's brief.
The sole rejection on appeal as set forth in the
examiner's answer (Paper No. 32, mailed December 14, 1999)
is : 1
Claims 8, 10, 11, 32, 34, 35, 37, 54 to 59 and 61 to 65
stand rejected under the judicially created doctrine of
nonstatutory (i.e., obviousness-type) double patenting over
claim 24 of U.S. Patent No. 5,321,680 since the instant
application claims are not patentably distinct inventions from
the patent claims.
Appeal No. 1996-1838 Page 4
Application No. 08/119,655
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer for the examiner's
complete reasoning in support of the rejections, and to the
brief (Paper No. 19, filed September 18, 1995) for the
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, and to the respective positions set forth by the
appellant and the examiner. Upon evaluation of all the
evidence before us, it is our conclusion that the decision of
the examiner to reject claims 8, 10, 11, 32, 34, 35, 37, 54 to
59 and 61 to 65 under the judicially created doctrine of
double patenting must be reversed. Our reasoning for this
determination follows.
Double patenting is a legal doctrine that forbids an
inventor from obtaining a second valid patent for either the
same invention or an obvious modification of the same
Appeal No. 1996-1838 Page 5
Application No. 08/119,655
invention claimed in that inventor's first patent. See In re
Longi, 759 F.2d 887, 892, 225 USPQ 645, 648 (Fed. Cir. 1985).
The basic concept of double patenting is that the same
invention cannot be patented more than once since to do so
would result in a second patent that would expire some time
after the first patent expired and extend the protection
timewise. General Foods Corp. v.
Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1279-80, 23
USPQ2d 1839, 1845 (Fed. Cir. 1992); In re Kaplan, 789 F.2d
1574, 1579-80, 229 USPQ 678, 683 (Fed. Cir. 1986).
35 U.S.C. § 101 states "Whoever invents or discovers any
new and useful process, machine, manufacture, or composition
of matter, or any new and useful improvement thereof, may
obtain a patent therefor..." (Emphasis added). The
prohibition of double patenting of the same invention is based
on 35 U.S.C. § 101. In re Goodman, 11 F.3d 1046, 1052, 29
USPQ2d 2010, 2015 (Fed. Cir. 1993); Longi, 759 F.2d at 892,
225 USPQ at 648. By "same invention," the court means
"identical subject matter." Longi, 759 F.2d at 892, 225 USPQ
at 648; In re Vogel, 422 F.2d 438, 441, 164 USPQ 619, 621
Appeal No. 1996-1838 Page 6
Application No. 08/119,655
Vogel, 422 F.2d at 441-42, 164 USPQ at 621-22.2
Judge Rich in Kaplan, 789 F.2d at 1579, 229 USPQ at 682,3
stated that the restatement of the law of double patenting set
forth in Vogel "serves as a good starting place" for deciding
the double patenting issue raised in that appeal.
(CCPA 1970). A good test, and probably the only objective
test, for "same invention," is whether one of the claims would
be literally infringed without literally infringing the other.
If it could be, the claims do not define identically the same
invention. Vogel, 422 F.2d at 441, 164 USPQ at 621-22
(halogen is not the "same" as chlorine; meat is not the "same"
as pork). All types of double patenting which are not "same
invention" double patenting have come to be referred to as
"obviousness-type" double patenting. See In re Van Ornum, 686
F.2d 937, 942-43, 214 USPQ 761, 766 (CCPA 1982), which states
in discussing cases leading to Vogel's restatement of the law
of double patenting, 2,3
numerous cases were considered in which application
claims were directed to mere obvious modifications of, or
improvements on, inventions defined in the claims of
patents already issued to the same inventors, or to
common assignees, and it had been decided that they might
be allowed to go to patent if the applicants filed
terminal disclaimers. We classified these as
"obviousness type double patenting." This latter
classification has, in the course of time, come, somewhat
Appeal No. 1996-1838 Page 7
Application No. 08/119,655
loosely, to indicate any "double patenting" situation
other than one of the "same invention" type.
See also General Foods, 972 F.2d at 1279-80, 23 USPQ2d at
1844-45.

"Obviousness-type" double patenting extends the
fundamental legal doctrine to preclude "obvious variants" of
what has already been patented. See In re Berg, 140 F.3d
1428, 1432, 46 USPQ2d 1226, 1229 (Fed. Cir. 1998); Goodman, 11
F.3d at 1052, 29 USPQ2d at 2015 and General Foods, 972 F.2d at
1280, 23 USPQ2d at 1845. "Obviousness-type" double patenting
precludes issuance where there is no "patentable difference"
or no "patentable distinction" between the two claims.
Goodman, 11 F.3d at 1052,
29 USPQ2d at 2015; General Foods, 972 F.2d at 1278-79, 23
USPQ2d at 1844. This allows the public to practice obvious
variations of the first patented invention after the first
patent expires. See Longi, 759 F.2d at 892-93, 225 USPQ at
648. The courts adopted the doctrine out of necessity where
claims in two applications by the same inventor were so much
alike that to allow the latter would effectively extend the
Appeal No. 1996-1838 Page 8
Application No. 08/119,655
life of the first patent. See Gerber Garment Technology, Inc.
v. Lectra Sys., 916 F.2d 683, 686 16 USPQ2d 1436, 1439 (Fed.
Cir. 1990); In re Thorington, 418 F.2d 528, 534, 163 USPQ 644,
648 (CCPA 1969), cert. denied, 397 U.S. 1038, 165 USPQ 290
(1970).
In summary, "obviousness-type" double patenting is a
judge-made doctrine that prevents an unjustified extension of
the patent right beyond the statutory time limit. 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 when the issuance of a
second patent would provide an unjustified extension of the
term of the right to exclude granted by a patent. In order to
overcome an "obviousness-type" double patenting rejection, an
applicant may file a "terminal disclaimer," foregoing that
portion of the term
of the second patent that extends beyond the term of the
first. Berg, 140 F.3d at 1431-32, 46 USPQ2d at 1229.
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Application No. 08/119,655
Thus, if a claim sought in the application is not
identical to yet not patentably distinct from a claim in an
inventor's earlier patent, then the claim must be rejected
under "obviousness-type" double patenting rejection. See
Berg, 140 F.3d at 1431, 46 USPQ2d at 1229; In re Braat, 937
F.2d 589, 592, 19 USPQ2d 1289, 1291-92 (Fed. Cir. 1991);
Goodman, 11 F.3d at 1052, 29 USPQ2d at 2015; Vogel, 422 F.2d
at 441, 164 USPQ at 622. In determining whether a claim
sought in the application is patentably distinct from the
claims in an inventor's earlier patent a variety of tests have
been utilized. In Berg, 140 F.3d at 1433-34, 46 USPQ2d at
1230-31 and In re Emert, 124 F.3d 1458, 1461-62, 44 USPQ2d
1149, 1152 (Fed. Cir. 1997), a "one-way" test was applied.
Under this "one-way" test, the examiner asks whether the
application claims are obvious over the patent claims. In
Goodman, 11 F.3d at 1052-53, 29 USPQ2d at 2015-16 and Van
Ornum, 686 F.2d at 942-43, 214 USPQ at 766-67, a test similar
to the "one-way" test was applied. Under this test, the
examiner asks whether the application claims are generic to
any species set forth in the patent claims. In In re
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Application No. 08/119,655
Schneller is a rather unusual case in that there was no4
majority opinion because only Judges Rich and Smith joined the
principal opinion, while Judges Worley and Kirkpatrick
concurred in the result and Judge Almond wrote a concurring
opinion. Thus, the principal opinion therein is of doubtful
controlling precedent. As Judge Rich observed in Kaplan, 789
F.2d at 1578, 229 USPQ at 682,
[t]he development of the modern understanding of
"double patenting" began in the Court of Customs and
Patent Appeals (CCPA) about the time of In re
Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963), a
rather unusual case is [sic, in] that there was no
majority opinion because only two judges joined each of
the two principal opinions. Neither opinion therein,
therefore, can be regarded as controlling precedent in
this court.
Dembiczak, 175 F.3d 994, 1002, 50 USPQ2d 1614, 1619-20 (Fed.
Cir. 1999) and Braat,
937 F.2d at 593-94, 19 USPQ2d at 1292-93, a "two-way" test was
applied. Under this "two-way" test, the examiner asks whether
the application claims are obvious over the patent claims and
also asks whether the patent claims are obvious over the
application claims.
We recognize that the examiner's rejection is based in
large measure on the decision of the court in In re Schneller,
397 F.2d 350, 158 USPQ 210 (CCPA 1968). However, it is our4
view that Schneller does not set forth another test for
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Application No. 08/119,655
See Schneller, 397 F.2d at 354, 158 USPQ at 214-15.5
As set forth in the Manual of Patent Examining Procedure6
(MPEP) § 804, one part of the test is whether patent
protection for the invention, fully disclosed in and covered
by the claims of the reference, would be extended by the
allowance of the claims in the later filed application.
A first patent or application "dominates" a second7
patent or application when the first patent or application has
a broad or generic claim which fully encompasses or reads on
(continued...)
determining "obviousness-type" double patenting. In that
regard, it is clear to us that the court in Schneller was
concerned with whether or not the invention claimed in the
patent was independent and
distinct from the invention of the appealed claims. While5
the court in Schneller did use a "cover" test in making the6
determination that the invention claimed in the patent was not
independent and distinct from the invention of the appealed
claims, we are of the view that the term "cover" was used by
the court as synonymous with not patentably distinct. Thus,
under the "cover" test, one would ask whether the application
claims are covered by (i.e., not patentably distinct from) the
claims of the patent. To the extent that Judge Rich in
Schneller was setting forth a domination theory of double7
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Application No. 08/119,655
(...continued)7
an invention defined in a narrower or more specific claim in
the second patent or application.
patenting, we note that Judge Rich in Kaplan, 789 F.2d at
1577-78, 229 USPQ at 681-82, set forth the Courts opinion that
"[d]omination is an irrelevant fact." In any event, it is our
view that Schneller did not establish a rule of general
application and thus is limited to the particular set of facts
set forth in that decision. In fact, the Court in Schneller,
397 F.2d at 355, 158 USPQ at 215, cautioned against the
tendency to freeze into rules of general application what, at
best, are statements applicable to particular fact situations.
Accordingly, the question before us in this appeal is
whether the application claims are patentably distinct from
claim 24 of U.S. Patent No. 5,321,680.
With respect to the rejection before us, the examiner has
stated the following:
All of the claims of the instant application and
patent No. 5,321,680 are drawn to a single embodiment of
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Application No. 08/119,655
the invention; the inventions set forth in the claims of
the instant application and patent No. 5,321,680 are not
independent and distinct from each other. ... These
claims [of the instant application] drawn to a single
disclosed embodiment of the invention are considered to
be mere obvious variant ways of claiming the same
invention within the scope of the meaning of the
judicially created doctrine of "obviousness-type" double
patenting. [Answer, pp. 10-11].
Instant application claims 59 and 61 and patent claim 24
are not patentably distinct over one another. . . . The
subject matter encompassed by instant application claims
59 and 61 and patent claim 24 are obvious variants of one
another. [Answer, p. 14].
Our review of the claims under appeal and claim 24 of
U.S. Patent No. 5,321,680 leads us to conclude that, absent
the presence of additional evidence not before us in this
appeal, the
claims under appeal are patentably distinct from claim 24 of
U.S. Patent No. 5,321,680. In that regard, from a review of
the claims under appeal it is quite clear that only claims in
the present application recite a record medium/optical
disc/disc having a header portion including address
information as set forth in claims 8, 32, 54 and 59 (the
independent claims on appeal). Thus, claims 8, 32, 54 and 59
Appeal No. 1996-1838 Page 14
Application No. 08/119,655
While the examiner did not require restriction between8
the claims under appeal and claim 24 of U.S. Patent No.
5,321,680, as far as we are able to determine there would be
no reason why it would not have been proper for the examiner
to have made a restriction requirement under the criteria of
distinctness set forth in MPEP § 806.05(c).
and claims dependent thereon are patentably distinct from
claim 24 of U.S. Patent No. 5,321,680 in the absence of any
evidence establishing that the claimed header portion
including address information was known in the art. While the
examiner has stated that the claims under appeal are obvious
variants of claim 24 of U.S. Patent No. 5,321,680, the
examiner has not produced any evidence that the claimed header
portion including address information was so much as known in
the art, much less that it would have been obvious to add such
a header portion including address information to the
inventor's previously claimed subject matter.8
In summary, the examiner has failed to establish that the
claims under appeal are not patentably distinct from claim 24
of U.S. Patent No. 5,321,680. Likewise, the examiner has
failed to establish that the claims under appeal are obvious
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Application No. 08/119,655
from or generic to claim 24 of U.S. Patent No. 5,321,680.
Furthermore, it is our view that the facts of this case are
sufficiently different from the facts present in Schneller
that a double patenting rejection in this application is
inappropriate. Accordingly, the decision of the examiner to
reject claims 8, 10, 11, 32, 34, 35, 37, 54 to 59 and 61 to 65
under the judicially created doctrine of nonstatutory (i.e.,
obviousness-type) double patenting over claim 24 of U.S.
Patent No. 5,321,680 is reversed.
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Application No. 08/119,655
CONCLUSION
To summarize, the decision of the examiner to reject
claims 8, 10, 11, 32, 34, 35, 37, 54 to 59 and 61 to 65 is
reversed.
REVERSED
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
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Application No. 08/119,655
STEPTOE & JOHNSON, LLP.
1330 CONNECTICUT AVE., N.W.
WASHINGTON, DC 20036
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