Ex Parte Brookhart et al

Board of Patent Appeals and Interferences

Sep 19, 2005

10235443 (B.P.A.I. Sep. 19, 2005)

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The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte MAURICE S. BROOKHART lll
and BROOKE L. SMALL
Appeal No. 2005-2463
Application 10/235,443
BRIEF
Before CAROFF, WARREN, and OWENS, Administrative Patent Judges.
CAROFF, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s final
rejection of claims 13-20 and 38-47, all the claims pending in
appellants’ application.
The appealed claims are directed to iron complexes of certain
tridentate ligands; the ligands being diimines of 2,6-
diacylpyridines or 2,6-pyridinedicarboxaldehydes.
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Appeal No. 2005-2463
Application No. 10/235,443
Appellants stipulate on page 3 of their brief that all of the
pending claims stand or fall together for purposes of this appeal.
Accordingly, we shall limit our consideration to claim 13, one
of two independent claims, which reads as follows:
13. A compound of the formula
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Application No. 10/235,443
wherein:
each X is an anion;
n is 1, 2 or 3 so that the total number of negative charges on
said anion or anions is equal to the oxidation sate [sic: state] of
a Fe atom present in (1);
R1, R2 and R3 are each independently hydrogen, hydrocarbyl,
substituted hydrocarbyl, or an inert functional group;
R4 and R5 are each independently hydrogen, hydrocarbyl, an
inert functional group or substituted hydrocarbyl; and
R9, R10, R11, R14, R15 and R16 are each independently hydrogen,
hydrocarbyl, an inert functional group or substituted hydrocarbyl;
R8 is a primary carbon group, a secondary carbon group or a
tertiary carbon group;
and provided that:
R
when R8 is a primary carbon group none, one or two of R12, R13
and R17 are primary carbon groups, and the remainder of R12, R13 and
17 are hydrogen;
R
when R8 is a secondary carbon group, none or one of R12, R13 and
17 is a primary carbon group or a secondary carbon group and the
remainder of R12, R13, and R17 are hydrogen;
when R8 is a tertiary carbon group all of R12, R13 and R14 are
hydrogen; and any two of R8, R9, R10, R11, R12, R13, R14, R15, R16 and R17
vicinal to one another, taken together may form a ring.
The sole reference relied upon by the examiner is:
Bennett 6,214,761 B1 Apr. 10, 2001
(effective filing date Dec. 17, 1996)
The sole rejection applied by the examiner against the claims
is based on the judicially-created doctrine of obviousness-type
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Appeal No. 2005-2463
Application No. 10/235,443
double patenting. Specifically, claims 13-20 and 38-47 stand
rejected under the obviousness-type double patenting doctrine as
being unpatentable over claims 1-19 of the Bennett patent.
We have carefully reviewed the entire record in this case in
light of the respective positions taken by the appellants and the
examiner on appeal. Having done so, we are compelled to reverse
the rejection at issue.
We agree with the appellants that a rejection based upon
obviousness-type double patenting doctrine is improper under the
circumstances of this case. In this regard, we note that the
instant application and the Bennett patent have entirely different
inventive entities associated with them. Moreover, according to
the record, the instant application was originally assigned solely
to the UNC1, and is now co-owned by both UNC and Du Pont2. On the
other hand, the Bennett patent is assigned solely to Du Pont.
Where different inventive entities are involved, an
obviousness-type double patenting rejection is appropriate only if
the patent and application in question are commonly owned. The
fundamental issue before us is whether the Bennett patent and the
1 University of North Carolina
2 E.I. du Pont de Nemours and Company
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Appeal No. 2005-2463
Application No. 10/235,443
instant application are currently “commonly owned” for purposes of
applying an obviousness-type double patenting rejection.
Appellants assert that common ownership should be defined in
accordance with MPEP § 706.02(l)(2) (Eighth Edition, Rev. 2, May
2004) which states that:
The term “commonly owned” is intended to mean that
the subject matter which would otherwise be prior art to
the claimed invention and the claimed invention are
entirely or wholly owned by the same person(s) or
organization(s)/business entity(ies) at the time the
claimed invention was made. If the person(s) or
organization(s) owned less than 100 percent of the
subject matter which would otherwise be prior art to the
claimed invention, or less than 100 percent of the
claimed invention, then common ownership would not exist.
Common ownership requires that the person(s) or
organization(s)/business entity(ies) own 100 percent of
the subject matter and 100 percent of the claimed
invention.
In other words, where co-owners are involved, common ownership
requires that each co-owner have an interest in both the patent
which would otherwise be prior art and the application at issue.
While the cited definition of “commonly owned” appears in a
section of the MPEP that relates to an assertion of common
ownership to disqualify a reference as prior art under 35 U.S.C.
§ 103(c), appellants assert that the meaning of the term should be
consistent, whether being used in the context of 35 U.S.C. § 103(c)
or in determining whether a double patenting rejection is
appropriate. By “consistent”, appellants presumably mean
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Appeal No. 2005-2463
Application No. 10/235,443
consistent with regard to the required interest of each co-owner,
and not necessarily consistent in terms of the time frame in which
ownership is considered.
We agree with the appellants. Indeed, MPEP § 1490, which
relates to the filing of a terminal disclaimer for the purpose of
obviating a double patenting rejection of the obviousness type3,
explicity links the meaning of common ownership in a double
patenting context to the definition in MPEP § 706.02(l)(2). In our
opinion, this is dispositive of the issue before us.
Accordingly, the double patenting rejection at issue is
inappropriate because the Bennett patent and appellants’
application are not “commonly owned” as defined in MPEP
§ 706.02(l)(2). Certainly, the examiner has cited no
countervailing authority mandating that a different definition
should apply.
Since we have found that an obviousness-type double patenting
rejection is inappropriate in this case, the associated question of
obviousness becomes moot. Nevertheless, we shall consider the
3 In accordance with 37 CFR § 1.321(c), terminal
disclaimers are ordinarily filed for the purpose of obviating
obviousness-type double patenting rejections, and must include a
provision conditioning enforceabililty on maintenance of common
ownership.
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Appeal No. 2005-2463
Application No. 10/235,443
question inasmuch as a rejection under 35 U.S.C. § 102(e)/103 may
be appropriate upon further prosecution.
According to the examiner, a question of obviousness arises
(within the meaning of 35 U.S.C. § 103) because the claims of
Bennett embrace a species of the generic claims of the instant
application. Appellants disagree to the extent that appellants
characterize Bennett’s claims as embracing a genus of compounds of
which the presently claimed compounds are a relatively small
subgenus. Even if we accept the appellants’ characterization,
which appears to be the more accurate view of the relationship
between the instant claims and those of Bennett, a subgenus of
compounds is ordinarily considered to be prima facie obvious from a
prior art genus in the absence of a showing of unexpected results.
Here, appellants do not dispute that Bennett gives rise to a
prima facie case of obviousness. Rather, appellants argue that any
presumption of obviousness is rebutted by the allegation that the
presently claimed subgenus of compounds possess the unexpected
property of catalyzing the oligomerization of ethylene to form
relatively pure alpha-olefins. Yet, appellants point to no
objective evidence in the record, such as a comparative showing, to
substantiate the allegation. Thus, Bennett gives rise to a prima
facie case of obviousness which is not rebutted by any evidence of
unexpected results.
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Appeal No. 2005-2463
Application No. 10/235,443
When this case is returned to the jurisdiction of the examiner
for further disposition, the examiner should consider rejecting the
appealed claims for obviousness under 35 U.S.C. § 102(e)/103 based
upon Bennett and in view of our discussion, supra, highlighting the
prima facie case for obviousness. In this regard, the examiner
must first determine whether Bennett constitutes prior art against
the instant claims under 35 U.S.C. § 102(e), viz. whether the
Bennett disclosure is entitled to an effective filing date of
December 17, 1996, the purported filing date of parent application
60/033,656.
Moreover, the examiner should also consider rejecting the
appealed claims under 35 U.S.C. § 102(e) as being anticipated by
Bennett since appellants apparently concede on page 7 of their
brief that Bennett’s compound “A” is within the scope of the
present claims. Compound A is identified in column 18 of Bennett.
Furthermore, the examiner should consider the possibility of
placing the instant application in interference with Bennett even
in the event that Bennett is not considered to have an earlier
effective filing date since both appear to be claiming the “same
patentable invention”. See 35 U.S.C. § 102(g) and 37 CFR
§ 1.601(i) and (n).
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Appeal No. 2005-2463
Application No. 10/235,443
For the foregoing reasons, the decision of the examiner is
reversed.
REVERSED
MARC L. CAROFF
Administrative Patent Judge)
)
)
)
)
CHARLES F. WARREN )
Administrative Patent Judge)
)
)
)
TERRY J. OWENS
Administrative Patent Judge)
)
BOARD OF PATENT
APPEALS AND
INTERFERENCES
MLC/dal
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Appeal No. 2005-2463
Application No. 10/235,443
EI DU PONT DE NEMOURS AND COMPANY
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