Ex Parte Lubowitz et al

Board of Patent Appeals and Interferences

Aug 16, 2001

08463437 (B.P.A.I. Aug. 16, 2001)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

Paper No. 26

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HYMAN R. LUBOWITZ
and
CLYDE H. SHEPPARD
__________

Appeal No. 1999-1335
Application No. 08/463,437
___________

ON BRIEF
___________

Before GARRIS, KRATZ, and DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner's final rejection of claims 47 through 57, 64
through 66, and 68 through 71.1 Claims 1 through 5, 7 through
20, 24 through 44, 72, and 73, which are the only other pending
claims, have been allowed.2 (Examiner's answer, page 3.)

1 In response to the final Office action of December 1, 1997
(paper 10), the appellants submitted an amendment under 37 CFR § 1.116
(1997) on March 16, 1998 (paper 12) proposing, inter alia, a change to
claim 64. According to the examiner, this amendment has been entered.
(Advisory action of April 29, 1998, paper 14.)

2 Claims 6 and 21 through 23 were canceled subsequent to the
final Office action in the amendments under 37 CFR § 1.116 filed March
16, 1998 and August 5, 1998, papers 12 and 21, respectively.
Appeal No. 1999-1335
Application No. 08/463,437

2
The subject matter on appeal relates to a multidimensional
polyester oligomer of a particular general formula. Further
details of this appealed subject matter are recited in
illustrative claim 47 reproduced below:
47. A multidimensional polyester oligomer of the
general formula:

Ar-(Q)w

wherein Ar = an aromatic hydrocarbon radical of
valence w;
w = an integer greater than or equal to 3;
and
Q = a hydrocarbon radical that includes at
least one ester linkage and a terminal
crosslinking end-cap radical.

The examiner relies on the following reference as evidence
of unpatentability under the judicially created doctrine of
obviousness-type double patenting:
Lubowitz et al. 5,175,233 Dec. 29, 1992
('233 patent)

Claims 47 through 57, 64 through 66, and 68 through 71 on
appeal stand rejected under the judicially created doctrine of
obviousness-type double patenting as unpatentable over claims 1
through 14 of the '233 patent. (Examiner’s answer, page 5.)
We affirm the aforementioned rejection.3

(Advisory actions of April 29, 1998 and August 18, 1998, papers 14 and
22, respectively.)

3 The appellants state: "Each claim stands separately;
arguments for the patentability of each claim appear in the Argument
section." (Appeal brief, p. 6.) To the contrary, we do not find any
specific arguments for the separate patentability of each claim either
in the appeal brief or reply brief. We therefore limit our discussion
to representative claim 47. See 37 CFR § 1.192(c)(7) (1997).
Appeal No. 1999-1335
Application No. 08/463,437

3
The appellants do not contest the examiner's determination
(examiner's answer, pages 5-6) that the claimed subject matter
and the subject matter described in the claims of the '233 patent
are patentably indistinct from each other. Rather, it is the
appellants' principal argument that an obviousness-type double
patenting rejection is not appropriate in this instance because
the delays in the issuance of a patent from this application
resulted solely from "circumstances beyond Applicant’s control or
through PTO nonfeasance or malfeasance." (Appeal brief, page 7.)
We find no merit in the appellants' argument.
The judicially-created doctrine of obviousness-type double
patenting prohibits a party from obtaining an extension of the
right to exclude granted through claims in a later patent that
are not patentably distinct from claims in a commonly-owned
earlier patent. Ely Lilly & Co. v. Barr Laboratories, Inc., 251
F.3d 955, 967, 58 USPQ2d 1869, 1877-78 (Fed. Cir. 2001) (citing
In re Longi, 759 F.2d 887, 892, 225 USPQ 645, 648 (Fed. Cir.
1985)). According to our reviewing court, the fundamental reason
for the doctrine of obviousness-type double patenting is to
prevent unjustified timewise extension of the right to exclude
granted by a patent, regardless of how the extension arose. Ely
Lilly, 251 F.3d at 967-68, 58 USPQ2d at 1878.
From these legal principles, it is clear that the primary
focus in this obviousness-type double patenting situation must be
on whether the claims of the present application are patentably
indistinct from the claims of the '233 patent. It is not, as the
Appeal No. 1999-1335
Application No. 08/463,437

4
appellants would have us believe, whether delays in the
prosecution of the application were caused by the PTO.4 As we
indicated above, the appellants do not contest the examiner's
determination that appealed claim 47 is patentably indistinct
from the claims of the '233 patent. Under these circumstances,
we must uphold the examiner's rejection under the judicially
created doctrine of obviousness-type double patenting as a matter
of law.
The appellants argue that "[f]orcing a terminal disclaimer
robs him [sic, them] of protection he otherwise would have had if
the government had not intervened and caused delay in the
prosecution of his application." (Appeal brief, page 7.) This
is incorrect. The examiner would have been justified in
rejecting the appealed claims on obviousness-type double
patenting over the claims of the '233 patent even if no delays
had been present.

4 To the extent that the appellants believe that these delays
justify a two-way double patenting test, we note that the facts of the
present case are removed from the facts of In re Braat, 937 F.2d 589,
592, 19 USPQ2d 1289, 1291-92 (Fed. Cir. 1992). Unlike Braat, the
inventive entity of the present application is the same as that of the
'233 patent. In addition, the invention claimed in the '233 patent is
not a later-filed improvement of the present invention. Further, the
claims of the present application and the claims of the application
which matured into the '233 patent could have been combined in a
single continuation-in-part application. In re Berg, 140 F.3d 1428,
1433, 46 USPQ2d 1226, 1230 (Fed. Cir. 1998) ("[B]ecause Berg could
have filed the claims of its separate applications in a single
application, and it simply chose to file two applications despite
nearly identical disclosures, Berg is not entitled to the two-way
test."). In any event, we note that the appellants do not dispute the
examiner's determination (answer, p. 6) that the claims of the present
application and the claims of the '233 patent are patentably
indistinct from each other under the two-way double patenting test.
Appeal No. 1999-1335
Application No. 08/463,437

5
For these reasons and those set forth in the answer, we
affirm the examiner’s rejection under the judicially created
doctrine of obviousness-type double patenting of claims 47
through 57, 64 through 66, and 68 through 71 as unpatentable over
claims 1 through 14 of the '233 patent.
The decision of the examiner is affirmed.

No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

Appeal No. 1999-1335
Application No. 08/463,437

6

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )

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