Appeal No. 2001-1240 Page 3
Application No. 08/374,520
stated that “the compounds [sic, claims?] of U.S. 5,587,489 would read on the
instant claims 45 to 56 which claim the compounds made from the same process
on the same ground above regarding to the process rejection.” Examiner’s
Answer, page 6.
We reverse these rejections, because the claims on appeal are not
directed to the same invention as the claims of the ‘726 and ‘489 patents. The
test for “same invention” double patenting is whether the claims of the issued
patent could be literally infringed without infringing the application’s claims, and
vice versa. If one set of claims can be infringed without infringing the other set,
the claims are not directed to the same invention and a double patenting
rejection under § 101 is improper. See In re Vogel, 422 F.2d 438, 441,
164 USPQ 619, 621-22 (CCPA 1970):
The first question in the [double patenting] analysis is: Is the same
invention being claimed twice? 35 U.S.C. § 101 prevents two
patents from issuing on the same invention. . . . A good test, and
probably the only objective test, for ‘same invention,’ is whether one
of the claims could be literally infringed without literally infringing
the other. If it could be, the claims do not define identically the
same invention. . . . If it is determined that the same invention is
being claimed twice, 35 U.S.C. § 101 forbids the grant of the
second patent.
Here, the application claims define a broader genus of compounds, and
methods of making those compounds, than are defined by the claims of the
‘726 and ‘489 patents. This is apparent when the structures shown in the instant
claims are compared with those of the patent claims. The compound defined in
the instant claims includes, inter alia, constituent R14, which can be “hydrogen,
alkyl, alkenyl, alkynyl, aryl, or heteroaryl,” and constituent R14a, which can be
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