Appeals 2006-1443 and 2006-1465
Reexamination Control Nos. 90/004,950 and 90/005,200
1 27 December 1881. A second patent was obtained for a “process of bending angle-
2 irons.” U.S. Patent 283,136, issued 14 August 1883 based on an application filed
3 11 December 1882. As in the case, before us, the method patent was applied for after the
4 article patent was applied for. The Supreme Court recognized that the method claims and
5 the article claims “might have been all included in one application had the patentee
6 chosen to so present them.” 127 U.S. at 359, 8 S.Ct. at 1150. The Supreme Court found
7 that “the claim for the process in No. 283,136 is merely for the process or method ***
8 involved in making the article covered by claims 1 and 2 of No. 281,640. In other words,
9 claims 1 and 2 of No. 281,640 are each for an article produced by a described method or
10 process, and the claim of No. 283,136 is for such a method or process of producing such
11 article.” 127 U.S. at 361, 8 S.Ct. at 1151-52. The Supreme Court reasoned that “the
12 inventor cannot afterwards, on an independent application, secure a patent for the method
13 or process of cutting away the metal and then bending it so as to produce the identical
14 article covered by the previous patent, which article was described in that patent as
15 produced by the method or process sought to be covered by taking out the second patent.”
16 Ochiai ‘216 covers the method described in Ochiai ‘606 for making at least some
17 of the cephems claimed in Ochiai ‘606. Appellants have not shown that they presented
18 the method claims of Ochiai ‘216 in the application that matured into Ochiai ‘606.
19 Rather, Appellants waited until 15 years into the prosecution of the family of Ochiai
20 applications to first present the method claims on appeal. In this sense, Ochiai’s
21 experience is similar to Mosler’s experience, although the time difference between
22 presentation of article and method claims in Mosler’s case is considerably shorter.
15
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: November 3, 2007