Appeal No. 95-2993
Application 08/019,387
obviousness-type double patenting. The claims of appellants' earlier patent are directed to
alkali metal salts of 8,9-dehydroestrone-3-sulfate ester. The alkali metal salts of appellants'
earlier patent are "estrogens useful in replacement therapy in estrogen therapy in estrogen
deficiency. Further, they are useful in suppression of lactation, prophylaxis and treatment
of mumps orchitis, treatment of atherosclerosis and senile osteoporosis." (column 4, line
65 through column 5, line 2). There are no method claims in appellants' earlier patent.
Nevertheless, because a compound and its properties are inseparable and
because claims 9 and 11 in this appeal include the alkali metal salts of 8,9-
dehydroestrone-3-sulfate ester, based on the disclosed utilities for the alkali metal salts of
8,9-dehydroestrone-3-sulfate ester in appellants' earlier patent, the methods now claimed
by appellants in this application would have been obvious from the compounds' inherent
properties. To now permit appellants to extend their right to exclude others by providing
appellants with a new patent term for subject matter they could have presented in their
earlier application would be improper. In re Berg, 140 F.3d 1428, 1431, 1432, 1435, 46
USPQ2d 1226, 1229, 1232 (Fed. Cir. 1998). Additionally, our reviewing court has
sanctioned the practice of basing an obviousness-type double
patenting rejection on a patent directed to a different statutory class of invention than is
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