Appeal No. 1998-0425 Page 13
Application No. 08/272,527
972 F.2d at 1278-79, 23 USPQ2d at 1844. This allows the
public to practice obvious variations of the first patented
invention after the first patent expires. See Longi, 759 F.2d
at 892-93, 225 USPQ at 648. The courts adopted the doctrine
out of necessity where claims in two applications by the same
inventor were so much alike that to allow the latter would
effectively extend the life of the first patent. See Gerber
Garment Technology, Inc. v. Lectra Sys., 916 F.2d 683, 686 16
USPQ2d 1436, 1439 (Fed. Cir. 1990); In re Thorington, 418 F.2d
528, 534, 163 USPQ 644, 648 (CCPA 1969), cert. denied, 397
U.S. 1038, 165 USPQ 290 (1970).
In summary, "obviousness-type" double patenting is a
judge-made doctrine that prevents an unjustified extension of
the patent right beyond the statutory time limit. It requires
rejection of an application claim when the claimed subject
matter is not patentably distinct from the subject matter
claimed in a commonly owned patent when the issuance of a
second patent would provide an unjustified extension of the
term of the right to exclude granted by a patent. In order to
overcome an "obviousness-type" double patenting rejection, an
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