Appeal No. 2000-0091
Application No. 08/732,254
Since the examiner has not established that Palmer would have rendered
the claimed invention obvious to those skilled in the art, she has not made out a
prima facie case under 35 U.S.C. § 103. The rejection for obviousness is
reversed.
4. Obviousness-type double patenting
The examiner rejected the claims for obviousness-type double patenting
over Palmer’s claim 11. The examiner argues that the instant claims and
Palmer’s claim 11 are not patentably distinct because they contain “overlapping
subject matter” and because Palmer also claims the free form of delavirdine,
which is an obvious variant of delavirdine mesylate. Examiner’s Answer, page 4.
Obviousness-type double patenting . . . 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. Its purpose is to prevent an unjustified extension of the
term of the right to exclude granted by a patent by allowing a
second patent claiming an obvious variant of the same invention to
issue to the same owner later.
In re Berg, 140 F.3d 1428, 1431, 46 USPQ2d 1226, 1229 (Fed. Cir. 1998)
(citation omitted, emphasis added).
All proper double patenting rejections, of either type, rest on the
fact that a patent has been issued and later issuance of a second
patent will continue protection, beyond the date of expiration of the
first patent, of the very same invention claimed therein (same
invention type double patenting) or of a mere variation of that
invention which would have been obvious to those of ordinary skill
in the relevant art (obviousness-type double patenting). In the latter
case, there must be some clear evidence to establish why the
variation would have been obvious.
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