Appeal No. 1996-0478
Application No. 08/171,769
situation were the result of the appellant’s doing, the judicially created doctrine of
double patenting would apply if the application claims were allowed to issue. The
ruling in Schneller that double patenting existed was based upon a factual situation
which is not present here, from which the court found the inventions not to be
independent and distinct. It is our view that Schneller did not establish a rule of
general application and thus is limited to the particular set of facts set forth in that
decision. In fact, the Court in Schneller, 397 F.2d at 355, 158 USPQ at 215, cautioned
against the tendency to freeze into rules of general application what, at best, are
statements applicable to particular fact situations.
The Federal Circuit cites Schneller in Eli Lilly Co v. Barr Laboratories, Inc.,
No. 99-1262, - 1263, -1264, -1303, Slip Opinion at 22-24, (Fed. Cir.
May 30, 2001). Eli Lilly states:
Through a statutorily prescribed term, Congress limits the duration
of a patentee's right to exclude others from practicing a claimed invention.
35 U.S.C. § 154(a)(2) (1994). The judicially-created doctrine of
obviousness-type double patenting cements that legislative limitation by
prohibiting a party from obtaining an extension of the right to exclude
through claims in a later patent that are not patentably distinct from claims
in a commonly owned earlier patent. In re Longi, 759 F.2d 887, 892,
225 USPQ 645, 648 (Fed. Cir. 1985) (explaining that, even though no
explicit statutory basis exists for obviousness-type double patenting, the
doctrine is necessary to prevent a patent term extension through claims in
a second patent that are not patentably distinct from those in the first
patent). As one of our predecessor courts explained, "[t]he fundamental
reason for the rule [of obviousness-type double patenting] is to prevent
unjustified timewise extension of the right to exclude granted by a patent
no matter how the extension is brought about." In re Van Ornum,
686 F.2d 937, 943-44, 214 USPQ 761, 766 (CCPA 1982) (quoting In re
Schneller, 397 F.2d 350, 158 USPQ 210, 214 (CCPA 1968)).
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