Appeal No. 1997-3805
Application No. 08/439,602
In In re Berg, 140 F.3d 1428, 1432, 46 USPQ2d 1226, 1229 (Fed. Cir. 1998), the
court discussed circumstances under which a two-way test of obviousness would be
appropriate:
Generally, a “one-way” test has been applied to determine obviousness-type
double patenting. Under that test, the examiner asks whether the application
claims are obvious over the patent claims. In a recent case, with unusual
circumstances, however, this court instead applied a “two-way” test. See
Braat, 937 F.2d at 592, 19 USPQ2d at 1291-92. Under the two-way test,
the examiner also asks whether the patent claims are obvious over the
application claims. If not, the application claims later may be allowed. Thus,
when the two-way test applies, some claims may be allowed that would have
been rejected under the one-way test. . . The essential concern was to
prevent rejections for obviousness-type double patenting when the
applicants filed first for a basic invention and later for an improvement, but
through no fault of the applicants, the PTO decided the applications in
reverse order of filing, rejecting the basic application although it would have
been allowed if the applications had been decided in the order of their filing.
* * *
. . . Since Braat, many patent applicants facing an obviousness-type double
patenting rejection under the one-way test have argued that they actually are
entitled to the two-way test. The two-way test, however, is a narrow
exception to the general rule of the one-way test. . . Nevertheless, the notion
survives that in certain unusual circumstances, the applicant should receive
the benefit of the two-way test. The question then is: when?
According to the court, Id., 140 F.3d at 1435, 46 USPQ2d at 1232,
The two-way exception can only apply when the applicant could not avoid
separate filings, and even then, only if the PTO controlled the rates of
prosecution to cause the later filed species claims to issue before the claims
for a genus in an earlier application.
Assuming, for the sake of argument, that the first prong of the test has been
satisfied (since the separation of the “phenyl” genus and the “hydroxy alkyl” genus of
enhancer into two divisional applications was the direct result of a restriction requirement
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