Appeal No. 1999-1335
Application No. 08/463,437
The appellants do not contest the examiner's determination
(examiner's answer, pages 5-6) that the claimed subject matter
and the subject matter described in the claims of the '233 patent
are patentably indistinct from each other. Rather, it is the
appellants' principal argument that an obviousness-type double
patenting rejection is not appropriate in this instance because
the delays in the issuance of a patent from this application
resulted solely from "circumstances beyond Applicant’s control or
through PTO nonfeasance or malfeasance." (Appeal brief, page 7.)
We find no merit in the appellants' argument.
The judicially-created doctrine of obviousness-type double
patenting prohibits a party from obtaining an extension of the
right to exclude granted through claims in a later patent that
are not patentably distinct from claims in a commonly-owned
earlier patent. Ely Lilly & Co. v. Barr Laboratories, Inc., 251
F.3d 955, 967, 58 USPQ2d 1869, 1877-78 (Fed. Cir. 2001) (citing
In re Longi, 759 F.2d 887, 892, 225 USPQ 645, 648 (Fed. Cir.
1985)). According to our reviewing court, the fundamental reason
for the doctrine of obviousness-type double patenting is to
prevent unjustified timewise extension of the right to exclude
granted by a patent, regardless of how the extension arose. Ely
Lilly, 251 F.3d at 967-68, 58 USPQ2d at 1878.
From these legal principles, it is clear that the primary
focus in this obviousness-type double patenting situation must be
on whether the claims of the present application are patentably
indistinct from the claims of the '233 patent. It is not, as the
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