Appeal No. 1997-3047
Application 08/480,152
argued that a two-way test should be used. Lilly, on the
other hand, involved the situation in which two patents have
the same effective filing date, the first filed and issued
application claims a specie and the later filed application
claims a genus. The court held that in that situation the
later genus claim is unpatentable under the doctrine of
obviousness-type double patenting over the earlier specie
claim.
The present case is similar to Lilly in that the Sorenson
references and the present application have the same effective
filing date, the earlier filed and issued Sorenson patents
claim species, and the present application claims a genus
which encompasses the species. In the present case it is the
compositions themselves which have a specie-genus
relationship, rather than the uses having that relationship as
in Lilly. As explained in Lilly and the cases relied upon
therein, in such a situation the genus is considered to be
unpatentable over the specie under the doctrine of
obviousness-type double patenting. See Lilly, 222 F.3d at
987, 55 USPQ2d at 1619.
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