Appeal No. 2001-1240 Page 7
Application No. 08/374,520
to the claims of the ‘726 and ‘489 patents. If so, a rejection for obviousness-type
double patenting may be appropriate. See In re Goodman, 11 F.3d 1046, 1052,
29 USPQ2d 2010, 2015-16 (Fed. Cir. 1993): “If one claimed invention has a
broader scope than the other, the [double patenting analysis] must proceed to a
second inquiry: whether one claim defines merely an obvious variant of the other
patent claim. Without a patentable distinction—because the pending claim
defines merely an obvious variation of the patented claim—the patentee may
overcome the double patenting rejection by filing a terminal disclaimer.” (citation
omitted). See also id. at 1052-1053, 29 USPQ2d at 2016: “[The application
claims] are generic to the species of invention covered by claim 3 of the patent.
Thus, the generic invention is ‘anticipated’ by the species of the patented
invention. This court’s predecessor has held that, without a terminal disclaimer,
the species claims preclude issuance of the generic application.” (citation and
footnote omitted).
See generally In re Berg, 140 F.3d 1428, 1431, 46 USPQ2d 1226, 1229
(Fed. Cir. 1998) (“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.”); Eli Lilly & Co. v. Barr
Labs., Inc., 251 F.3d 955, 58 USPQ2d 1869 (Fed. Cir. 2001) (Obviousness-type
double patenting entails a two-step analysis. First, construe the allegedly
conflicting claims and, second, determine whether the differences in subject
matter between the claims renders the claims patentably distinct. A later patent
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