Appeal No. 2001-2646 Page 10
Application No. 08/463,951
1289 (Fed. Cir. 1991), for the following proposition: “In order for a proper double
patenting rejection to stand, the claims of the later-filed species application must
not be patentably distinct from the claims of the earlier-filed generic application
(the subject application).” Appeal Brief, page 11. Put another way, Appellants
argue that the present case is subject to a “two-way” test of double patenting,
and that under such a test, the rejection is improper.
As Appellants may be aware, in the time since Braat was decided, the
Federal Circuit has clarified the circumstances which require a two-way test for
double patenting. See In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir.
1998); Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 58 USPQ2d 1869 (Fed.
Cir. 2001). In Berg, the court characterized the two-way test as “a narrow
exception to the general rule of the one-way test.” 140 F.3d at 1431, 46 USPQ2d
at 1229. The court held that the two-way test was appropriate only if (1) the
applicant could not have filed both sets of claims in a single application and (2)
“the PTO is solely responsible for the delay in causing the second-filed
application to issue prior to the first.” Id. at 1437, 46 USPQ2d at 1233. In Berg,
the court concluded that the applicant could have filed both sets of claims in a
single application, and therefore a one-way test for double patenting was
appropriate. See id.
In Eli Lilly v. Barr Labs., the court reiterated that “[t]he two-way test is only
appropriate in the unusual circumstance where, inter alia, the United States
Patent and Trademark Office (‘PTO’) is ‘solely responsible for the delay in
causing the second-filed application to issue prior to the first.’” 251 F.3d at 969,
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007