Appeal No. 2001-2646 Page 13
Application No. 08/463,951
without the required terminal disclaimer, and therefore had to be re-filed before
the application could be revived. See Paper No. 13, mailed Oct. 25, 1999 (first
petition dismissed); Paper Nos. 14 and 15, filed Feb. 15, 2000 (second petition
and terminal disclaimer);1 and Paper No. 17, mailed April 10, 2000 (petition
granted). Appellants declared that their delay in filing a response was
unintentional, but nonetheless that delay was indisputably Appellants’ fault.
Appellants are therefore responsible for a delay in prosecution of at least 25
months, i.e., the period of time between the notice of abandonment of the
application and the filing of a grantable petition to revive.
For all these reasons, we conclude that the PTO is not solely responsible
for the delay that has caused this application to remain pending even though the
‘009 patent has issued. A one-way test for double patenting is therefore
appropriate: the only relevant issue is whether the application claims are
patentably distinct from the claims of the issued patent.
Appellants have conceded that the ‘009 patent “claims a single, specific
crystalline species . . . that is covered generically in the subject application.”
Appeal Brief, page 11. A later claim “is not patentably distinct from an earlier
patent claim if the later claim is obvious over, or anticipated by, the earlier claim.”
Lilly, 251 F.3d at 968, 58 USPQ2d at 1878. “[A] later genus claim limitation is
anticipated by, and therefore not patentably distinct from, an earlier species
claim.” Id. at 971, 58 USPQ2d at 1880. The present generic claims are not
1 Appellants were required to disclaim the terminal part of any patent issued on the instant
application equivalent to the period of abandonment. The terminal disclaimer of record does not
refer to the ‘009 patent and does not overcome the rejection for double patenting.
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