Appeal No. 2004-0250 Page 6
Application No. 09/226,412
appellants’ claims and Jensen’s claims. Reply Brief, page 2. Appellants explain that
this Board requires a two-way test be applied to determine whether claims in a patent
application and an issued patent are directed to the same patentable invention, citing
Winter v. Fujita, 53 USPQ2d 1234, 1243 (Bd. Pat. App. & Int. 1999). Appellants then
explain why the two-way test does not apply under the present circumstances.
Appellants are correct that the so-called two-way test must be met before an
interference can be declared. Eli Lilly & Co. v. Board of Regents of the Univ. of Wash.,
334 F.3d 1264, 1270, 67 USPQ2d 1161, 1166 (Fed. Cir. 2003) (“[W]e hold that the
Director’s interpretation of 37 CFR § 1.601(n) as establishing a two-way test for
determining whether two parties are claiming the ‘same patentable invention’ is neither
plainly erroneous nor inconsistent with the language of the regulation.”).5 We have
considered appellants’ position set forth in the Reply Brief as to why the two-way test
cannot be met under the present circumstances, i.e., the Jensen patent claims are
patentably distinct from the claims pending in this application. We disagree and find
that the two-way test is met.
The relevant Jensen patent claims are claims 1, 14, and 15, which read as
follows:
1. A therapeutic powder formulation suitable for pulmonary administration,
comprising particles which comprise (i) human insulin, any analogue or derivative
thereof, or combinations of the foregoing; and (ii) an enhancer which enhances the
absorption of insulin in the lower respiratory tract, wherein at least 50% by weight of
said particles are crystalline and herein the molar ratio of insulin to enhancer is between
about 9:1 and 1:9.
5 The present real party in interest is Eli Lilly and Company. Amended Brief,
page 2.
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