Appeals 2006-1443 and 2006-1465
Reexamination Control Nos. 90/004,950 and 90/005,200
1 Our appellate reviewing court and the Patent and Trademark Office have
2 recognized at least two categories of double patenting.
3 A first form of double patenting is where a second patent claims the same
4 invention as a first patent. The second patent is said to be precluded based on double
5 patenting bottomed on the statutory language in 35 U.S.C. § 101 which states that “a
6 patent” may be issued for certain inventions.
7 A second form of double patenting is where a second patent claims a different
8 invention from a first patent, but the invention claimed in the second patent would have
9 been obvious based on the invention claimed in the first patent—with or without
10 considering additional relevant prior art.
11 We believe there may be a tendency to try to “pigeon hole” every double
12 patenting situation into one of these two recognized categories of double patenting.
13 However, we decline to hold that every double patenting must fit precisely into one of the
14 two categories. In our view, the focus should be on whether a second patent unjustly
15 extends the patent rights of a first patent. Each case, of course, must be decided on its
16 facts.
17 2.
18 As applied to the facts of this case, we think that a decision of the Supreme Court
19 provides support for the decision of the Examiner to reject claims 1-5 on appeal based on
20 double patenting. Mosler Safe & Lock Co. v. Mosler, Bahmann & Co., 127 U.S. 354,
21 8 S.Ct. 1148 (1888).
22 In Mosler, a patent was obtained for an article, viz., “[a]n angle-bar for safe
23 frames.” U.S. Patent 281,640 issued 17 July 1883 based on an application filed
14
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