Appeals 2006-1443 and 2006-1465
Reexamination Control Nos. 90/004,950 and 90/005,200
1 When Appellants received Ochiai ‘216, they acquired the right to prevent others
2 from making (1) the cephems falling within the scope of claims 1-5 of Ochiai ‘216 and
3 (2) some of the cephems claimed in Ochiai ‘606.
4 After 1989, and as a result of enactment and codification of 35 U.S.C. § 271(g),
5 Appellants also acquired the right to exclude others from making or using some of the
6 cephems of now expired Ochiai ‘606 if those cephems were made abroad using the
7 method claimed in Ochiai ‘216.
8 3.
9 Appellants bottom their argument for reversal on the proposition that the process
10 claimed in Ochiai ‘216 is an “independent and distinct” invention from the cephems of
11 Ochiai ‘606.
12 In what is generally recognized as a double patenting case, the Supreme Court in
13 Miller v. Eagle Mfg. Co., 151 U.S. 186, 199, 14 S.Ct. 310, 315 (1894) made the
14 following observation:
15 The result of the foregoing and other authorities is [1] that no
16 patent can issue for an invention actually covered by a former patent,
17 especially to the same patentee, although the terms of the claims differ;
18 [2] that the second patent, although containing a broader claim, more
19 generical [today we would say “generic”] in its character than the specific
20 claims, contained in the prior patent, is also void; but [3] that where the
21 second patent covers matter described in the prior patent, essentially
22 distinct and separate from the invention covered thereby, and claims made
16
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