Appeals 2006-1443 and 2006-1465
Reexamination Control Nos. 90/004,950 and 90/005,200
1 continue to be monopolized by virtue of patent rights in a narrow method patent. In
2 In re Vogel, 422 F.2d 438, 442, 164 USPQ 619, 622 (CCPA 1970), the former CCPA
3 noted that issuance of a second patent to a process of treating meat would extend the time
4 of monopoly as to a process of treating pork claimed in a first patent. Here, to the extent
5 the Ochiai ‘216 patent extends the monopoly as to the compounds which can be made by
6 that process which are the same as the compounds covered by claim 1 of Ochiai ‘606, the
7 monopoly of Ochiai ‘606 is also extended, particularly as to products made abroad by the
8 process and subsequently imported into the United States. Tr-20:11 through 21:1.
9 Double patenting should not turn on “creative” method claim drafting. Rather,
10 the focus should be on an analysis of whether all or some of a patentee’s patent rights are
11 being unjustly extended. For example, in this very case it is not apparent, and Mr. Usami
12 did not explain, why Ochiai ‘216 method claims were not drafted to include making all of
13 the cephems of Ochiai ‘606 claims 1 and 15. Appellants conceded at oral argument, as
14 they had to, that product and process claims could have been presented in a single
15 application. Tr-11:7-10. See also Tr-25:6 through 26:1. In our opinion, what might be
16 characterized as Appellants’ creative and conveniently timed claim drafting should not be
17 a back door “around” double patenting.
18 8.
19 Appellants presented the declaration testimony of Mr. Hirofumi Usami (Ex 1035)
20 to explain why the Ochiai ‘216 process claims were first presented in 1990 in the
21 application that matured into Ochiai ‘216. Ochiai ‘216 is based on several continuations,
22 continuations-in-part and divisions of an Ochiai application filed in 1975, viz., Ochiai
23 ‘888. As noted in our findings, Mr. Usami states that process claims were not earlier
24
Page: Previous 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 Next
Last modified: November 3, 2007