Appeals 2006-1443 and 2006-1465
Reexamination Control Nos. 90/004,950 and 90/005,200
1 7.
2 At oral argument, Appellants indicated that “the final product of the [Ochiai] '216
3 process is substantially coextensive with the two final product patents that are the subject
4 of the double patenting rejection.” Tr-17:19 through 18:4. One of the "two final product
5 patents" is Ochiai '606. Nevertheless, we recognize that the process of Ochiai ‘216
6 cannot be used to make all of the cephems within the scope of claims 1 and 15 of Ochiai
7 ‘606. In other words, the scope of the cephems that can be made using the process of
8 claims 1-5 of Ochiai ‘216 is narrower than the scope of the cephems covered by Ochiai
9 ‘606, although the scope of the cephems made by claim 15 of Ochiai ‘606 is very close.
10 However, to the extent that the process of Ochiai ‘216 is used to make only some of the
11 cephems within the scope of the Ochiai ‘606 claims, Appellants ultimately conceded at
12 oral argument that the public is not entitled to use that process to make “some of the
13 cephems” of Ochiai ‘606. Tr-19:19 through 20:10. In effect, the claims of Ochiai ‘216
14 operate to extend the patent rights conferred by now expired Ochiai ‘606 at least to the
15 extent that the Ochiai ‘606 and Ochiai ‘216 claims are co-extensive.
16 Given the rationale upon which double patenting is based, we see no reason why a
17 process claim and the expired compound have to be co-extensive in scope to sustain a
18 rejection for double patenting. Just as one described species or several species may
19 anticipate a genus in an anticipation analysis under 35 U.S.C. § 102(b) even if other
20 described species do not anticipate, we see no reason why double patenting should not
21 apply, under the facts of this case, where a process claim operates to preclude making of
22 some compounds of an expired compound patent. It should suffice to justify double
23 patenting that some or all of the compound claims of an expired compound patent
23
Page: Previous 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 Next
Last modified: November 3, 2007