Appeal No. 2006-1872
Application No. 09/769,376
We sustain the rejections that rely upon Sugawa as evidence of unpatentability. We,
however, do not sustain the rejection over Kon. Our reasons follow.
OPINION
The Obviousness-type Double Patenting Rejection over Sugawa
The double patenting doctrine generally prevents a patentee from receiving two patents
for the same invention. Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1372, 77 USPQ2d
1321, 1323 (Fed. Cir. 2005). The proscription against double patenting takes two forms:
statutory and non-statutory. Id. Statutory, or “same invention” double patenting is based on the
language in § 101 of the Patent Act mandating “a patent” for any new and useful invention. 35
U.S.C. § 101 (2000). Id. at 1372-73, at 1323. Non-statutory, or “obviousness-type,” double
patenting is a judicially created doctrine adopted to prevent claims in separate applications or
patents that do not recite the “same” invention, but nonetheless claim inventions so alike that
granting both exclusive rights would effectively extend the life of patent protection. Id. The
question is whether the differences in subject matter between the rejected claims and the patented
claim are such that there is no patentable distinction between them. Eli Lilly and Co. v. Barr
Labs., Inc., 251 F.3d 955, 968, 58 USPQ2d 1865, 1878 (Fed. Cir. 2001). If the rejected claims
are anticipated by, or merely define an obvious variation of, the invention claimed in the Sugawa
patent, there is no patentable distinction. Id.; see also In re Vogel, 422 F.2d 438, 441, 164 USPQ
619, 622 (CCPA 1970).
We agree with the Examiner that the differences between the rejected claims and
patented claim 1 are such that there is no patentable distinction between them.
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