Appeal No. 2007-0111
Reexamination 90/006,297
1 was self-inflicted and not caused by malfeasance or misfeasance on the part of the
2 PTO.
3 As evidenced by the expired patents underlying the bases for the affirmed
4 double patenting rejections, the inventor(s) and/or the patent owner’s predecessor
5 have already benefited (for the full terms of these expired patents) from the right to
6 exclude others on subject matter within the scope of or similar to the appealed
7 claims. It would be manifestly unfair to again exclude the public from the same or
8 patentably indistinct subject matter for another 17-year patent term. In re Longi,
9 759 F.2d 887, 892-93, 225 USPQ 645, 648 (Fed. Cir. 1985)(quoting In re
10 Zickendraht, 319 F.2d 225, 232, 138 USPQ 22, 27 (CCPA 1963)(“The public
11 should...be able to act on the assumption that upon the expiration of the patent it
12 will be free to use not only the invention claimed but also modifications or variants
13 which would have been obvious to those of ordinary skill in the art...”)).
14 Although Vandenberg was cited and applied in the examination of the ‘687
15 patent, we conclude that it raises a substantial new question of patentability. We
16 find that the original examiner (of the application that matured into the ‘687 patent)
17 never finalized (i.e., completed or fully considered) the substantive patentability
18 issues raised by this reference. We also find that, in the original examination, the
19 examiner made a mistake in assessing an incorrect filing date for the claimed
20 subject matter. Specifically, the appealed claims specify a polymerization process
3
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