Emert, In re

• Decision Date: 18 September 1997
• Docket Number: No. 96-1559,96-1559
• Citation: 124 F.3d 1458,44 U.S.P.Q.2d 1149
• Parties: In Re Jack EMERT and Robert D. Lundberg, Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1458

124 F.3d 1458

44 U.S.P.Q.2d 1149

In Re Jack EMERT and Robert D. Lundberg, Appellants.

No. 96-1559.

United States Court of Appeals,

Federal Circuit.

Sept. 18, 1997.

Lawrence F. Scinto, Fitzpatrick, Cella, Harper & Scinto, New York City, argued, for appellants. With him on the brief was Dominick A. Conde. Of counsel on the brief were Kenneth R. Walton, Exxon Chemical Company, Linden, NJ, and Harvey L. Cohen.

Scott A. Chambers, Associate Solicitor, Office of the Solicitor, Department of Commerce, Patent and Trademark Office, Arlington, VA, argued, for Commissioner. With him on the brief were Nancy J. Linck, Solicitor Albin F. Drost, Deputy Solicitor, and Craig R. Kaufman, Associate Solicitor.

Before MAYER, MICHEL, and RADER, Circuit Judges.

RADER, Circuit Judge.

Jack Emert and Robert D. Lundberg (collectively Emert) appeal the rejection of claims 1-5 and 43-67 of application No. 07/250,887 ('887 application). The United States Patent and Trademark Office's Board of Patent Appeals and Interferences (Board) rejected Emert's contested claims for obviousness-type double patenting. Recognizing that the Board applied the correct test and reached the proper result under the correct standard of review, this court affirms.

I.

This case arises from an interference between Emert's '887 application and Beverwijk et al.'s U.S. Patent No. 5,873,004. Beverwijk conceded that Emert was the first to invent the subject matter of the interference. Rather than claim priority, Beverwijk asserted that obviousness-type double patenting should prevent Emert from gaining a patent. The Administrative Patent Judge denied Beverwijk's motion for judgment. On appeal, the Board reversed the APJ and rejected Emert's claims in the absence of a terminal disclaimer. Specifically, the Board held that Emert's undue delays in prosecution caused the '624 patent to issue first. Therefore, the Board employed a one-way obviousness analysis comparing the application with the '624 patent. Under this analysis, the Board denied issuance to Emert's application. Instead, the Board required Emert to file a terminal disclaimer limiting his patent term.

The application and patents involved in this action disclose polymer dispersants. These dispersants, when added to motor oil, keep engines clean by preventing particles from settling on engine surfaces. In July 1985, Emert made the first filing of importance at the United States Patent and Trademark Office (PTO) for this case. At that time, Emert filed an application, assigned to Exxon, that later matured into U.S. Patent No. 4,863,624 ('624 patent). This patent claims:

1. An oil soluble dispersant mixture useful as an additive comprising:

(A) from about 10 to 90 weight percent of a first dispersant comprising (a) a first hydrocarbyl substituted C sub4 to C sub10 monounsaturated dicarboxylic acid producing material formed by reacting a first olefin polymer of C sub2 to C sub10 monoolefin having a number average molecular weight of about 1500 to 5,000 and a first C sub4 to C sub10 monounsaturated acid material, said first acid producing material having an average of 1.05 to 1.25 dicarboxylic acid producing moieties, per molecule of said first olefin polymer present in the reaction mixture used to form said first acid producing material, and (b) a first nucleophilic reactant selected from the group consisting of amines, alcohols, amino-alcohols and mixtures thereof; and

(B) from about 90 to 10 weight percent of a second dispersant comprising (a) a second hydrocarbyl substituted C sub4 to C sub10 monounsaturated dicarboxylic acid producing material formed by reacting a second olefin polymer of C sub2 to C sub10 monoolefin having a ... number average molecular weight of about 700 to 1150 and a second C sub4 to C sub10 monounsaturated acid material, said acid producing material having an average of 1.2 to 2.0 dicarboxylic acid producing moieties, per molecule of said second olefin polymer present in the reaction mixture used to form said second acid producing material, and (b) a second nucleophilic reactant selected from the group consisting of amines, alcohols, amino-alcohols and mixtures thereof.

In short hand, the '624 patent claims: "An oil soluble dispersant mixture useful as an additive comprising: [A and B]." Emert added component B to his disclosure as part of a continuation-in-part application filed on September 9, 1987. In September 1989, the '624 patent issued to Emert and two other inventors.

On October 16, 1986, Emert filed the first of a series of applications, also assigned to Exxon, that became the contested '887 application. In July 1987, the PTO rejected all claims of this first application for obviousness. Rather than respond to the obviousness rejection, Emert waited six months--the maximum period--then abandoned that first application and filed a substantially identical continuation application. Again, in March 1988, the PTO rejected this continuation for obviousness. Again Emert did not respond to the merits of the rejection, but waited the maximum six-month period and filed still another continuation. This second continuation--the '887 application--was again substantially identical to the original filing.

In November 1988, the examiner determined that the '887 application contained multiple inventions and imposed a restriction requirement. Emert responded to the restriction requirement on May 11, 1989. On July 28, 1989, the examiner rejected Emert's elected claims for obviousness. Emert finally responded to the merits on February 1, 1990. This action later ensued. The '887 application claims:

An oil soluble dispersant useful as an oil additive comprising the product of a reaction mixture comprising:

(a) a hydrocarbyl substituted C sub4 to C sub10 monounsaturated dicarboxylic acid producing material formed by reacting olefin polymer of C sub2 to C sub10 monoolefin having a number average molecular weight of about 700 to 1200 and a C sub4 to C sub10 monounsaturated acid material, said acid producing material having an average of about 1.3 to 1.8 dicarboxylic acid producing moieties, per molecule of said olefin polymer present in the reaction mixture used for forming said acid producing material; and

(b) a nucleophilic reactant selected from the group consisting of amines, amino-alcohols and mixtures thereof.

In short hand, the '887 application claims: "An oil soluble dispersant useful as an oil additive comprising the product of a reaction mixture comprising: [B sub1 ]." As to the relation between B and B sub1 , the dispersant claimed in the '624 patent [B] has a molecular weight of 700--1150 compared with 700--1200 in B sub1 of the '887 application. The '624 patent's B also has a functionality ratio of 1.2--2.0 compared with 1.3--1.8 in B sub1 of the '887 application. Emert claims that these very slight differences minimize interactions with other oil additives.

On appeal, Emert claims the Board made numerous errors in rejecting the claims for obviousness-type double patenting. First, Emert argues that the Board erred by declining to use a two-way obviousness-type double patenting analysis. Specifically, Emert faults the Board's finding that his delays slowed the prosecution of his application and caused the '624 patent to issue ahead of the '887 application. Second, Emert argues that even under a one-way analysis the Board erred because it did not provide a proper evidentiary basis for the finding of obviousness.

II.

A rejection under the doctrine of double-patenting is a legal conclusion to which this court gives complete and independent review. See In re Goodman, 11 F.3d 1046, 1052, 29 USPQ2d 2010, 2015 (Fed.Cir.1993). The ultimate determination of whether a one-way or two-way analysis is appropriate is also a question for the court. However, the PTO made factual findings underlying its decision to use a one-way analysis. This court reviews these underlying factual findings for clear error. See In re Caveney, 761 F.2d 671, 674, 226 USPQ 1, 3 (Fed.Cir.1985). In this case, the parties do not contest the applicable dates, but rather the conclusion to be drawn from those dates--specifically, Emert's responsibility for delays in the prosecution of the '887 application.

III.

An obviousness-type double patenting rejection prevents applicants from extending their patent term beyond statutory limits where an application claims merely an obvious variant of the claims in a prior patent. See Goodman, 11 F.3d at 1052; In re Vogel, 57 C.C.P.A. 920, 422 F.2d 438, 441, 164 USPQ 619, 622 (1970). Thus, this court examines the claims to determine whether one defines merely an obvious variation of the other. "Without a patentable distinction--because the pending claim defines merely an obvious variation of the patented claim--the patentee may overcome the double patenting rejection [only] by filing a terminal disclaimer." Goodman, 11 F.3d at 1052.

This court has set forth two tests for obviousness-type double patenting rejections. In In re Braat, 937 F.2d 589, 593, 19 USPQ2d 1289, 1292 (Fed.Cir.1991), the court applied a "two-way"...