In re Berg, 97-1367.

• Citation: 140 F.3d 1428
• Decision Date: 30 March 1998
• Docket Number: No. 97-1367.,97-1367.
• Parties: In re Todd A. BERG, Donley D. Rowenhorst, James G. Berg and William K. Leonard.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

140 F.3d 1428

In re Todd A. BERG, Donley D. Rowenhorst, James G. Berg and William K. Leonard.

No. 97-1367.

United States Court of Appeals, Federal Circuit.

March 30, 1998.

Charles L. Gholz, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., Arlington, VA, argued, for appellant. Of counsel on the brief was Alton D. Rollins.

John M. Whealan, Associate Solicitor, Office of the Solicitor, Arlington, VA, argued, for the appellee. With him on the brief were Nancy J. Link, Solicitor, Albin F. Drost, Deputy Solicitor, and David J. Ball, Jr., Associate Solicitor.

Before MICHEL, CLEVENGER, and GAJARSA, Circuit Judges.

MICHEL, Circuit Judge.

Todd A. Berg, Donley D. Rowenhorst, James G. Berg and William K. Leonard (collectively, "Berg") appeal the decision of the United States Patent and Trademark Office's (the "PTO's") Board of Patent Appeals and Interferences (the "Board") upholding the examiner's rejection of all the claims of patent application Serial No. 07/918,360 (the "application"), based on certain claims of U.S. Patent No. 5,201,916 previously issued to Berg (the "'916 patent"), on the ground of obviousness-type double patenting. In re Berg, No. 94-2492 (B.P.A.I. Feb. 12, 1997). This case was submitted for our decision following oral argument on January 5, 1998. Because the Board did not err in applying the "one-way" test, rather than the "two-way" test, to the genus claims of the simultaneously filed application in light of the nearly identical species claims of the patent to the same four inventors, we affirm.

BACKGROUND

The application at issue was filed on July 23, 1992. On the same day, the same four inventors filed a second application that issued as the '916 patent on April 13, 1993. Both the '916 patent and the application are assigned to the inventors' employer, Minnesota Mining and Manufacturing Company ("3M"). The specifications of the '916 patent and the application are practically identical. Each discloses a molding method for preparing an alpha alumina abrasive particle suitable for use as an abrasive grit in an abrasive composition and the composition resulting from performing the method. The disclosed molding method includes a step of providing a mold that has at least one surface that provides an opening to a cavity with a specified shape. A liquid dispersion including particles to be converted to alpha alumina is then introduced through the opening into the mold cavity. Both the '916 patent and the application describe a preferred embodiment in which the exposed surface of the liquid dispersion in the cavity does not extend substantially beyond the plane of the opening, which assures that abrasive particles prepared by the process are substantially uniform in shape and size. This effect is achieved by wiping away any portion of the liquid dispersion in the cavity that extends above the plane of the mold surface. In contrast, in a disclosed but non-preferred embodiment of the invention, the dispersion is simply permitted to extend above the mold surface. Both the '916 patent and the application describe the preferred "wiping" embodiment as enhancing the beneficial grinding performance properties of the composition which employs the abrasive particles so produced.

The application claims that matured into the '916 patent were allowed by the examiner in a first Office action on September 22, 1992. Six days thereafter, the examiner entered an Office action rejecting the claims of the Berg application on the sole ground of obviousness-type double patenting over certain claims of the soon-to-issue '916 patent. Berg did not dispute that the claims of the application were obvious in light of the '916 patent claims, but Berg refused to enter a terminal disclaimer in the application, thus prompting a final rejection which Berg appealed to the Board.

The Board affirmed the examiner's rejection based on obviousness-type double patenting, ruling that claim 1 of the '916 patent was a species of the genus claimed in claim 1 of the application.¹ The Board also found that Berg could have put all of the claims in the same application but elected not to, and hence chose to assume the risk as to which application would complete prosecution first. The Board concluded that Berg effectively controlled the application's rate of prosecution compared to the '916 patent and, therefore, the one-way test for obviousness-type double patenting applied. Under that test, the Board found that Berg's application claims were obvious in light of the '916 patent claims. Therefore, Berg had to file a terminal disclaimer in order for its application claims to issue. As Berg had refused to file a terminal disclaimer, the Board sustained the rejection, and Berg timely appealed to this court. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A) (1994).

DISCUSSION

I. The Relationship of the Claims

The invention defined in claim 1 of the Berg application is almost identical to that defined in claim 1 of the '916 patent. The only potentially patentably distinct difference is found in step (c).² In the '916 patent, step (c) requires "introducing said dispersion into said mold cavity such that no exposed surface of said dispersion extends substantially beyond said plane of said first surface of said mold," (emphasis added). Step (c) of the Berg application, however, only requires "introducing said dispersion into said mold cavity." The application claim, therefore, encompasses the '916 patent claim, and the '916 patent claim anticipates the application claim. The relationship of the application claim to the '916 patent claim, accordingly, is one of genus to species.

II. Obviousness-Type Double Patenting Rejections

Obviousness-type double patenting is a judge-made doctrine that prevents an extension of the patent right beyond the statutory time limit. It requires rejection of an application claim when the claimed subject matter is not patentably distinct from the subject matter claimed in a commonly owned patent. See In re Braat, 937 F.2d 589, 592, 19 USPQ2d 1289, 1291-92 (Fed.Cir. 1991). Its purpose is to prevent an unjustified extension of the term of the right to exclude granted by a patent by allowing a second patent claiming an obvious variant of the same invention to issue to the same owner later. See In re Goodman, 11 F.3d 1046, 1052, 29 USPQ2d 2010, 2015 (Fed.Cir. 1993). Obviousness-type double patenting is a question of law reviewed de novo by this court. See id.; see also General Foods v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1277, 23 USPQ2d 1839, 1843 (Fed.Cir. 1992).

Generally, a "one-way" test has been applied to determine obviousness-type double patenting. Under that test, the examiner asks whether the application claims are obvious over the patent claims. In a recent case, with unusual circumstances, however, this court instead applied a "two-way" test. See Braat, 937 F.2d at 592, 19 USPQ2d at 1291-92. Under the two-way test, the examiner also asks whether the patent claims are obvious over the application claims. If not, the application claims later may be allowed. Thus, when the two-way test applies, some claims may be allowed that would have been rejected under the one-way test. One of our predecessor courts, the Court of Customs and Patent Appeals, also at various times applied an analysis similar to that used in Braat to determine obviousness-type double patenting. See In re Borah, 354 F.2d 1009, 1009, 148 USPQ 213, 214 (CCPA 1966); In re Calvert, 97 F.2d 638, 640, 25 C.C.P.A. 1333, 1336 (CCPA 1938). The essential concern was to prevent rejections for obviousness-type double patenting when the applicants filed first for a basic invention and later for an improvement, but, through no fault of the applicants, the PTO decided the applications in reverse order of filing, rejecting the basic application although it would have been allowed if the applications had been decided in the order of their filing. The question of whether the "one-way" test or the "two-way" test applies, the dispositive issue here, is one of law and therefore reviewed by this court without deference. See In re Emert, 124 F.3d 1458, 1460, 44 USPQ2d 1149, 1151 (Fed.Cir.1997).

Under the one-way test, if the scope of the application and the patent claims is not identical, the court must ask whether the former defines merely an obvious variation of the latter. See Goodman 11 F.3d at 1052, 29 USPQ2d at 2015-16. If the application claim is not patentably distinct, in order to overcome the double patenting rejection, the applicant must file a "terminal disclaimer," foregoing that portion of the term of the second patent that extends beyond the term of the first. See id. at 1052, 11 F.3d 1046, 29 USPQ2d at 2016; see also Emert, 124 F.3d at 1461-62, 44 USPQ2d at 1152.

Under special circumstances, however, this court and the Court of Customs and Patent Appeals have both made an exception and instead have applied a two-way test. Specifically, in Braat, this court examined the application claim and the patent claim to determine whether each was obvious in view of the other, rather than considering only whether the application claim was patentably distinct from the patent claim. See 937 F.2d at 593, 19 USPQ2d at 1292; see also Borah, 354 F.2d at 1009, 148 USPQ at 214; Calvert, 97 F.2d at 640, 25 CCPA at 1336. Since Braat, many patent applicants facing an obviousness-type double patenting rejection under the one-way test have argued that they actually are entitled to the two-way test. The two-way test, however, is a narrow exception to the general rule of the one-way test. Indeed, the primary basis for the Braat decision — different inventive entities — was removed by the Patent Law Amendments Act of 1984 (the "1984 Act"). Nevertheless, the notion survives that in certain unusual circumstances, the applicant should receive the benefit of the two-way test. The question then is: when?

III. Application of the Obviousness-Type Double...