[Patentpractice] Odd Obviousness-Type Double Patenting Rejection

[David Boundy]

>
>     My questions are:
>         (1) Is the rejection referencing the third party reference proper
> at all (other than for something trivial), particularly when the context is
> different and all the missing element aspects are not met?
>

NO.  Obviousness-type double patenting is about the claims and only the
claims.   A later claim with omitted elements can be obviously
double-patenting over an earlier narrow claim, and a claim can be "obvious"
over another f elements are substituted, and there's *Schneller*-type
double patenting where the specification says that elements added in the
later claim are essential to practice of the earlier broader claim.  But
those three circumstances are the only ones I know of that permit
difference between two claims.  Remember that obviousness-type double
patenting was joined at the hip to same-invention double patenting until
the mid-1960s.  They haven't diverged very far from each other.

        (2) Is it proper to argue against the obviousness-type double
> patenting as if this was a simple obviousness rejection, i.e., not every
> element is disclosed and so even if the two were combined, it would not
> result in the claimed invention due to the absence of any teaching or
> suggestion of specifically having either or both of a single layer and/or a
> non-laminated sheet?
>

There's no such thing as "obvious to combine" in obviousness-type double
patenting.   Obvious to modify, yes.  To combine, no.

Here's my form argument.  The case with the bad *dicta* is *In re
Longi*--before
you use this, you should Shepardize *Longi* abd *AbbVie *to make sure my
understanding of the law from several years ago is still sound    Adapt to
your circumstances.


            The Action then errs in introducing prior art into a double
patenting issue to show a claim limitation.  Double patenting considers the
*claims*, not claims in combination with prior art.  The specification *of
the reference patent* may be considered for claim construction, and may be
considered for a showing of “patentably indistinct,” but those situations
are *extremely *narrow, and require specific showings and approval of a
T.C. Director.[1] <#m_-3036653827375160544__ftn1>  The Action does not
invoke those exceptions, does not make the required showings, and does not
bear TC Director approval.  But, to Applicant’s knowledge, the reasoning in
the Action—to *add* a limitation from another reference, without grounding
in specific language of a specific reference claim—is not authorized in any
Federal Circuit case nor in the MPEP.  Applicant's Reply of [date]
requested that, if the Examiner is aware of a case or guidance to the
contrary, a copy of that case or guidance would be helpful.  No such case
or guidance has been supplied.  Appellant is aware of none.  In absence of
any such case or guidance, the Examiner acted beyond his authority.

            In *AbbVie Inc. v. Kennedy Institute of Rheumatology*, 764 F.3d
1366, 1379, 112 USPQ2d 1001, 1010-11 (Fed Cir. 2014), the Federal Circuit
considered a case much like this one—the challenge relied on external prior
art to supplement the claims of the reference patent, instead of a
comparison of only the claims.  The Federal Circuit rejected that attempt,
though acknowledged a few exceptions.  *AbbVie* reiterates the general
rule, “narrow species can be non-obvious and [patentable] despite a patent
on its genus,” though with exceptions.  *AbbVie*, 764 F.3d at 1379, 112
USPQ2d at 1010.  This Action makes no showing that any of those exceptions
apply.

            MPEP § 804(B)(1) instructs that when making an obvious-type
double patenting analysis, the Action must consider two specific *claims*:
an Action must select one specific pair of claims (one from the reference
patent and one from this application), and make specific showings,
including matching them up element-to-element, and show that those two
specific claims are “not patentably distinct” *from each other* (for
example, using one of the form paragraphs from MPEP Chapter 800).  An
obviousness showing based on combination of the reference claim with other
prior art is not an authorized approach.

            The Action makes no showing that any pair of claims (one in
this application, one in any one of the ’927, ’397, ’786, ’748, or ’548
patent) are patentably indistinct from each other.  Note that it’s not
required to address each and every claim, but MPEP § 804(II)(B) does
require *specific* showings with respect to *one* claim pair.  The Action
is insufficient to raise any rejection.

------------------------------

<#m_-3036653827375160544__ftnref1>            [1]  The most common fact
pattern is analogous to *In re Schneller*, discussed in MPEP
§ 804(II)(B)(6).  In these cases, the earlier-to-issue patent discloses and
claims a compound, and discloses either a small genus of methods of use, or
identifies one specific method of use as being especially pertinent.  MPEP
§ 804(II)(B)(6) uses bold face to stress that *Schneller* situations “*will
be rare*” and “The Technology Center (TC) Director must approve.”  In
evaluating an earlier patent for obviousness-type double patenting, the
disclosure *of the reference patent* may be evaluated to establish that the
later claim is “not patentably distinct” from the earlier, as an exception
to the general rule that double patenting requires claim limitations that
are not in one-for-one identical-or-obvious relationship.  *E.g.*, *UCB,
Inc. v. Accord Healthcare, Inc.*, 890 F.3d 1313, 1323-25 (Fed. Cir. 2018); *Eli
Lilly and Co. v. Teva Parenteral Medicines, Inc.*, 689 F.3d 1368, 1378-80,
104 USPQ2d 1134, 1141-43 (Fed. Cir. 2012).  But none of these cases permits
what the Examiner attempts here—introducing external prior art to gap-fill
differences between the present claim and the reference claim.  No case
offers license to look outside the reference patent to external prior art.

            One early Federal Circuit case suggested in *dicta* that
external prior art (outside the reference claim) could be considered in
obviousness type double patenting, but did not explain the factual
circumstances in which this might arise.  After several hours of searching
in Westlaw, the undersigned attorney identified no Federal Circuit or PTAB
case that had ever done so.  The only relevant case was *AbbVie*, which
explains that there may be no situations that actually meet the earlier
*dicta*.  No case was located that allowed for “motivation to *combine*”
other references, only use of the reference patent’s specification as
motivation to *modify* the reference claim.
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