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Patent Law

: Patently Obvious

Graham Analysis Not Necessary for Obviousness-Type Double Patenting Rejection

By Dennis Crouch, Esq.

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In re Baselle Poliolefine Italia (Fed. Cir. 2008)

Nobel Prize winning chemist Giulio Natta filed for patent protection in 1954 on a process for polymerizing ethylene. One of Natta's continuation patents issued in 2002. Later that year, the PTO initiated a Director-ordered reexamination based on obviousness type double patenting. Later, the BPAI affirmed the rejection. On appeal, the Federal Circuit affirmed the rejection in a 2-1 split. The majority held that the one-way obviousness type double patenting rejection was appropriate. Judge Newman dissented ? arguing that the reexamination was conducted illegally and that the court's findings were unsupported by the evidence.

The interesting legal issue here is the reminder that the obviousness determination for double patenting may be different than Section 103(a) obviousness.

Indeed, "this court has endorsed an obviousness determination similar to, but not necessarily the same as, that undertaken under 35 U.S.C. § 103 in determining the propriety of a rejection for double patenting." In re Braat, 937 F.2d 589 (Fed. Cir. 1991). Hence, we find no basis for reversing the Board's decision merely because the Board failed to expressly set forth each of the Graham factors in its analysis. The Board carefully considered claim 1 of the '987 patent and the claims of the '687 patent and determined that a person of ordinary skill in the art would have found the '687 patent claims to have been obvious. We find no error in the Board's analysis.

Of historical interest here is the timeline:

1954: Natta files Italian Appn. No. 25,109.
1955: Natta files US Appn. No. 04/514,098 patented in 1971 as No. 3,582,987.
1955: Natta files US Appn. No. 04/514,097 (now abandoned) claiming priority to the Italian appn.
1958: Natta files US Appn. No. 04/710,840 (now abandoned) as divisional of the '097 appn.
1958 ? 1983: "multiple interferences."
1983: Natta files US Appn. No. 06/498,699 (now abandoned) as continuation of the '840 appn.
1986: Natta files US Appn. No. 06/906,600 (now abandoned) as continuation of the '699 appn.
1990: Natta files US Appn. No. 07/607,215 (now abandoned) as continuation of the '600 appn.
1991: Natta files US Appn. No. 07/719,666 (now abandoned) as continuation of the '215 appn.
1992: Natta files US Appn. No. 07/883,912 as continuation of the '666 application.
1999: CAFC decides in re Natta, 194 F.3d 1333 (both parties agreed to further examination).
2002: PTO issues Patent No. 6,365,687 based on '912 appn.
2002: PTO orders reexamination of the '687 patent based on double patenting.
2008: CAFC affirms invalidity of the '687 patent based on obviousness type double patenting (as compared to the '987 patent).

Full post as published by Patently Obvious on November 17, 2008 (boomark / email).

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