By Donald Zuhn --
On May 6, the Federal Circuit affirmed a decision by the Board of Patent Appeals and Interferences affirming the final rejection of U.S. Application No. 10/618,526 for obviousness-type double patenting. Appellants Frits Jacobus Fallaux, Robert Cornelis Hoeben, Alex Jan Van Der Eb, Abraham Bout, and Domenico Valerio are the named inventors on the '526 application (U.S. Patent Publication No. 2005/0260596), which is directed to an isolated adenovirus packaging cell comprising nucleic acid sequences encoding the adenovirus E1A and E1B gene products but lacking a nucleic acid sequence encoding adenovirus pIX. Following the examiner's final rejection of the '526 application for obviousness-type double patenting in view U.S. Patent Nos. 6,340,595 and 6,413,776, Appellants appealed the rejection to the Board of Patent Appeals and Interferences, which affirmed the examiner's determination.
The '526 application, which was filed on July 11, 2003, claims the benefit of the following applications:
• U.S. Application No. 09/334,765, filed June 16, 1999, which issued as U.S. Patent No. 6,238,893 on May 29, 2001;
• U.S. Application No. 09/506,548, filed February 17, 2000, which issued as U.S. Patent No. 6,602,706 on August 5, 2003;
• U.S. Application No. 10/125,751, filed April 18, 2002, which issued as U.S. Patent No. 7,105,346 on September 12, 2006; and
• U.S. Application No. 10/219,414 (U.S. Patent Publication No. 2003/0104626), filed June 5, 2003.
The patents asserted in the double patenting rejection (i.e., the '595 and '776 patents) are related to the '526 application by way of a single common inventor: Abraham Bout. The '776 patent was filed on June 12, 1998 and issued on July 2, 2002, and the '595 patent was filed on July 21, 1999 and issued on January 22, 2002. In rejecting the '526 application, the examiner applied the one-way test for obviousness-type double patenting. During prosecution, Appellants argued that the two-way test for obviousness should have been applied. The examiner, however, determined that Appellants had not provided evidence that the issuance of the '595 and '776 patents before the issuance of the '526 claims was not due to administrative delay on the part of the U.S. Patent and Trademark Office, and further, that the '526 claims could have been introduced (and then allowed) in any of the '526 application's four priority applications that had already issued.
On appeal to the Board, Appellants again argued for the two-way test, but the Board affirmed, determining that the '526 claims could have been filed during prosecution of the '170 application, which issued as the '128 patent before either of the patents asserted in the double patenting rejection. Thus, the Board concluded that it was Appellants, and not the Patent Office, that dictated the rate of prosecution of the '526 claims.
In affirming the Board's decision, the Federal Circuit first noted that the two-way test for obviousness-type double patenting is a narrow exception to the general rule of the one-way test. Quoting In re Berg, 140 F.3d 1428, 1432 (Fed. Cir. 1998), the Court also noted that the two-way test:
arose out of the concern "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."
As a result, "[t]he two-way test is only appropriate in the unusual circumstance where, inter alia, the United States Patent and Trademark Office (PTO) is 'solely responsible for the delay in causing the second-filed application to issue prior to the first'" (citing Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 n.7 (Fed. Cir. 2001) (quoting Berg, 140 F.3d at 1437)).
In the instant appeal, the Federal Circuit concluded that:
[Appellants] did not show -- nor is there any evidence to suggest -- that the PTO shared any responsibility for the delay. There is no dispute that the specification of the '170 application would have supported the ['526] claims. Nonetheless, [Appellants] elected to prosecute other applications and delay filing the ['526] application until six years after the '170 application was filed.
Thus, the Court found that there was substantial evidence to uphold the Board's finding that the entire delay was attributable to Appellants.
In re Fallaux (Fed. Cir. 2009)
Panel: Circuit Judges Schall, Archer, and Moore
Opinion by Circuit Judge Moore