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
"NOTE TO EVERYONE-
Anonymous comments that are confrontational and use obviously fictitious e-mail addresses, like [email protected], are not going to get approved.
I do not require folks to register as users before they comment, but if you are not willing to use a real name or a real e-mail address your comment needs to be squeeky clean and not at all confrontational. Those are my rules and anyone that has a problem with it please keep your thoughts to yourself. I am growing tired of being told I don’t understand “freedom of expression.” I enjoy those rights as well, and I will not tolerate factually inaccurate, legally inaccurate, abusive, vulgar or confrontational posts. Open debate and disagreement is fine, but IPWatchdog.com has always been about conveying accurate information, and I will not tolerate junior high level attacks on those who are meaningfully contributing to a debate.
I have never revealed a source, never revealed an e-mail address and I am not going to allow IPWatchdog to be taken over by those with an agenda who are unwilling to let themselves be known to at least me, the administrator.
-Gene"
I'm calling you out Gene.
I posted under that name to see if you were straight up banning my name 6. If you are then fine. But you can at least man up to it if you are. I know you're lurking. Come out come out where ever you are.
I should note that the article to which you refer to as not being sqeaky clean was just as clean as one to which mr. plotkins personally responded which was sent directly to his work email. And, in addition, is very clean with no bad words, and, to my knowledge no personally disparaging statements. I in fact saved a copy of the post and can look at it right now.
Indeed, I imagine he posted under his thread because I sent him that email and was courteous in my entire discussion.
Your censorship of things which you regard as being "factually incorrect" or "legally incorrect" is most definitely a sign of a chilling effect and merely serves to support any and all who would accuse you of not taking an objective viewpoint on your topics, but rather, taking an agenda based viewpoint.
You accuse people who are against software patents of having an agenda, but I have no agenda, other than to see the patent system be able to stand upright in the public arena. And the only people who it seems can rightfully be accused of having an agenda as such, is you, those like you, and big tech corps. The rest of us are in it so that the patent system isn't regarded as a joke and for no other reason.
Posted by: 6 | July 03, 2009 at 12:30 AM
6,
You fooled me into thinking another examiner was nearly as foolish as you. I have to laugh at myself.
Of course, I have to laugh at you even more. Geting banned from IPWatchdog - nice. As I understand it, the primary reason you got banned is because you are so blatantly wrong when it comes to the Law. Don't worry, you can butcher the Law and avoid answering my direct scenarios in any number of other forums.
I don't know if you even bother going back to IPWatchdog now that you are banned under your main pen name as well as your other psuedonyms, so I'll post a few of Gene's posts here (interestingly enough, time stamped prior to your rant above):
***
Noise above Law July 3rd, 2009 10:47 am
Gene,
I realize that the rantings of the individual who calls himself Examiner 6k, 6, 6k, or 6000 are so pervasively idiotic that even seeing “6″ and “examiner” in the same line brings to mind the image of a fool and a fool’s prattling, but the prattling that you responded to above belongs to a different examiner. “16 year examiner” is not likely “Examiner 6k”. 6, while equally ignorant, glories more in his ignorance.
“They spend an extra day searching for the best art and make an air-tight rejection? ” – Hilarious. If only this were so. Rather, we have months to years and ill-founded rejection after ill-founded rejection, stubborn ill-founded rejction appealed and replaced with an equally bad ill-founded rejection. “16 year examiner”, you might actually pay attention to the body of the complaints before denying culpability. Then again, looking at the facts before you is not a strength, eh?
Gene Quinn July 3rd, 2009 11:06 am
Noise-
At first I tended to agree with you about 6, 6k, 6000, etc. I actually banned him/her from commenting here because when I would post information aimed at independent inventors and entrepreneurs he would comment with what was objectively incorrect legal advice and then claim his/her superior status as a patent examiner made him more qualified. He would tell inventors that they don’t need lawyers, lawyers are the problem and they should just file themselves and let the examiner write claims for them because examiners are far superior at doing that compared with lowly lawyers. I tolerate opposing views, but do not tolerate inaccurate and/or bad legal advice.
16 year examiner’s comments were getting trapped in spam, and I couldn’t figure out why. Then when he started calling me “dude” it started to make sense. It would seem that 16 year’s messages originate from the same location as did 6k’s messages.
I police the comments as much as I can, but once you have one comment that is approved your comments go straight through without screening (except in cases where you use a banned character string, which is why “assessment” was causing problems for some a while back, or have a hyperlink, then I have to manually approve). So, I set to spam those who like making threats, use profanity, make incorrect legal statements and pass them as qualified legal advice and those who are belligerent and try and remain completely anonymous.
I realize this is censorship, but I am not about to let this site be taken over like some of the other blog out there that are simply unreadable because of the nonsense spewed in comments.
-Gene
Posted by: Noise above Law | July 03, 2009 at 05:23 PM
"At first I tended to agree with you about 6, 6k, 6000, etc. I actually banned him/her from commenting here because when I would post information aimed at independent inventors and entrepreneurs he would comment with what was objectively incorrect legal advice and then claim his/her superior status as a patent examiner made him more qualified. He would tell inventors that they don’t need lawyers, lawyers are the problem and they should just file themselves and let the examiner write claims for them because examiners are far superior at doing that compared with lowly lawyers. I tolerate opposing views, but do not tolerate inaccurate and/or bad legal advice."
Blatant falsehood. I told independent inventors that they don't need lawyers? Maybe in a joking manner, or in relation to a perfect world, as it stands pro se's can barely hit themselves in the patent behind if they know the location of their patent behind. Anyone with half a brain knows this as it is apparent from the pro se applications filed.
And I am not "16 year examiner". Perhaps someone has taken over posting on my name?
"and those who are belligerent and try and remain completely anonymous"
I will have to post my belligerence under a real name then.
Wrongful bananation Gene. Nice touch on the censorship also. You're welcome to it, and that's one reason why your blog will always be second rate.
Thanks for the cite Noise. Even if you did bungle it up into a bunch of hard to distinguish jibberish.
And yes, I'll go to IPwatchdog even without posting. Why? The lols are richer there than more proper websites. It is a realm where lawyers believe large companies infringe reasonably anticipated claims, software is magically more than "writing on a page", "writing in a .txt file", or "compiled machine code", and finally "math".
His directing me to a much more reasonable, and far smarter individual named Robert Plotkins also makes it worth my time to check it out. A pity that me and Robert can't discuss matter on ipwatchdog, Gene may see beyond the ridiculous arguments against software patents, and see the true issues. Issues which Mr. Plotkins appears all too familiar. I'm almost tempted to buy his book.
Posted by: 6 | July 04, 2009 at 08:01 PM
What do the above comments have to do with the In re Fallaux case?
Posted by: CNS | July 06, 2009 at 09:59 AM
CNS,
Pardon the intrusion. 6 Spew does tend to spread to anything patent related. Hopefully, the infestation will be minimal.
Posted by: Noise above Law | July 06, 2009 at 11:31 AM