Graham Analysis Not Necessary for Obviousness-Type Double Patenting Rejection

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).

Comments

[Confused]

If the application was pure continuations, how did it have any patent term remaining from a 1954 priority date?

If the application was actually a CIP, how did it not simply get rejected under 102 over the published parent?

[somebody]

More laziness from BPAI excusing even more laziness from the examining corps.

[duckworth]

"If the application was pure continuations, how did it have any patent term remaining from a 1954 priority date?"

It was filed before 1995, so it got 17 years from issue.

[Alan McDonald]

What a surprise.

Newman trying to find a way to extend a patent monopoly.

[Ury Fischer]

Interesting that this submarine application was allowed only 3 months after the Symbol Technology I decision came out in 1992. Examiner probably thought that this application, being the poster child for a prosecution laches defense, would be unenforceable anyways.

[Humorless Democrat]

It's cases like this that make me glad the US moved to an 18-month publication system, under which this fact pattern can no longer occur.

[JohnDarling]

"What a surprise.

Newman trying to find a way to extend a patent monopoly."

But her analysis is correct.

[Leopold Bloom]

"It's cases like this that make me glad the US moved to an 18-month publication system, under which this fact pattern can no longer occur."

Actually, it's the change to patent term that makes this general fact pattern no longer possible. It's still possible to have a "submarine" patent if you're willing to forgo foreign filing. But, you lose useful patent life.

[Paul F. Morgan]

Re: "Interesting that this submarine application was allowed only 3 months after the Symbol Technology I [Lemelson prosection laches]decision came out in 1992. Examiner probably thought that this application, being the poster child for a prosecution laches defense, would be unenforceable anyways."
But isn't that why the examiner should have rejected the application on that basis instead of allowing it?

[Luke Ueda-Sarson]

The majority simply don't understand what homology is about. Moving from a completely unsubstituted compound [here ethylene] to something that is substituted [propylene] is not an example of homology. Moving the next step, from propylene to butene may be, but that isn't the fact situation here; we are (mostly) concerned with ethylene. Their logic is bogus. But that's what you get with thinking obviousness is a question of law, not fact. Who cares what the experts say, just crib something said about a completely unrelated set of facts and appl it willy-nilly. Not that they even included a citation regarding homology...

Cheers, Luke

[StoopidQ]

And, as Newman points out, how much unrebutted expert testimony did they have to ignore to reach their conclusion?

Although obviousness is a matter of "law," it strikes me as somewhat disingenuous to state that something is obvious while actually having unrebutted facts to the contrary.

[John Spevacek]

So now Nobel-Prize winning chemistry (supported by a battery of expert witnesses) is obvious? Could the CAFC please call Stockholm and tell them to give it up; that the Chemistry prize is now as meaningless as the Peace Prize?

I'm surprised that Basell is even fighting for this, given the existence of second, third, fourth... generation constrained-geometry catalysts/cocatalysts systems. If some company is still relying on 50-year old technology, they are on the way out and there won't be many royalties there.

[MaxDrei]

One has the feeling that designating as law rather than fact the question whether step X would or would not have been, for the PHOSITA on date Y, an obvious step to take, is nothing more high-flown than a pragmatic response by the CAFC to the real life problem that the first instance finder of fact proves itself to be, over and over again, in cold hard reality, incompetent to "find" that sort of fact. Education, training and experience are all needed, and jury members have zero such education, training and experience. For me, outside the USA, and not an attorney at law, it is a "no brainer" that what acts were obvious is a question of fact, and that the question of law is whether the obviousness of those acts renders the claim invalid for obviousness. As is not uncommon, the fact-finding is the hard bit, where the education and training are needed most. If the Constitution says "jury" then matters of fact must be transmogrified into matters of law, in order to get to a just result. That can't be right, can it?

[confused SCOTUS]

I lost all credibility in Newman's dissent with this statement, "The scientific achievements reflected in these discoveries won a Nobel Prize in 1963 for Dr. Giulio Natta and Dr. Karl Ziegler." What does achieving a Nobel Prize have to do with the obviousness double patenting issue?

[Luke Ueda-Sarson]

Confused SCOTUS - if care to read the case, you will see the answer. The determination of the case turns on whether propylene, in the circumstances of the invention, is an obvious variant of ethylene. The majority simply stated it was, because it is a homolog [sic]. No definition of homolog. No citation to case law saying homologs are presumptively obvious, let alone irrebuttably presumptively obvious. Just a bald assertion. Which not nly goes against the unrebuted factual testimony to the contrary, but is the reason the work earned a Nobel. Now if you don't think a Nobel prize is external evidence relevant to a determination of obviousness, well I can't help you. But to me, it's powerful evidence indeed.

Cheers, Luke

Cheers, Luke

[confused SCOTUS]

Luke, I did read the case, and the issue here was obviousness-type double patenting, not obviousness. One should not be permitted to extend the term of a patent simply because the subject matter of the patent merited a Nobel Prize. When a later patent's scope operates to extend the term of claimed subject matter of an expired patent, the later patent is usually doomed. Can you tell me: was the later ‘687 patent embraced by the scope of the earlier ‘987 patent? That is the question in this case. How does the fact that the inventor got a Nobel Prize bear on this inquiry?