Syntex Corporation is the common assignee of the appealed application
The Board of Appeals in its decision of March 18, 1964 affirmed
Closely related subject matter is disclosed in the patents and the application on appeal. The steroid compounds here claimed differ from the compounds claimed in the indicated patents by the presence in the steroid structure of a 2-methyl group instead of a hydrogen atom.
It was the examiner's position that the 2-methyl compounds of the appealed claims are so closely related to the hydrogen containing, or 2-desmethyl, compounds of the indicated patent claims as to be, in the words of the Board of Appeals, "obvious therefrom to those skilled in the art."
The statutory basis for the rejection is not clear from the record. While using certain of the language of 35 U.S.C. § 103, in affirming the examiner's rejection,
The opinion of the board seeks to justify the rejection in its statement:
There is no objection of record concerning this being a new ground of rejection.
Subsequent to the decision of the board, a petition for rehearing was filed in which the separate nature of the involved inventions was pointed out and discussed. Later, and subsequent to our decision of May 14, 1964 in In re Robeson, 331 F.2d 610, 51 CCPA 1271, appellants filed a letter of June 19, 1964, in which the Board of Appeals was requested to consider the disclaimer, filed concurrently therewith, in which they disclaimed:
Appellants' letter of June 19, 1964 refers to our Robeson decision as being "directly in point" and argued:
In its decision on the petition for reconsideration, the board considered the contents of the letter of June 19, 1964, and criticized one of the signatures appearing on the disclaimer. It then stated:
Subsequently appellants filed a new disclaimer to overcome the board's criticism as to form which was accepted and has been duly recorded in the United States Patent Office. By order of the court upon granting appellants motion to correct diminution of record, which was not objected to by the Solicitor for the U. S. Patent Office, this new disclaimer was added to the record. The Solicitor here does not challenge the sufficiency of the new disclaimer nor does he argue that the effect of the terminal disclaimer on the rejection is not before us. We will therefore turn to a consideration of the subject matter defined in the appealed claims and the patent claims.
We find that we are here dealing with different inventions. As pointed out in appellants' brief:
Appellants also point out in their brief that "Each invention would be patentable absent the other," which is not disputed by the Patent Office. The brief then continues:
As we stated in Kaye, supra, 332 F.2d at 819, 51 CCPA at 1468, in reference to Robeson, supra:
Thus, it seems to us that the board's position must stand or fall on the issue of whether our decisions in Robeson, supra, and Kaye, supra, as stated by the board, "apply to the situation where a terminal disclaimer is offered with respect to the commonly owned patent of a different inventive entity."
It is true that in both Robeson, supra, and Kaye, supra, the double patenting rejections which we found to be obviated by the terminal disclaimer were predicated in each case on the same inventorship. However, we find this to be a distinction without legal significance in the present context.
Statutory authority for the terminal disclaimer here in issue is found in 35 U.S.C. § 253, the second paragraph of which provides:
It is to be noted that the parties authorized by the statute to file the terminal disclaimer are "any patentee or applicant." It seems clear that Congress intended that the remedies of this section were also to be available to assignees in view of the express provision of 35 U.S.C. § 100(d) that:
The statutory provisions thus support appellants' position and are contrary to the solicitor's arguments.
The solicitor argues that the common assignee here, in effect, seeks to circumvent sections 102(e) and 103 by filing a terminal disclaimer. This argument lacks substance as here there can be no resort to those sections. Where the inventorship is different and there is a common assignee, as here, the first filed application which issues as a patent is "by another" and if the invention claimed in the second application is "described" in the first application, it is available under section 102(e) as prior art which is relevant for consideration under section 103. If the second filed application issues first, there can be no resort to section 102(e) to establish it as prior art under section 103 as against the first filed application. This results from the controlling effect which is given under the statute to the United States filing dates. Sections 102 (e) and 103 provide grounds of rejection which are distinct and separate from "double patenting," requiring different inquiries and representing mutually exclusive grounds for rejecting claims. Where there are separate inventions and the ground of rejection is double patenting, based on the alleged unlawful timewise extension of monopoly, the rejection may be overcome by a terminal disclaimer.
We are of the opinion, therefore, that the common assignee of the appealed application and the involved patents is entitled to proceed under 35 U.S.C. § 253.
The solicitor relies on two decisions in other courts, Sterling Varnish Co. v. Louis Allis Co., 145 F.Supp. 810 (E.D.Wis. 1956), aff'd on rehearing, 149 F.Supp. 826 (1957); and Hays v. Reynolds, 242 F.Supp. 206 (D.C.1965), aff'd, Hays v. Brenner, 357 F.2d 287 (D.C. Cir. 1966). The solicitor has extracted from these two cases the rule that a common assignee may not file a terminal disclaimer to obviate a double patenting rejection. Upon analysis of the cases we find they do not support such a rule.
In the Sterling case the court sustained a defense of double patenting in a suit for patent infringement (145 F.Supp. 810). The two patents issued to the
Plaintiff filed a terminal disclaimer as to the later issued patent after the court's decision and on plaintiff's motion to modify the decision the court found the two patents claimed the "same invention" and held that the terminal disclaimer was "legally insufficient," (149 F.Supp. 829) relying on our decision in In re Siu, 222 F.2d 267, 42 CCPA 864. In Siu we held that when in fact a second application claimed the same subject matter as a previously issued patent, a double patenting rejection was proper and a terminal disclaimer would not overcome such a rejection. The Sterling and Siu decisions are not applicable to the fact situation here in which the appealed application and the issued patents in fact claim different inventions.
In Hays a rather complex record clouds the issue ultimately decided by the courts. Hays' claims were rejected in view of a patent to Keating. The Hays application and the Keating patent were commonly assigned. The application on which the Keating patent issued, although having a later filing date than the Hays application, was, however, a continuation-in-part of three applications filed prior to Hays. The examiner's answer before the board stated two grounds of rejection of the appealed Hays' claims: first, as "unpatentable over the claims of the Keating patent;" and second, as "lacking invention over the Keating parent case No. 598,215, as noted in the Keating patent." The examiner argued that the filing date of the Keating parent case had not been overcome.
The board in its decision affirming the examiner refers to the first ground of rejection as "double patenting." Concerning the second basis for the rejection, the board stated:
In a civil action under 35 U.S.C. § 145 in the District Court, District of Columbia, the position of the Patent Office was that the Hays claims stood rejected on two grounds: (1) double patenting based on the claims of the Keating patent; and (2) that the subject matter claimed by Hays was obvious in view of a prior disclosure
The District Court in its decision utilized both "double patenting" and section 103 language in finding for the Commissioner. The findings of fact make it clear that the court found the subject matter claimed by Hays would have been obvious to one of ordinary skill in the art having the benefit of the work done previously by Keating. The record shows that the District Court relied on the earlier filing date of Keating. In double patenting situations, of course, the filing date is of no concern, which suggests to us that the real basis for the decision of the court was 35 U.S.C. § 103.
The briefs filed in the Court of Appeals, District of Columbia, in the Hays case and that court's opinion leave no doubt that the statutory basis for refusing a patent to Hays was 35 U.S.C. § 103, and this notwithstanding some of the District Court's findings of fact and conclusions of law.
The solicitor stated in his brief before the Court of Appeals in the Hays case:
In view of the fact that Keating's work, as disclosed in the abandoned application and carried forward into the issued patent, was subject matter "described in a patent granted on an application for patent by another [Keating] filed in the United States before the invention thereof by the applicant [Hays]" it was prior art under 35 U.S.C. § 102(e) and 103; Hazeltine Research, Inc. v. Brenner, supra. Despite this fact, both parties injected some double patenting language into the issue before the Court of Appeals.
The Court of Appeals in its opinion refused to consider the merits of any alleged double patenting rejection:
We agree with the Court of Appeals in Hays that a terminal disclaimer will not obviate a rejection for obviousness in view of the prior art under 35 U.S.C. § 103. That situation is not presented here and the solicitor's reliance on the Hays decision is misplaced. The facts here, however, present a case in which the filing of a terminal disclaimer, as permitted under section 253, is effective to overcome a rejection based only on double patenting. The different chemical compounds defined in the respective claims are different inventions. The claims specify these differences and thus do not define the same invention. In re Siu, supra.
In summary, where there are in fact separate inventions, each of which is considered patentable over the prior art absent a patent on the other, a rejection based upon double patenting can be obviated by the filing of a terminal disclaimer under 35 U.S.C. § 253 which may be filed by a common assignee.
In view of the foregoing, the decision of the board is reversed.
KIRKPATRICK, Judge (concurring).
The opinion in this case is a logical extension of the reasoning of the Court in In re Robeson, 331 F.2d 610, 51 CCPA 1271, and In re Kaye, 332 F.2d 816, 51 CCPA 1465. The rationale of those decisions requires the reversal of the board's decision in the present case and, for that reason only, I concur.
United States Senior District Judge for the Eastern District of Pennsylvania, designated to participate in place of Chief Judge WORLEY, pursuant to provisions of Section 294(d), Title 28, United States Code.
No such rejection is warranted under section 103. In view of the later filing date of the reference patents they cannot properly be considered as prior art for purposes of a section 103 rejection.
While in those cases we held that an "obvious" type double patenting rejection could be overcome by filing a terminal disclaimer, that does not mean that a section 103 rejection for obviousness may be similarly overcome. Under section 103, a reference patent is available for all it fairly discloses to one of ordinary skill in the art. There is no inquiry as to what is claimed therein. In the "obviousness" type of double patenting rejections, the test is not what would be obvious to one of ordinary skill in the art from reading the specification on the claims. In re Sarett, 327 F.2d 1005, 51 CCPA 1180. Rather, the inquiry is much more limited in nature and the patent is considered only to compare the invention defined in the patent claims with the invention defined in the application claims.