In re Fallaux

In re Fallaux

Opinion

 [***1861]   [*1314]  MOORE, Circuit Judge.

Frits Jacobus Fallaux and the other appellants (collectively, Dr. Fallaux) are the named inventors on U.S. Patent Application No. 10/618,526 (the '526 or Fallaux application), filed on July 11, 2003. The examiner rejected claims 1, 3-7, 10, 11, 16, 21-22, and 25 (the Fallaux claims) for obviousness-type double patenting in view of claims 43 and 44 of U.S. Patent No. 6,340,595 (the '595 patent) and claims 7, 32, and 35 of U.S. Patent No. 6,413,776 (the '776 patent) (collectively, the Vogels patents). The Board of Patent Appeals and Interferences  [**2]  [*1315]  (Board) affirmed the examiner's final rejection. Ex parte Fallaux, No. 2008-2251, 2008 Pat. App. LEXIS 39, 2008 WL 2463014 (B.P.A.I. June 17, 2008). Dr. Fallaux appeals. For the reasons set forth below, we affirm.

BACKGROUND

This appeal involves a patent family that includes the Fallaux application. The Fallaux family originated in a Patent Cooperation Treaty priority document filed on June 15, 1995. The first U.S. application in the family, U.S. Patent Application No. 08/793,170 (the '170 application), was filed on March 25, 1997. It issued as U.S. Patent No. 5,994,128 on November 30, 1999. Four subsequent continuing patent applications resulted in three patents issued in 2001, 2003, and 2006. The fifth continuing application--the Fallaux application--was filed on July 11, 2003, claiming priority to the March 25, 1997 application. The reference patents for the double patenting rejection on appeal--the Vogels patents--are related to the Fallaux application only by way of a single common inventor--Abraham Bout. ¹ The first of the Vogels patents--the '776 patent'was filed for on June 12, 1998 and issued on July 2, 2002. The '595 patent was filed for on July 21, 1999, and issued on January 22, 2002.

The examiner applied the one-way test to reject the Fallaux claims for obviousness-type or non-statutory double patenting in view of claims 43 and 44 of the '595 patent and claims 7, 32, and 35 of the '776 patent (the Vogels claims). Dr. Fallaux attempted to overcome the rejection by arguing that the examiner should have applied the two-way test for obviousness-type double patenting. Under the two-way test, the examiner additionally would have been required to show that the Vogels claims were obvious in view of the Fallaux claims.  [**4] The examiner agreed with Dr. Fallaux that under the two-way test, the Fallaux claims would not be subject to an obviousness-type double patenting rejection. But the examiner did not agree that Dr. Fallaux was entitled to the two-way test because Dr. Fallaux did not "argue, much less provide evidence that, the issuance of the [Vogels] patents prior to the instant application was due to administrative delay on the part of the PTO." In particular, the examiner found that the subject matter claimed in the Fallaux application "could have been claimed and been issued in any of" the earlier-issued Fallaux family patents.

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