In Re Basell Poliolefine Italia S.P.A., November 13, 2008, No. 2007-1450.
Basell appealed two decisions of the BPAI resulting from a Director-ordered reexamination of Basell's patent. The Board affirmed the rejections of all the claims of the patent as unpatentable under 35 U.S.C. §§ 102(b) and 103(a) and the doctrine of obviousness-type double patenting.
The patent, issued in 2002, claimed priority to a chain of applications going back to an Italian application filed in 1954. During prosecution however, the BPAI determined that Basell was not entitled to claim priority back to 1954.
On appeal, Basell argued that the Board erred because it failed to conduct an analysis under Graham as of the earliest filing date, and that the Board erred by failing to apply a two-way obviousness-type double patenting analysis.
In determining double patenting, a one-way test is normally applied, in which "the examiner asks whether the application claims are obvious over the patent claims." In re Berg, 140 F.3d 1428, 1432 (Fed. Cir. 1998). In unusual circumstances, where an applicant has been unable to issue its first-filed application, a two-way test may apply, in which "the examiner also asks whether the patent claims are obvious over the application claims." Id. . . . the two-way test may be appropriate "in the unusual circumstance that the PTO is solely responsible for the delay in causing [a] second-filed application to issue prior to [a] first." Id. at 1437.
Looking at the facts of the present case, the CAFC found that any delay was squarely attributed to the applicant, thus precluding any hope of two-way obviousness:
[S]ince 1954, the patentees repeatedly submitted claims directed to claims covering other inventions, urged the examiner to declare interferences for unrelated inventions, and repeatedly filed continuing applications without appeal. During the critical co-pendent period of the applications . . . [the inventor] could have filed the present claims. [The inventor's] actions, or inactions, had a direct effect on the prosecution and thus were responsible for any delay in prosecution. We find no error with regard to the Board’s findings and agree with the Board that the two-way test for double patenting does not apply.
Regarding the Graham analysis, the CAFC affirmed that, under the one-way test, the Graham factors did not need to be expressly addressed by the Board:
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, 592-93 (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.
I write in dissent, first because the reexamination here conducted was in violation of the reexamination law as it then existed. Such violation should not be condoned, for the PTO is as bound by the law as are those who practice before it. If this improper reexamination were to be tolerated, as do my colleagues on this panel, it at least warrants strict scrutiny. Yet the panel majority defers to unsupported findings, permits the PTO to ignore all of the expert evidence, and joins in the PTO’s unfair allocation to the inventors of blame for the extreme delays here illustrated.