Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE CHARLES E. NESBIT AND MARK S. NESBIT
Appeal No. 91-2934
June 25, 1992
Application for Patent filed March 30, 1990, Serial No. 501,483, a Continuation-in-Part of Serial No. 327,597 filed March 23, 1989, now abandoned. Illuminated Basketball Basket Rim And Illuminated Basketball Backboard.
On Brief
William H. Wright et al. for appellants
Primary Examiner--Paul E. Shapiro
Before Calvert
Boler, Stahl, Stoner and Lyddane
Examiners-in-Chief
Lyddane
Examiner-in-Chief
This is a decision on an appeal from the final rejection of claims 1 through 15, which are all of the claims in the application.
The subject matter on appeal is directed to the combination of a basketball backboard and basketball rim with illumination means contained within the rim or portions of the backboard or both. The combination further includes switching means for the illumination means and/or light detection means operable to override the switching means in response to a sensed lighting condition. Claims 1 and 13 are descriptive of the invention and read as follows:
1. In a basketball backboard and basketball rim combination an improvement comprising:
an illumination means in the form of illumination lights contained within both the basketball rim and portions of the basketball backboard wherein both said rim and backboard are provided with transparent surfaces that will permit the transmission of light from the said illumination lights;
switching means for controlling the on/off actuation of said illumination means; and
light detection means operable to override the said switching means in response to a sensed condition.
13. In a basketball backboard and basketball rim combination an improvement comprising:
an illumination means in the form of illumination lights contained within both the basketball rim and portions of the basketball backboard wherein both said rim and backboard are provided with transparent surfaces that will permit the transmission of light from the said illumination lights; and
switching means for controlling the on/off actuation of said illumination lights; wherein, the switching means includes time delay means for controlling the on/off actuation of said illumination lights.
The references of record relied upon by the examiner in rejections of the claims under the judicially created doctrine of obviousness-type double patenting and under 35 USC 103 are:
Rydborn 3,648,107 Mar. 7, 1972
Zapos 3,825,261 July 23, 1974
Kutnyak 4,431,196 Feb. 14, 1984
Pollock 4,736,955 Apr. 12, 1988
Newcomb et al. (Newcomb) 4,846,475 July 11, 1989
(filed Jan. 25, 1988)
Best 4,858,920 Aug. 22, 1989
(filed Aug. 12, 1988)
Nesbit et al. (Nesbit) 4,984,787 Jan. 15, 1991
Porter Athletic Equipment Co. Catalog (1971).
*2 Claims 13 and 14 stand rejected under 35 USC 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which appellants regard as the invention.
Claims 13 through 15 stand rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 2 and 6 of appellants' prior U.S. Patent No. 4,984,787.
Claims 1 through 12 stand rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1 through 6 of appellants' prior U.S. Patent No. 4,984,787 in view of Rydborn [FN1].
Claims 1 through 15 stand rejected under 35 USC 103 as being unpatentable over the Porter Athletic Equipment reference in view of Newcomb, Pollack, Kutnyak, Fox, Zapos, Best and Rydborn.
Rather than reiterate the examiner's statement of the above rejections and the conflicting viewpoints advanced by the examiner and the appellants, we refer to pages 3 through 10 of the examiner's answer, to pages 11 through 15 of the appellants' brief and to appellants' reply brief for the full exposition thereof.
OPINION
In arriving at our decision in this appeal, we have given careful consideration to appellants' specification and claims, to the applied prior art, and to the respective positions advanced by the appellants in the brief and reply brief and by the examiner in the answer. Upon evaluation of all the evidence before us, it is our conclusion that the examiner's rejection of appealed claims 13 and 14 under 35 USC 112, second paragraph, is proper, but that the rejection of appealed claims 1 through 15 under 35 USC 103 is not. We also consider the examiner's rejections of appealed claims 1 through 15 under the judicially created doctrine of obviousness-type double patenting to be appropriate. Our reasoning for this determination follows.
Considering first the rejection of claims 13 and 14 under 35 USC 112, second paragraph, we observe that the appellants concede "that an exact duplication of the language of claims 13 and 14 exists" (brief, page 14). We agree and sustain the examiner's rejection for that reason [FN2].
We next consider the rejection of claims 1 through 15 under 35 USC 103. In our evaluation of this rejection, we have carefully evaluated all the applied references and have considered all of the disclosure of each reference for what it would have fairly taught one of ordinary skill in the art. See In re Boe, 355 F.2d 961, 148 USPQ 507 (CCPA 1966). Additionally, we have taken into account not only the specific teachings of each reference, but also the inferences which one skilled in the art would have reasonably been expected to draw from the disclosure. See In re Preda, 401 F.2d 825, 159 USPQ 342 (CCPA 1968).
*3 As a consequence of our review, we agree with the examiner that the Porter Athletic Equipment reference discloses steel basketball rims used with glass backboards, that the patents to Newcomb and Pollock suggest illumination of targets for night or low light play, that the patents to Fox and Kutnyak disclose the conventionality of utilizing electric light sources in game devices to permit night or low light play, that the patents to Zapos and Best provide transparent portions on goal structures to provide protection for light sources mounted therein, and that the patent to Rydborn discloses the use of light detection means operable to override a switching means for an illumination means in response to ambient light levels. However, we do not agree with the examiner that one having ordinary skill in the art would have found it obvious to have combined this mosaic of teachings in the manner proposed in the rejection of the claims on appeal.
The initial burden of establishing a basis for denying patentability to a claimed invention rests upon the examiner. In re Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed.Cir.1984). In establishing a prima facie case of obviousness under 35 USC 103, it is incumbent upon the examiner to provide a reason why one of ordinary skill in the art would have been led to modify a prior art reference or to combine reference teachings to arrive at the claimed invention. Ex parte Clapp, 227 USPQ 972 (BPAI 1985). To this end, the requisite motivation must stem from some teaching, suggestion or inference in the prior art as a whole or from the knowledge generally available to one of ordinary skill in the art and not from appellants' disclosure. See, for example, Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 5 USPQ2d 1434 (Fed.Cir.1988).
As stated in W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed.Cir.1983),
[t]o imbue one of ordinary skill in the art with knowledge of the invention in suit, when no prior art reference or references of record convey or suggest that knowledge, is to fall victim to the insidious effect of a hindsight syndrome wherein that which only the inventor taught is used against its teacher.
It is our conclusion that the only reason to combine the teachings of the applied references in the manner proposed by the examiner results from a review of appellants' disclosure and the application of impermissible hindsight. Thus, we cannot sustain the examiner's rejections of appealed claims 1 through 15 under 35 USC 103.
This leaves for our consideration the obviousness-type double patenting rejections of claims 13 through 15 based on claims 2 and 6 of appellants' prior U.S. Patent No. 4,984,787 and of claims 1 through 12 based on claims 1 through 6 of appellants' prior patent in view of Rydborn. The appellants have merely argued that
*4 double patenting does not exist due to the presence of different structural limitations relating to both the location and type of switch employed (brief, page 14).
Appellants have not indicated what the alleged "different structural limitations" are and have not presented any arguments as to the unobviousness of such differences. We have compared the claims on appeal with the claims of appellants' prior patent, and we deem such differences to be merely obvious variations of appellants' prior claimed invention considered alone (claims 13 through 15) or considered with the teaching of the light detection means of Rydborn (claims 1 through 12). We do not find any evidence in the record to show that the subject matter recited in the claims of the patent would have been obvious from the claims of the application. However, we conclude that the obviousness-type double patenting rejection should be sustained in view of the "one-way" obviousness of the claims of the application over the claims of the patent.
We reach this conclusion with full knowledge of the decision of the Court of Appeals for the Federal Circuit in In re Braat, 937 F.2d 589, 19 USPQ2d 1289 (1991) where the court applied a "two-way" patentability determination in reversing a decision rejecting claims under the judicially created doctrine of obviousness-type double patenting. However, the facts in Braat were decidedly different than those in the present case. Braat involved an application of Braat and a patent to Dil which were commonly owned (by Philips). The Dil application was filed subsequent to the Braat application and, in fact, disclosed not only his own invention but also that of Braat, and recognized that the combination of the two inventions is particularly useful. The Dil patent included claims specific to his improvement as well as dependent claims directed to the combination.
The court held in Braat that the Dil invention was separate from that of Braat and conceivably could have been developed earlier than that of Braat, and as such, it was not necessarily an "improvement". The court thus characterized the inventions of Dil and Braat as separate subcombinations that Dil then combined to form a third invention.
The court noted in its opinion at 19 USPQ2d 1291 that
[o]bviousness-type double patenting is a judicially created doctrine intended to prevent improper timewise extension of the patent right by prohibiting the issuance of claims in a second patent which are not "patentably distinct" from the claims of a first patent. See In re Longi, 759 F.2d 887, 892, 225 USPQ 645, 648 (Fed.Cir.1985). The doctrine has also been phrased as prohibiting claims in the second patent which define "merely an obvious variation" of an invention claimed in the first patent. In re Vogel, 422 F.2d 438, 441, 164 USPQ 619, 622 (CCPA 1970). [emphasis in original]
*5 Although the court subsequently stated at 19 USPQ2d 1292 in the same opinion that
[t]he crux of this appeal comes down to whether the Board erred in applying a "one-way" patentability determination instead of a "two-way" determination,
it is our view that the court found the "reasoning of Borah" [In re Borah, 354 F.2d 1009, 148 USPQ 175 (CCPA 1966) ] to be controlling. The court noted at 19 USPQ2d 1293 that the assignee (Philips) of the Dil patent and Braat application
could not have included the claims of Dil in the Braat application, for Braat did not invent the subject matter of the Dil claims ... Nor could Philips have included the claims of Braat in the Dil application, for Dil did not invent the subject matter of the Braat application ... Philips filed the Braat and Dil applications so as to maintain proper inventorship, with claims directed to Braat's "subcombination" invention in the first application and claims directed to both Dil's "subcombination" invention and to the "combination" invention in the second application ... It is not Phillips' [sic, Philips'] fault that the combination claims in the Dil patent issued first. Thus, a double patenting rejection is sustainable here only if claims 5/1 and 6/1 of Dil are not patentably distinct from the subject matter defined by the rejected claims of Braat, and the Board erred in sustaining the double patenting rejection without making such a "two-way" determination. [emphasis added]
The Court acknowledged that allowance of the Braat application would result in a timewise extension of the patent protection of the Dil structure, but pointed out their prior holding in In re Borah, 354 F.2d at 1017, 148 USPQ at 220, "that as a matter of law the extension of protection objection is not necessarily controlling." The court then noted that the fundamental reason for the rule against double patenting, quoting from In re Van Ornum, 686 F.2d 937, at 943-944, 214 USPQ 761, at 766 (CCPA 1982),
is to prevent unjustified timewise extension of the right to exclude granted by a patent no matter how the extension is brought about [emphasis in original] (quoting In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968)).
The court reasoned at 19 USPQ2d 1293 that
only if the extension of patent right is unjustified is a double patenting rejection appropriate. There are situations where the extension is justified. [emphasis in original]
The court concluded that "[t]his case presents such a situation" (emphasis ours).
The decision in Braat has caused no little confusion for this board as well as for other members of the patent bar [FN3] as to when the "two-way" test set forth in Braat must be applied. The dissent believes it to apply in every obviousness-type double patenting situation, while we would limit it to the facts in Braat.
*6 In particular, we believe the court in Braat merely applied its reasoning in Borah, which dealt with a basic combination in a first filed application and an improvement in a second filed, first issued, application, to the facts in Braat, where the court found the first filed Braat application to be directed to a subcombination and the second filed, but first issued, Dil application to be directed to a second subcombination and a combination. It is our opinion that the court, in Borah, really applied a "one-way" test, but indicated it had to be in the right direction. The court stated that
[t]he board seems to have been reasoning in reverse, treating the subject matter of the patent claims as if it were prior art and then reasoning that it would be obvious to omit the springs if a biasing force was not wanted [at 220]
and that
[t]he obviousness issue turns on the addition of structure, the obviousness of the improvement defined in the patent claim, not the obviousness of the basic structure, given the improvement as prior art, which it is not. [at page 221, emphasis added]
Thus, in Borah the court found that there was no evidence of the obviousness of the patent claims on the improvement in view of the application claims for the basic invention and that an extension of patent rights was justified since "as a matter of law the extension of protection objection is not necessarily controlling," In re Borah, supra, 148 USPQ at 220. Likewise, in Braat the court found that there was no evidence of the obviousness of the patent claims to the combination in view of the application claims to the subcombination and that an extension of patent protection was justified since it was not the fault of the assignee that the second filed application issued first. The result in Braat is logical when the order in which the applicant intended the applications to issue is taken into consideration. Philips, by filing the Braat application first, intended that application to issue first. Thus, the Dil application would only be unpatentable in an "obviousness-type" double patenting sense if the claims of Dil were obvious in view of the claims of Braat. If so, they would be a mere obvious variation under In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970). If not, as the court found, issuance of the Braat claims does not unjustifiably extend the patent rights of Dil.
It is our view that the "two-way" test revealed in Braat, or the "one-way" test applied in the right direction in Borah, is limited to fact situations such as these where it is not the fault of the applicant that a later filed application issues while an earlier filed application is still pending and the claims of the later filed application are not obvious, considered with or without other prior art, from the claims of the earlier filed application.
We do not have any similar fact situation present in the case before us. Appellants filed an application for a basic invention and a patent issued thereon. While that application was pending, appellants filed the instant continuation-in-part application on an improvement of the basic invention, which is the usual "obviousness-type" double patenting situation (see In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968)).
*7 The longstanding law on double patenting, both "same invention type" and "obviousness-type" double patenting, was restated in In re Vogel, supra. In this decision, the Court of Customs and Patent Appeals stated that once it is determined that the same invention is not being claimed twice, a "second analysis question" must then be asked:
[d]oes any claim in the application define merely an obvious variation of an invention disclosed and claimed in the patent? [emphasis added]
The court in Vogel, in affirming a rejection of claim 10 on the ground of "obviousness-type" double patenting, stated at 164 USPQ 623 that
[t]he only limitation appearing in claim 10 which is not disclosed in the available portion of the patent disclosure is the permeability range of the packaging material; but this is merely an obvious variation as shown by Ellies. The answer to the second analysis question, therefore, is yes, and the claim is not allowable in the absence of a terminal disclaimer. The correctness of this conclusion is demonstrated by observing that claim 10, by reciting "meat," includes pork. Its allowance for a full term would therefore extend the time of monopoly as to the pork process. [emphasis added]
We recognize, as has the dissent, that the court in Vogel continued in the succeeding sentence with the statement that
[i]t is further noted that viewing the inventions in reverse order, i.e. as though the broader claims issued first, does not reveal that the narrower (pork) process is in any way unobvious over the broader (meat) invention disclosed and claimed in the instant application. [emphasis added]
Contrary to the view of the dissent below, we do not find the court's reference to "viewing the inventions in reverse order" to be in any way a departure from the stated one-way test. The court in Vogel unequivocally determined that claim 10 was "merely an obvious variation" and then stated that such a claim "is not allowable in the absence of a terminal disclaimer." The court then asserted that the proof of the correctness of the preceding holding was that "allowance for a full term would therefore extend the time of monopoly as to the pork process."
We believe the statement which followed this clear holding, referring to viewing the inventions "in reverse order," was intended as an aside and merely to buttress the underlying position that claim 10 was "merely an obvious variation" of the prior patented subject matter. If the court in Vogel had intended to indicate the proper test was a two-way test, the additional view of the "reverse order" consideration would at least have been interjected prior to the court's conclusion that the claim was "not allowable in the absence of a terminal disclaimer" and certainly before its statement that the
correctness of this conclusion is demonstrated by observing that claim 10, by reciting "meat," includes pork. Its allowance for a full term would therefore extend the time of monopoly as to the pork process" (emphasis added).
*8 We observe that the Court of Appeals for the Federal Circuit, in In re Longi, supra, 225 USPQ at 648, determined that the judicially created doctrine of obviousness-type double patenting is based on the policy enunciated by Judge Rich in his concurring opinion in In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963) that
[t]he public should ... be able to act on the assumption that upon expiration of the patent it will be free to use not only the invention claimed in the patent but also any modifications or variants thereof which would have been obvious to those of ordinary skill in the art at the time the invention was made, taking into account the skill of the art and prior art other than the invention claimed in the issued patent. [emphasis in original]
The court in Longi continued that
[u]nder that facet of the doctrine of double patenting, we must direct our inquiry to whether the claimed invention in the application for the second patent would have been obvious from the subject matter of the claims in the first patent, in light of the prior art, [emphasis added]
citing Carman Industries, Inc. v. Wahl, 724 F.2d 932, 220 USPQ 481 (Fed.Cir.1983). At this point, in footnote 5, the court in Longi noted that
[i]n Carmen [sic, Carman] Industries, involving a design patent, we added that a second patent would also be invalid if the first patent's claims would have been obvious from the claims of the second patent. [first emphasis added, others are in original]
The court, in the same footnote, chose not to address whether such a "two-way" requirement applies when the two applications under consideration are both utility applications.
We maintain the position that the law of obviousness-type double patenting which predates, but was restated in, Vogel requires only the determination of whether any claim in an application defines merely an obvious variation of an invention claimed in a prior issued patent, assuming common ownership and/or same inventive entity. This is true notwithstanding the decision in Braat even if it is intended to restate the law to require a "two-way" test.
A panel of the Court of Appeals for the Federal Circuit is bound by prior precedential decisions of the Court of Customs and Patent Appeals. See UMC Electronics Co. v. United States, 816 F.2d 647, 2 USPQ2d 1465, n. 6 at 1468 (Fed.Cir.1987). The decisions of the CCPA, such as Vogel and Longi, control because the CCPA always sat en banc, In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614, at 1617 (Fed.Cir.1989), and such decisions can only be overruled by the CAFC sitting en banc, Racing Strollers Inc. v. TRI Industries Inc., 878 F.2d 1418, 11 USPQ2d 1300 (Fed.Cir.1989) and Johnston v. IVAC Corp., 885 F.2d 1574, 12 USPQ2d 1382 at 1386 (Fed.Cir1989). The Board of Patent Appeals and Interferences is obligated to follow the precedents of our reviewing court, but in turn, we must follow the precedents of earlier decisions of the CCPA unless and until they are overturned by the CAFC sitting en banc. Accordingly, this Board is constrained to follow the precedential decision in Vogel, and thus to determine whether the claims before us define merely an obvious variation of the invention claimed in appellants' prior patent, i.e., to apply a one-way test.
*9 We are also fully cognizant of the decision in Carman Industries, Inc. v. Wahl, supra, wherein the court held that "obviousness-type" double patenting may exist between a design and a utility patent, stating at page 487 that
[d]ouble patenting may be found in a design/utility setting,
and that for the "obviousness-type" double patenting situation
the test is whether the subject matter of the claims of the patent sought to be invalidated would have been obvious from the subject matter of the claims of the other patent, and vice versa. [emphasis added]
We note that the court also stated on the same page that "[d]ouble patenting is rare in the context of utility versus design patents."
From the above, it is apparent that the court in Carman decided that a "two-way" test is required for determining "obviousness-type" double patenting in the design/utility setting. We do not think that the court in Carman intended to expand the "two-way" test to the utility/utility situation, and for the reasons noted above, the court could not have done so without sitting en banc for the purposes of overturning the precedential decision of Vogel. We further note that the decision in Carman was not even an unanimous decision of a three judge panel, Judge Nies concurring-in-part and stating
I do not agree that in obviousness-type double patenting each patent must be found obvious from the other. If one patent is obvious from the other and has the effect of extending its term, the second to issue is invalid.
In summary, it is our opinion that this board must follow the decision in Vogel and must reach a determination as to whether the claims in this application were properly rejected under the judicially created doctrine of obviousness-type double patenting based on whether the claims before us are merely an obvious variation of the invention claimed in appellants' prior patent. It is our conclusion that they are, and we shall thus sustain the examiner's rejections on this ground.
We make the following new rejection pursuant to the provisions of 37 CFR 1.196(b).
Claims 13 through 15 are rejected under 35 USC 103 as being unpatentable over Best. The patent to Best discloses a basketball backboard 20 and rim 12 combination including illumination means in the form of lights 32 contained within the rim. The rim 12 includes a transparent surface 36 that protects the lights while permitting transmission of light therefrom. The combination further includes switching means 22, 24, 40 including a time delay means in the timer 40 (column 3, lines 3 through 14). Thus, the patent to Best discloses every element of the claimed invention except that the illumination lights and transparent surfaces are provided within portions of the backboard. We observe that the purpose of the lighting system for the basketball rim of Best is to provide flashing lights "to thereby visually announce with some fanfare the bypassage of the ball through the hoop" (column 1, lines 58 and 59). It is our opinion that one having ordinary skill in the art would have found it prima facie obvious to have modified the device of Best to include flashing lights with transparent protective covers on the backboard or any other adjacent area such as the scoreboard, support frame, etc., to increase the "fanfare" as the ball passes through the hoop. In our view, this is an obvious extension of the teaching of Best to provide flashing lights visible to the observer to evidence the scoring of a basket. We note that the law presumes skill on the part of the artisan rather than the converse. See In re Sovish, 769 F.2d 738, 226 USPQ 771 (Fed.Cir.1985).
*10 Accordingly, the decision of the examiner rejecting claims 13 and 14 under 35 USC 112, second paragraph, and rejecting claims 1 through 15 under the judicially created doctrine of obviousness-type double patenting is affirmed, the decision rejecting claims 1 through 15 under 35 USC 103 is reversed, and a new rejection of claims 13 through 15 under 35 USC 103 has been made pursuant to 37 CFR 1.196(b).
Any request for reconsideration or modification of this decision by the Board of Patent Appeals and Interferences based upon the same record must be filed within one month from the date hereof (37 CFR 1.197).
With respect to the new rejection under 37 CFR 1.196(b), should appellants elect the alternate option under that rule to prosecute further before the Primary Examiner by way of amendment or showing of facts, or both, not previously of record, a shortened statutory period for making such response is hereby set to expire two months from the date of this decision. In the event appellants elect this alternate option, in order to preserve the right to seek review under 35 USC 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome.
If the appellants elect prosecution before the examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to us for final action on the affirmed rejection, including any timely request for reconsideration thereof.
No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).
AFFIRMED, 37 CFR 1.196(b).
Ian A. Calvert
Vice Chairman
Examiner-in-Chief
Robert F. Stahl
Examiner-in-Chief
William E. Lyddane
Examiner-in-Chief
DISSENTING OPINION
Bruce H. Stoner
Examiner-in-Chief
While I share my colleagues' views regarding the examiner's rejections under 35 USC 112, second paragraph, and 35 USC 103, and support the new ground of rejection of claims 13, 14 and 15 under 35 USC 103, I must respectfully dissent from that part of their decision affirming the rejection of claims 1 through 15 under the judicially created doctrine of obviousness-type double patenting.
*11 Before In re Braat, 937 F.2d 589, 19 USPQ2d 1289 (Fed.Cir.1991), I understood the decisions of the Court of Appeals for the Federal Circuit and one of its predecessors, the Court of Customs and Patent Appeals, to support the proposition that the test for obviousness-type double patenting was simply a one-way test. Although I think that the test ought to be a one-way test (at least where utility applications are involved), I do not share the majority's belief that the two-way test applied in Braat is limited to the facts of Braat.
Certainly, Braat is not the first decision to introduce a two-way test to double patenting law. The literal infringement test for same invention double patenting, stated in In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970), is, of necessity, a two-way test. The test for obviousness-type double patenting, as applied between a design and a utility patent, is likewise a two-way test. Carman Industries, Inc. v. Wahl, 724 F.2d 932, 220 USPQ 481 (Fed.Cir.1983) (the test for obviousness-type double patenting "is whether the subject matter of the claims of the patent sought to be invalidated would have been obvious from the subject matter of the claims of the other patent, and vice versa"). Carman Industries relied principally upon In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969), another design-utility situation, in which the court referred to its practice of sanctioning double patenting rejections where the patent relied on and the application on appeal "involve inventions which are obvious variations of one another" (emphasis supplied).
Guided by the contrast between what was said in Braat and what was said in In re Borah, 354 F.2d 1009, 148 USPQ 213 (CCPA 1966), I believe that the court has long applied a two-way test in the obviousness-type double patenting situation without ever specifically saying so. I consider Braat to be binding precedent of general applicability which makes explicit what was previously implicit and brings the test for obviousness-type double patenting into conformity with the two-way tests applied in other areas of double patenting law.
Although many decisions have stated the test for obviousness-type double patenting, the principal case requiring attention is In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970), a decision which has been frequently cited for its restatement of the law of double patenting. In Vogel, the court provided an analytical framework for "obviousness-type" double patenting in the following terms:
The ... [relevant] analysis question is: Does any claim in the application define merely an obvious variation of an invention disclosed and claimed in the patent? In considering the question, the patent disclosure may not be used as prior art.... We recognize that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim. A claim is a group of words defining only the boundary of the patent monopoly. It may not describe any physical thing and indeed may encompass physical things not yet dreamed of. How can it be obvious or not obvious to modify a legal boundary? The disclosure, however, sets forth at least one tangible embodiment within the claim, and it is less difficult and more meaningful to judge whether that thing has been modified in an obvious manner.
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
*12 If the answer to the ... question is no, there is no [obviousness-type] double patenting involved and no terminal disclaimer need be filed. If the answer is yes, a terminal disclaimer is required to prevent undue timewise extension of monopoly.
422 F.2d at 441-42, 164 USPQ at 622 (emphasis supplied).
In Vogel, the claims of the application on appeal related to a process of packaging meat generally (claims 7 and 10), although one claim was directed to a similar process specifically limited to beef (claim 11). The claim of the Vogel patent on which the double patenting rejection was based was directed to a process of packaging pork. Also in evidence was a prior art patent to Ellies teaching a meat-packaging material having the oxygen permeability range recited in the application claims. After determining that the same invention was not being claimed in both the application and the Vogel patent, the court proceeded to ask whether "any claim in the application define[s] merely an obvious variation of an invention ... claimed in the patent." The court answered this question in the negative as to the beef processing claim 11, and concluded that claim 11 did not present any kind of double patenting situation. As to claims 7 and 10, however, the court stated:
Appealed claim 10 ... recites a process to be performed with "meat." "Meat" reads literally on pork. The only limitation appearing in claim 10 which is not disclosed in the available portion of the patent disclosure is the permeability range of the packaging material; but this is merely an obvious variation as shown by Ellies. The answer to the ... analysis question, therefore, is yes, and the claim is not allowable in the absence of a terminal disclaimer. The correctness of this conclusion is demonstrated by observing that claim 10, by reciting "meat," includes pork. Its allowance for a full term would therefore extend the time of monopoly as to the pork process. It is further noted that viewing the inventions in reverse order, i.e. as though the broader claims issued first, does not reveal that the narrower (pork) process is in any way unobvious over the broader (meat) invention disclosed and claimed in the instant application. The same considerations and result apply to claim 7.
422 F.2d at 442-43, 164 USPQ at 622-23 (emphasis supplied).
In re Borah, 354 F.2d 1009, 148 USPQ 213 (CCPA 1966) antedates Vogel and specifically deals with a situation in which delay in the Patent and Trademark Office (PTO) resulted in a later filed improvement patent issuing before an earlier filed basic invention. In Borah, patent claims 4 and 5 directed to an improvement on a basic invention were used as the basis for refusing claims to the basic invention for obviousness-type double patenting. The claims of the application on appeal were directed to a mold manipulating apparatus for use in conjunction with a press. The patent claims, on the other hand, were directed to a similar mold handling and operating apparatus improved by the addition of "spring kickers" and pressure equalizers. The patent on the improvement, although based on an application filed after the application date of the basic invention, gained prompt issuance and served as the basis for the examiner's rejection of the claims of the earlier filed application. Regarding the spring kickers, the board below reasoned that omission of the spring from the patent claim would have been obvious. The court excoriated the board for its method of analysis, saying:
*13 We cannot accept this reasoning and the conclusion of no patentable difference to which it led. The obviousness is not a question of omitting, but of adding spring-kickers. The board seems to have been reasoning in reverse, treating the subject matter of the patent claims as if it were prior art and then reasoning that it would be obvious to omit the springs if a biasing force was not wanted.
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
... The obviousness issue turns on the addition of structure, the obviousness of the improvement defined in the patent claim, not the obviousness of the basic structure, given the improvement as prior art, which it is not. The board, moreover, seems to be applying the well known negative test for patentability, namely, that it cannot be based on the mere omission, from a prior art structure, of an element together with its function. We have no prior art here.
354 F.2d at 1018, 148 USPQ at 220-21 (emphasis in the original).
By virtue of its condemnation of one of the prongs of a two-way test (specifically the obviousness of omitting from a patent claim an element and its function), Borah unquestionably applies a one-way test, albeit one in which the claims of the patent are measured against the claims of the application, rather than vice versa. Borah accordingly supports the proposition, stated in In re Braat, 937 F.2d 589, 593, 19 USPQ2d 1289, 1292 (Fed.Cir.1991), that:
[W]hen a later filed improvement patent issues before an earlier filed basic invention, a double patenting rejection is only proper against the claims to the basic invention if the improvement is not patentably distinct from the basic invention. The rationale behind this proposition is that an applicant (or applicants), who files applications for basic and improvement patents should not be penalized by the rate of progress of the applications through the PTO, a matter over which the applicant does not have complete control.... In this situation, the order of issuance is, in effect, ignored, and the relevant determination becomes whether the improvement is patentably distinct from the generic invention.
On its face, the test stated in dicta in Vogel is simply a one-way test: the claims of the application are to be compared to those of the prior patent to determine whether any of the application claims define merely an obvious variation of the patent claims. The stated rationale is the prevention of "undue timewise extension of monopoly." [FN4] Reconsideration of the facts of Vogel in light of Braat and the manner in which the test in Vogel was actually applied, however, persuades me that the test was, in reality, two-way.
Had the Vogel court stopped before adding the "reverse order" passage which I have emphasized, I would agree that the test stated in Vogel is unequivocally a one-way test. That they did not stop, but went on to view the claims of the inventions "in reverse order," suggests to me that there was either doubt or a lack of unanimity as to the correctness of the literal words of the analysis question they had framed. But for the "reverse order" language at the end of Vogel, one can easily harmonize Vogel and Borah, understanding the test in the case of utility applications involving a basic invention and an improvement thereon to be a one-way test in which the claims of the application are compared to those of the patent, except where delays in the PTO not under the applicant's control obtain, necessitating that the claims of the patent be compared to those of the application. [FN5] One is even tempted to dismiss the "reverse order" language at the end of Vogel as being surplusage or a product of excess caution on the part of the court in attempting to demonstrate to the appellant that no matter how viewed, the obviousness-type double patenting rejection was proper. [FN6] For me, however, Braat has removed that possibility.
*14 As the majority has already noted, Braat involved an application of Braat and a patent to Dil which were commonly owned. Dil's application was filed subsequent to Braat's. Both were concerned with optical record carriers having information carried on tracks, the tracks being composed of information areas defined by pits separated from one another by intermediate regions or lands. In order to increase the amount of information which can be stored on a record carrier while at the same time avoiding "cross-talk" resulting from the proximity of adjacent tracks, Braat disclosed alternating the phase depth of adjacent tracks. Dil, while concerned with controlling phase depth of information areas on record carriers, was primarily concerned with the effect of the angle of the side walls of the information area on side depth. Dil's invention employed V-shaped grooves functioning as information areas. Dil also recognized that his V-shaped grooves could be advantageously combined with Braat's invention, whose earlier filed patent application he referenced, in an embodiment wherein alternating track portions have different phase depths and the information areas have angled side walls. Dil's independent claim 1 was directed to a record carrier having angled side walls, while dependent claims 5/1 and 6/1 added the alternating phase depth structure. A panel of this board sustained the rejection of Dil's claims on the basis of obviousness-type double patenting over Dil's dependent claims 5/1 and 6/1.
In its decision, the court stated:
The crux of this appeal comes down to whether the Board erred in applying a "one-way" patentability determination instead of a "two-way" determination. The Board correctly found that the rejected claims of Braat are merely obvious variations of the invention described by dependent claims 5/1 and 6/1 of Dil. The only difference between the claims of Braat and claims 5/1 and 6/1 of Dil is the omission of the requirement in the claims of Dil of information areas having side walls which are angled at a particular angle, and we do not think that omission of such a limitation in the present case would constitute an unobvious modification. The issue is whether the Board erred in concluding that such a one-way determination was all that was necessary or whether it was necessary to also determine whether the claims of Dil are patentably distinct from the invention described by the rejected claims of Braat; i.e., whether the addition in the claims of Dil of side walls which are angled at a particular angle was merely an obvious modification over the invention claimed in Braat.
937 F.2d at 593, 19 USPQ2d at 1292 (emphasis in the original).
As the majority points out, the court did indeed indicate that the Dil invention was separate from that of Braat and conceivably could have been developed earlier than that of Braat, and as such, Dil's invention was not necessarily an "improvement" of Braat's invention. The court characterized the inventions of Dil and Braat as separate subcombinations "which are described by their respective independent claims" that Dil then combined to form a third invention, a combination described by dependent claims 5/1 and 6/1 of Dil. This characterization was in response to the attempt of the assignee to characterize Dil's invention as an improvement over Braat, in an effort to analogize the situation in Braat to that in Borah.
*15 None of this changes the fact that Dil's combination invention, which was necessarily later in time than that of Braat and which had a later application filing date than did Braat's application, issued as a patent before Braat, creating a situation precisely like that in Borah. If Borah were still good law in its entirety, that is, if the test to be applied was one-way, the court could have and should have simply applied that same one-way test and in the same direction as in Borah, in which case Dil's patent claims 5/1 and 6/1 would have been compared against the claims of the Braat application to determine whether Dil's claims were obvious over Braat's claims. Doing so (i.e., applying a one-way test as in Borah), they would have avoided treating Dil's patent claims 5/1 and 6/1 as prior art, which they are not so far as Braat is concerned. The same result would have been produced as has been produced by the application of the two-way test. It appears to me that the only reasonable explanation for not following Borah is that the court has concluded that the test to be applied in obviousness-type double patenting situations is necessarily a two-way test.
The majority is of the view that the court in Braat found the "reasoning of Borah" to be controlling. To this end they quote Braat to the effect that the assignee (Philips) of the Dil patent and Braat application
could not have included the claims of Dil in the Braat application, for Braat did not invent the subject matter of the Dil claims ... Nor could Philips have included the claims of Braat in the Dil application, for Dil did not invent the subject matter of the Braat application ... Philips filed the Braat and Dil applications so as to maintain proper inventorship, with claims directed to Braat's "subcombination" invention in the first application and claims directed to both Dil's "subcombination" invention and to the "combination" invention in the second application ... It is not Phillips' [sic, Philips'] fault that the combination claims in the Dil patent issued first. Thus, a double patenting rejection is sustainable here only if claims 5/1 and 6/1 of Dil are not patentably distinct from the subject matter defined by the rejected claims of Braat, and the Board erred in sustaining the double patenting rejection without making such a "two-way" determination. [emphasis added]
The majority fails to say why the court did not simply follow the test of Borah, rather than its reasoning. I believe that the court did not follow Borah's test because it had already departed from the one-way test necessarily present in that case as early as the time of Vogel.
The majority correctly points out that Carman Industries involved "obviousness-type" double patenting in the design/utility setting and notes that the three judge panel of the court could not have extended the two-way test to a utility-utility situation without sitting en banc for the purposes of overturning the precedential decision of Vogel. [FN7] The answer to this is that Vogel's test is, in reality, not a one-way test, for the reasons noted above. There was nothing in Vogel to overturn; the portion of the decision which "restated" the test for obviousness-type double patenting is simply dicta.
*16 Because I consider the court to have made clear that the appropriate test is a two-way test, I am compelled to the conclusion that the examiner's rejection of claims 1 through 15 on the basis of the judicially created doctrine of obviousness-type double patenting cannot be sustained. Assuming the correctness of the majority's determination that claims 13 through 15 of the application are obvious variations over claims 2 and 6 of the appellants' prior patent and that application claims 1 through 12 are obvious variations over claims 2 and 6 of the appellants' prior patent in view of Rydborn, I nevertheless see no basis for concluding that patent claims 2 and 6 are obvious variations over the claims of the application. Patent claims 2 and 6 specifically require, by virtue of their incorporation of the language of respective parent claims 1 and 5, that the switching means include "pressure sensitive means located on the face of the backboard for controlling the on/off actuation of said illumination lights." Nothing in the claims of the application or in any of the cited prior art would have made obvious the addition to the structure defined by the application claims of pressure sensitive means on the face of the backboard for the stated purpose.
FN1. We note that the examiner's statement of this rejection and the above rejection are couched as "provisional" rejections, utilizing the numbering of the claims as they appeared in the application, which is appropriate prior to the time the patent issues. However, the patent issued on January 15, 1991. Thus, the obviousness-type double patenting rejections of the claims on appeal are no longer provisional, and we have identified the patent claims which correspond to the indicated application claims.
FN2. Although we understand that the presence of identical claims in an application may render the claimed invention as a whole confusing and unclear, the examiner did not follow the procedure set forth in Section 706.03(k) of the MPEP, i.e., reject the second claim once the first claim is found allowable.
FN3. See Irving, Kaminski and Kordich, "DOUBLE PATENTING: ONE WAY, TWO WAY; WHOSE DELAY?" from the Second Annual Continuing Legal Education Program on Patent Prosecution and Litigation, Akron, Ohio, April 24-25, 1992.
FN4. The court has indicated its preference for the more accurate and less emotion generating expression "extension of patent rights." In re Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed.Cir.1986).
FN5. In this regard, see General Foods Corp. v. Studiengesellschaft Kohle mbH, 765 F.Supp. 121, 20 USPQ2d 1673 (S.D.N.Y.1991), decided May 30, 1991, less than a month before Braat, in which the court did essentially that.
FN6. It might be argued that the court was merely trying to demonstrate that a change in order of issuance would not have altered the result. I see no reason for it to have done so, however, since that would have amounted to an advisory ruling on a situation not before the court.
FN7. The majority also points out that the decision in Carman Industries was not unanimous, Judge Nies concurring-in-part and stating
I do not agree that in obviousness-type double patenting each patent must be found obvious from the other. If one patent is obvious from the other and has the effect of extending its term, the second to issue is invalid.
Be that as it may, Chief Judge Nies was part of the unanimous panel which decided Braat.
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