Alert September 29, 2009

Is There a New Form of Non-Statutory Double Patenting Under In re Schneller?

Patent law grants patent holders the right to exclude others from making, using or selling a patented invention. It also seeks to ensure that there is no unjustified extension of this protection. One manner in which the U.S. Patent and Trademark Office, the Board of Patent Appeals and Interferences (“BPAI”) and the Federal Circuit have enforced the latter goal is through the non-statutory rule against double patenting. This judicially created rule precludes the issuance of two commonly owned patents having claims that are not patentably distinct from one another. While this general rule for non-statutory double patenting is well settled, several recent decisions by the BPAI have received attention for their use of a unique and separate double patenting rule first applied in In re Schneller, 397 F.2d 350 (CCPA 1968), a 1968 Court of Customs and Patent Appeals (“CCPA”) decision that has been a source of conflict. Although Schneller has been cited to reject numerous patents on the basis of double patenting, an examination of the BPAI and Federal Circuit’s reading of Schneller reveals a double patenting test with no prevailing standard and a history of inconsistent interpretation.

In re Schneller

Schneller involved a continuation patent application (“child”) of a parent patent that claimed a clip system for securing a gypsum lath to support members in partition wall constructions. The parent patent claimed an invention comprised of elements A, B, C and X (“ABCX”). The parent patent also disclosed in its specification an embodiment involving elements ABCXY. The child claimed an invention comprised of elements ABCY. This embodiment was never claimed by the parent patent. In a non-majority opinion, the CCPA concluded that the subject matter of the child’s claims (ABCY) was “covered” by the subject matter of the parent patent because the child’s claims covered an embodiment comprised of elements ABCXY – an embodiment that was already disclosed by the parent patent.  Because there were also no mitigating circumstances that prevented the claim at issue from being part of the earlier patent, the CCPA rejected the child patent application claims on the basis of double patenting. However, in its decision the CCPA did not explicitly outline the necessary elements to reject a patent on the basis of double patenting. As a result, the BPAI has had to analyze Schneller in subsequent cases to determine its double patenting test.

The Inconsistent Schneller Tests

The BPAI has inconsistently interpreted Schneller in the years since the decision. Earlier cases generally relied on Schneller to support the proposition that the rule against double patenting is to prevent the unjustified extension of patent protection. Later cases, however, held Schneller to require a rejection of patents on the basis of double patenting where the particular set of facts set forth in Schneller are present. However, these later BPAI decisions are inconsistent with respect to the particular fact pattern that must be present. Several different lines of the Schneller test have developed over the years since the decision. However, there has yet to be a clear prevailing standard.

In one line of decisions, the BPAI held Schneller to require a rejection on the basis of double patenting where the claims at issue (i) read on the subject matter and do not improve or modify the prior patent, and (ii) were not prevented from being presented with the original patent.  See, e.g., Ex parte Nilssen, Appeal No. 96-3618 (Bd. Pat. App. & Inter. July 22, 1999).

In another line of decisions, the BPAI found Schneller to require a rejection on the basis of double patenting where the claims (i) are not “patentably distinct,” and (ii) were not prevented from being presented with the original patent. See, e.g., Ex parte Davis, 56 USPQ2d 1434 (Bd. Pat. App. & Inter. 2000).

In Ex parte Raterman, Appeal No. 1998-0941 (Bd. Pat. App. & Inter. July 31, 2000), the BPAI added an additional condition to the test set forth in Davis. It found Schneller to require a rejection on the basis of double patenting where (i) the claims are not “patentably distinct,” (ii) the claims were not prevented from being presented with the original patent, and (iii) no terminal disclaimer had been filed.

Scattered among these lines of cases are other unique interpretations of Schneller by the BPAI. In Ex parte Sommerfeld, Appeal No. 2008-0301 (Bd. Pat. App. & Inter. Mar. 31, 2008), the BPAI found Schneller to require rejection on the basis of double patenting where (i) everything disclosed in the application was disclosed in the patent and the patent disclosed additional matter and (ii) the application at issue was a continuation of an intermediate application. In Ex parte Walker, the BPAI rejected prior tests and instead found the correct test to be whether “the same invention [is] being claimed twice.”  Appeal No. 1999-1042, at *11 (Bd. Pat. App. & Inter. April 14, 2000).

Because CCPA decisions are binding on the Federal Circuit, South Corp. v. U.S., 690 F.2d 1368 (Fed. Cir. 1982), Schneller has been cited numerous times by that court. Unlike the BPAI decisions, the Federal Circuit has cited Schneller solely in applying the standard rule against double patenting. See e.g, Eli Lilly and Co. v. Barr Labs. Inc., 58 USPQ2d 1869 (Fed. Cir. 2001). Although the court in In re Metropolo Succinate Patent Lit., 494 F.3d 1011 (Fed. Cir. 2007), cited the case in finding obviousness-type double patenting, it never went so far as to find a separate rule under Schneller. Instead, the court used the case to limit several prior CCPA decisions in support of the proposition that a patentee may claim an element after claiming the combination without fear of a double patenting rejection.

The Latest Test  

The latest BPAI interpretation of Schneller was delivered on May 22, 2009, when the BPAI rejected the “Harvey 3” (“child”) patent on the basis of double patenting over the parent patent, “Harvey 2.”  Ex parte Reexamination Control, Appeal No. 2008-4228 (Bd. Pat. App. & Inter. May 22, 2009). The parent patent claimed a method of transmitting and detecting a signal that instructs a computer to generate a signal that would transmit the user information (“transmit signal”). The child patent claimed a method of transmitting and detecting a signal that instructs a computer to generate certain user information (“generate signal”). The parent never claimed this method but did disclose a method involving both the generate signal and the transmit signal. In the opinion, the BPAI enumerated a novel version of the Schneller test, concluding that it must reject child patent claims on the basis of double patenting where:

  • The subject matter recited in a claim of the later application was fully disclosed and covered by a claim in the earlier patent;
  • There was no reason why the applicant was prevented from presenting the same claims for examination in the issued patent; and
  • It would be impossible to practice the preferred embodiment (best mode) of the patent covered by the parent claim without infringing the later claim.

In rejecting the child claims on the basis of double patenting, the BPAI concluded that the parent’s transmit signal claims covered the disclosed embodiment comprised of both the generate signal and the transmit signal. Because the child’s generate signal claims also covered this previously disclosed embodiment, the BPAI concluded that the child’s generate signal claims were covered by the parent’s transmit signal claims. In addition, the BPAI found that the child’s claims could have been included in the earlier patent. Finally, the BPAI held that it would have been impossible to practice the preferred embodiment without infringing the earlier patent.

Looking Ahead

Although Schneller has been cited to reject numerous patents on the basis of double patenting, an examination of BPAI decisions makes clear that there has yet to be a prevailing interpretation as to what particular fact pattern must be present in order to reject a patent under that decision. The BPAI, in its latest decision, adds to the confusion by adding a third element to the Schneller test, which appears to lack any foundation in the case’s 41-year history of interpretation. As a result, it may be prudent for inventors to be mindful of this decision when trying to claim an invention through one or more continuation patent applications so as to minimize the risk of inadvertently creating a situation for a double patenting rejection based on Schneller.