Creative, but losing, arguments against obviousness-type double patenting

What are your options for fighting an obviousness-type double patenting rejection when you don't want to – or can't – file a terminal disclaimer, yet you don't have good arguments for argue non-obviousness? Today's post will cover a half-dozen cases where Applicants came up with atypical arguments against double patenting ... but all were losing arguments at the Board.

The Applicant in Ex parte Germeyer (BPAI 2010) took the position that since the commonly owned reference was unavailable as prior art under §103, the reference was also "unavailable as a secondary reference to support an obviousness-type double patenting rejection." The Board disagreed. The Board stated that the double patenting rejection was not made under §103, even if the obviousness analysis is similar. "Rather than precluding patentability as under §103, nonstatutory double patenting rejections permit patenting conditioned by a terminal disclaimer. Thus, we find Appellants’ arguments based on §103(c) unpersuasive." 0).

The Applicant in Ex parte Stomp (BPAI 2012) appealed an obviousness-type double patenting rejection. The facts of this case were a bit unusual in that the application on appeal did not claim priority to the issued patent, and the application on appeal and the issued patent had different owners. The Applicant argued that neither of the policies addressed by double patenting rejections – extension of term and harassment by different assignees – was relevant to these facts. First, the Applicant noted that extension of term was not implicated because of the appealed application would expire several years before the patent used in the rejection. Second, the Applicant explained that the application and the patent "are owned and have always been owned by two separate entities”." The Applicant distinguished this from the In re Van Ornum line of cases, where the court dealt only with commonly owned patents that might subsequently be assigned or transferred to different parties. The Board agreed that term extension was irrelevant here, but was not persuaded by the argument about lack of common ownership. The Board discussed In re Fallaux, which endorsed the Ornum rationale.

     We note that the Fallaux court explicitly stated that its opinion “should not be read to decide or endorse the PTO‟s view” as to “whether a patent may be used as a reference for an obviousness-type double patenting rejection where the patent shares only a common inventor with the application, rather than an identical inventive entity or a common assignee.” In re Fallaux at 1315 (citing MPEP § 804 ¶ I.A.).
     ... [G]iven that the possibility of multiple assignee harassment is not avoided when the conflicting subject matter is separately owned at the time the applications are filed, we are not persuaded that an obviousness-type double patenting rejection is only proper when the claimed subject matter is potentially transferred to separate assignees after the applications are filed.

Two Board decisions dealt with Applicants who argued the impropriety of a provisional double patenting rejection. During prosecution, the Applicant in Ex parte Bolle (BPAI 2011) faced a series of prior art rejections and a provisional double patenting rejection. The Applicant fought the prior art rejections by arguing and/or amending. The Applicant repeatedly requested the Examiner to withdraw the provisional double patenting rejection, reasoning that since the prior art rejections had been overcome, and the instant application was filed the same day as the reference, "the Examiner must withdraw this provisional rejection." The Applicant repeated the same argument on appeal: the Board should reverse the provisional rejection in view of the identical filing date of the two applications, and the Applicant's position that "the sole rejection of [the claims on appeal] under 103 is improper. The Board affirmed the obviousness rejection and the double patenting rejection. The common filing date was not grounds for reversal because term extension was not the only policy behind double patenting. “[T]here is a second justification for obviousness type double patenting - harassment by multiple assignees.” (citing In re Fallaux, 564 F.3d 1313, 1319, (Fed. Cir. 2009)).

The Applicant in Ex parte Luu (BPAI 2011) made a purely procedural argument about a provisional double patenting rejection. The Applicant relied on MPEP 804(I)(B)(1), which directs the Examiner to withdraw a provisional double patenting rejection when no other rejections remain. The Applicant noted that the copending application used in the rejection could not be expected to issue first since it had not yet started examination. According to the Applicant, this fact in conjunction with the MPEP directive were grounds for the Board to reverse or vacate. The Board viewed this as an untimely request for procedural relief and refused, citing Ex parte Moncla, 2009-006448 (BPAI 2010) (precedential). The Board acknowledged that the Examiner did have the discretion to withdraw the provisional rejection, but noted that jurisdiction had since passed from the Examiner to the Board. The Board then explained that petition, rather appeal, was the appropriate mechanism to contest the Examiner's refusal to withdraw the provisional double patenting rejection. (Ex parte Luu, PTAB 2011)(Appl. No. 11/297,201).

Finally, the Applicant in Ex parte Lin (BPAI 2012) went to appeal with only a double patenting rejection. After losing at the Board, the Applicant filed a terminal disclaimer and then a Request for Rehearing at the Board. The Request asked the Board to reconsider the rejection "in view of the recently submitted terminal disclaimer," or in the alternative, to remand to the Examiner for consideration of the Terminal Disclaimer. The Board denied the Request because Rehearing is limited to arguments already made the Brief. The Rehearing Decision said nothing about remand. The Applicant then filed the Terminal Disclaimer again, this time with an RCE. In the Remarks submitted with the RCE, the Appilcant asked for speedy issuance, noting that the Application had already been in prosecution for five years and only six years of term remained because of the terminal disclaimer. PAIR shows that the Terminal Disclaimer was approved a few days after filing of the RCE – but as of today, more than six months have since elapsed with no further action on the case.

Follow up to Ex parte Osborne

In my last post (here) I discussed Ex parte Osborne and said I didn't understand the opinion the first time I read it. In this post, I'll discuss the reasoning behind the Board's decision. This reasoning wasn't apparent to me at first, but apparently quite a few readers did figure it out, and they've posted comments to explain. So if you've read the comment thread on the last post, you know the answer already.  


As discussed in my previous post, the main issue in the Brief and the Answer was whether water acted as an antimicrobial agent at the temperatures disclosed in the reference. The Board seemed to ignore that issue and instead affirmed based on a finding that the "[Applicant's] Specification expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism." I wondered why the Board felt it could ignore the temperature issue. After all, that's the point the parties argued on appeal.

As a reminder, here's the claim on appeal, with the limitation at issue emphasized.

35. A meat processing system comprising a series of stations in order:
     A first station for stunning an animal;
     A second station for exsanguinating the animal;
     A third station that is a wash station where at least one antimicrobial agent is applied to a hide of a hide-on animal carcass; and
     A fourth station that is a hide removal area configured to at least partially remove at least a portion of the hide from the hide-on animal carcass,
     wherein a conveyor system transports the hide-on animal carcass through at least the third and fourth stations.

The key to understanding the opinion is the first two words emphasized in one of the Board's Findings of Fact.

The Specification provides that "the antimicrobial agent may be any chemical or substance capable of killing, neutralizing, or removing microorganisms. In one embodiment, the antimicrobial agent is water or some combination of water and at least one other antimicrobial agent.
(Finding of Fact 1, emphasis in PTAB opinion.)

The Board found that the Applicant had defined the claim term "antimicrobial agent" in this first sentence. And after carefully re-reading the opinion, I realized that the Board ignored water temperature because they weren't relying on the first ("killing") prong of the definition. Instead, the Board apparently relied on the "removing" prong of the definition. The physical action of water applied to the hide removes microorganisms, regardless of the water temperature. Well, maybe not in all scenarios, but certainly when the Norrie reference specifically disclosed that "carcass is also subject to deluge flow of water for washing." (Finding of Fact 4.)

So yeah, I agree that Norrie teaches "at least one microbial agent is applied to the hide," because it's clear that a flood of water will remove microorganisms, regardless of water temperature.

I'm still annoyed that the Board's opinion wasn't written in a way that makes this more clear. After discussing the temperature issue argued by the parties, the Board should have said something like "The temperature of the water is irrelevant because Applicant's explicit definition covers 'removing microorganisms' which can be achieved by the physical action of a 'deluge flow' of water coming into contact with the hide." Instead, the Board made the cryptic statement "[Applicant's] Specification expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism." Without explaining why temperature was irrelevant.

Had the Board written that, I probably still would have written about the decision. But my post would have been about the dangers of getting stuck on one issue and not realizing there are other issues you need to address. Basically, the Applicant went down the wrong track, got stuck on it, and lost at the Board as a result. Perhaps the Applicant would have realized the error had the Examiner steered the Applicant back to the "removing microorganisms" aspect of the definition. It's not 100% clear to me that the Examiner relied on the removal aspect at any point in prosecution, though there are a few hints here and there that he did.

Is this a new ground of rejection? The Board relied on the very same sections of the Norrie reference that the Examiner did. I'm no expert on "new grounds" law, but perhaps it isn't a new ground for this very reason. If not a new ground, that seems a bit unfair. Basically, the Board decided the case on an issue that wasn't even briefed by the parties. Yes, the case law allows the Board to do this, but a new ground would remove some of the sting for the Applicant by saving him an RCE fee if he wanted to narrow his claims after appeal. On the other hand, the real sting of appeal -- win or lose -- is pendency before the Board.

Board says claim term, as defined in the specification, reads on the reference

Takeaway: The Applicant appealed claims to a meat processing system. The claim included the limitation "a wash station where at least one antimicrobial agent is applied to a hide." The Examiner relied on a reference that disclosed water applied to a carcass, and the Applicant presented evidence that a POSITA would not consider water to be an antimicrobial at the temperature disclosed in the reference. The Examiner noted that the claim did not recite a temperature, and that the Applicant's specification disclosed lower water temperatures and was thus was inconsistent with the evidence. The Board affirmed the rejection, finding that "[Applicant's] Specification expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism." (Ex parte Osborne, PTAB 2012.)

Details: Ex parte Osborne
Appeal 2011011685; Appl. No. 11/084,785; Tech. Center 3600
Decided  Aug. 28, 2012

A representative claim on appeal read:

35. A meat processing system comprising a series of stations in order:
     A first station for stunning an animal;
     A second station for exsanguinating the animal;
     A third station that is a wash station where at least one antimicrobial agent is applied to a hide of a hide-on animal carcass; and
     A fourth station that is a hide removal area configured to at least partially remove at least a portion of the hide from the hide-on animal carcass,
     wherein a conveyor system transports the hide-on animal carcass through at least the third and fourth stations.

The dispositive issue for the independent claims on appeal was the meaning of the term "antimicrobial agent."

The Examiner rejected system claim 35 as obvious over Lawler, Norrie, and Simon, relying on Norrie for teaching the "antimicrobial agent is applied ..." limitation. During prosecution, the Applicant argued that Norrie disclosed the application of high temperature water to soften the hair of the carcass. The Examiner explained in an Advisory Action that Norrie's high temperature water was considered antimicrobial because Applicant's specification taught "the use of water by itself as an antimicrobial agent and therefore the high temperature water of Norrie can be construed as an antimicrobial agent."

The Applicant appealed, and in the Appeal Brief introduced evidence to show that Norrie's high temperature water was not an antimicrobial agent:

Norrie's water temperature is not sufficient to act as antimicrobial in the context of the present invention. Norrie provides that the [applied water] may be in temperature zones of 45-60, 55-65 and 50-60 degrees C. This temperature is not high enough to provide antimicrobial action. See, for example, the Williams reference [Appendix XI], which provides evidence that when water is used as an antimicrobial intervention, the temperature of the water is 165 degrees F, 73 degrees C.

The Examiner replied to this argument in the Answer by noting that "Appellant's arguments are not consistent with the antimicrobial agents detailed in Appellant's specification," since the specification listed "water by itself." The Answer then commented on the Williams reference offered as evidence by the Applicant

[T]his Williams et al. evidence does not state the temperature of the water is critical in view of other water temperatures and as seen in para. 0054 of Applicant's specification, the water temperature detailed by Applicant is between 100-190 degree F and therefore the Williams evidence is not consistent with Applicant's disclosure and it is noted that the temperature of the water is not found on any of the claims on appeal.

The Board affirmed the rejection. The Board first looked to the following sentences in Applicant's Specification:

The antimicrobial agent may be any chemical or substance capable of killing, neutralizing, or removing microorganisms. In one embodiment, the antimicrobial agent is water or some combination of water and at least one other antimicrobial agent.
(Finding of Fact 1, emphasis in PTAB opinion.)

Based on this finding, the Board went on to find that "antimicrobial agent" encompassed water at the temperatures taught in Norrie. The Board explained its claim construction as follows:

The Specification defines an antimicrobial agent to be any “chemical or substance capable of killing, neutralizing or removing microorganisms.” (FF1.) The Specification further discloses that water is an antimicrobial agent. (FF1.) Thus, the limitation of ‘at least one antimicrobial agent” is interpreted to include water. The limitation of “a wash station where at least one antimicrobial agent is applied to the hide of a hide on animal,” as recited in claim 35, is interpreted to encompass applying water to the hide of an animal. ... As noted by the Examiner, Norrie uses water in the washing steps, and water is encompassed by the definition of an antimicrobial agent as provided in the Specification. (FFs 1, 2, 4.)

The Board explained that this definition trumped the evidence offered by the Applicant to that show water did not in fact act as an antimicrobial at the temperatures used in Norrie:

[Applicant's] Specification expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism. See Serrano v. Telular Corp., 111 F.3d 1578, 1582 (Fed. Cir. 1997)(“The inventors’ definition and explanation of the meaning of the word … as evidenced by the specification, controls the interpretation of that claim term).

My two cents: I had a lot of trouble understanding the Board's opinion. It's clear to me that the Board relied on a definition of antimicrobial agent in the Applicant's spec. ("[Applicant] expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism.") But how does the Board get from antimicrobial-means-killing-neutralizing-or-removing to water-is-an-antimicrobial-even-at-temperatures-that-don't-kill?

I do read the Specification statement "antimicrobial agent may be any chemical or substance capable of ..." as a definition of microbial agent. As such, the Applicant is bound by this definition, even it's different than what a POSITA would understand. But the Board went further, saying that the Applicant had defined antimicrobial in such a way that temperature was irrelevant. How so?

Surely the question of what chemicals or substances meet the kills-neutralizes-or-removing definition, is one of fact. Does water kill microorganisms at any temperature? This is not my area of expertise, but I think I know enough about science to say No.

In the Answer, the Examiner noted that "the temperature of the water is not found on any of the claims on appeal." This is a red herring, because the claim didn't say "water is applied to the hide". If it did, then sure, any teaching of applying water would anticipate the element, regardless of temperature. But since the claim instead said "antimicrobial agent is applied to the hide", we have to ask what a POSITA knows about water as an antimicrobial.

The Williams reference submitted by the Applicant said No, that "when water is used as an antimicrobial intervention, the temperature is 165° F." Whereas Norrie disclosed applying water at temperatures of 113-149° F.

The Examiner countered this argument by pointing to additional statements in the Spec:

[0054] The heater 108 may heat the wash solution to a temperature ranging from about 100 to about 190 degrees Fahrenheit. In a further embodiment, the heater 108 may heat the wash solution to a temperature ranging from about 140 to about 150 degrees Fahrenheit. Alternatively, the heater 108 heats the wash solution to another temperature known to kill microbes.

According to the Examiner, these statements showed that "the Williams evidence is not consistent with Applicant's disclosure." Wrong. Let's assume for the sake of argument that if the Applicant misstates a technical fact, he's bound by it. So if the Spec really did say that water has an antimicrobial effect at 100° F, then the reference anticipates.

But wait ... the Spec didn't say that. The Spec disclosed various embodiments that heat water to different temperatures. Not an admission that water is antimicrobial at these temperatures. In fact, you could argue that the last sentence ("Alternatively ... to another temperature known to kill microbes") means that water does not kill microbes at the other listed temperatures.

So I say the Examiner is wrong, and the rejection is in error.

However, I suspect that the Board affirmed the rejection based on entirely different reasoning -- and did a terrible job of explaining this. I'll discuss this in my next post.