One-way Test For Obviousness-Type Double Patenting Does Not Require Full Graham Analysis

In re Basell Poliolefine Italia S.P.A. (No. 07-1450; November 13, 2008) involves a Director-ordered reexamination of claims directed to processes for polymerizing and copolymerizing olefins with a catalyst obtained by reacting an aluminum alkyl compound with a titanium halide compound. In this case, the Federal Circuit affirms the Board of Patent Appeals and Interferences' finding of obviousness-type double patenting over an expired U.S. patent issued to the same inventor.

On appeal from the Board, the Federal Circuit holds that Applicants' actions or inactions that delayed prosecution, including repeatedly filing continuing applications without appeal, require application of the one-way test for obviousness-type double patenting. The one-way test generally applies where a first-filed application to a basic invention issues as a patent before a second-filed application to an improvement of that invention. In contrast, the two-way test applies where the second-filed application issues before the first-filed application solely due to PTO delays. Since delays due solely to the PTO were not present in this case, the one-way test applied. In particular, the Federal Circuit noted that Applicants did not file claims resembling the claims at issue until nine years after the application that resulted in the expired patent, and those claims were filed only for interference purposes. In addition, Applicants repeatedly filed claims directed to unrelated inventions, advocated for interferences for unrelated inventions, and repeatedly filed continuing applications without appeal.

The Federal Circuit further holds that the one-way test does not require a full Graham analysis. Although the Board failed to consider each of the Graham factors, it was enough for the Federal Circuit that the Board found the claims at issue to be an obvious variant of a claim in the expired patent.