Responding to Statutory Double Patenting Rejections

By Andrew Dunlap of Haynes Beffel & Wolfeld LLP posted in patent law on Tuesday, August 22, 2017.

When was the last time you received a rejection of patent claims from the U.S. Patent Office that left you scratching your head… so much so, that you had to look up some law to figure out how to handle it? Recently, I had to respond to a

statutory double patenting rejection. Notably, a statutory rejection is not the simple non-statutory double patenting rejection that you can address by submitting a standard terminal disclaimer form in which you promise you will not exercise the claims past the lifetime of the patent that is the subject of the rejection. Here is an example that reflects the situation I recently confronted:

Patent Claim 1 (pending claim at issue in our case)

In our example, our pending at issue in the Office’s rejection, which we’ll call claim 1, is directed to illuminating an object whose position and a shape in a three-dimensional (3D) space is being determined by a computer system (i.e., illuminating, using a single lamp having a particular vantage point, an object by casting an output from the single lamp onto at least a portion of the object).

Patent Claim 2 (patented claim at issue in our case)

The Office’s rejection cites against our patent claim 1, a patented claim at issue, which we’ll call claim 2, that recites, in part, “… illuminating, with a plurality of lamps, each lamp of the plurality of lamps having a particular vantage point, by casting an output from the plurality of lamps onto at least a portion of the object.”

Well, my legal research began with the Manual of Patent Examining Procedure (MPEP), and it does a pretty good job of setting forth the rule and identifying two different tests. First, the standard set forth for statutory type double patenting is that the claim that is subject to the double patenting rejection must be directed to the “same invention,” meaning “identical subject matter.” To further clarify, MPEP §804 explains that “[a] reliable test for double patenting under 35 U.S.C. 101 is whether a claim in the application could be literally infringed without literally infringing a corresponding claim in the patent.” This warrants the question: “Is there an embodiment of the invention that falls within the scope of one claim, but not the other?” Moreover, “… if there is such an embodiment, then identical subject matter is not defined by both claims and statutory double patenting would not exist.”

Second, the MPEP describes two tests for determining whether a claim in a pending application at issue must be rejected in view of a patented claim at issue under statutorily double patenting – the Infringement Test and the Embodiment Test. Let’s look at each of these:

1. Under the Infringement Test, if a pending claim at issue can be literally infringed without literally infringing the patented claim at issue, then there is no statutory double patenting.

2. Under the Embodiment Test, if there is an embodiment of the invention that falls within the scope of the claim at issue but not the patented claim, then there is no statutory double patenting.

Although these examples are simplified, it is important to note at the outset of our analysis that the above emphasized portions of claim 1 are not the same invention as that of patent claim 2, because the single-lamp structure in claim 1 is required to also have a single-perspective (e.g., vantage point) and this arrangement is not identical to the multi-lamp structure recited by patented claim 2, which necessarily requires a multi-perspective (e.g., each lamp has its own vantage point).

Now let’s apply the law to these facts. Under the Infringement Test, a single lamp, single perspective arrangement would literally infringe claim 1 but would fail to literally infringe claim 2. Claim 2 calls for a plurality of lamps and a plurality of vantage points – and the single lamp, single perspective of claim 1’s infringing device fails to meet these requirements. As a result, there is no statutory double patenting of claim 1 under the Infringement Test.

Under the Embodiment Test, an embodiment that includes a single lamp and single perspective would fall within the bounds of pending claim 1. This embodiment would not, however, fall within the boundaries of claim 2, because claim 2 calls for a plurality of lamps that have a plurality of vantage points. These limitations cannot be met by our example embodiment. Accordingly, both the Infringement Test and the Embodiment Test are satisfied in favor of no double patenting under these facts.

We hope this brief discussion has been helpful to illustrate the law governing Statutory Double Patenting and guide the practitioner in responding to this type of rejection.

Disclaimer: The foregoing represents the thoughts of the authors and is not a legal opinion nor does it form a relationship with our viewers. The information you obtain at this site is not, nor is it intended to be, legal advice. You should consult an attorney for advice regarding your individual situation. We invite you to contact us and welcome your calls, letters and electronic mail. Contacting us does not create an attorney-client relationship. Please do not send any confidential information to us until such time as an attorney-client relationship has been established.

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