Page1 INREPAOLOLONGI,etal. No.84-1561 UNITEDSTATESCOURTOFAPPEALSFORTHEFEDERALCIRCUIT 759F.2d887;1985U.S.App.LEXIS14769;225U.S.P.Q.(BNA)645 April11,1985 PRIOR HISTORY: [**1] Appealed from: U.S. I. Patent&TrademarkOfficeBoardofAppeals. BACKGROUND A. TheApplication. COUNSEL: Ellsworth H. Mosher, Stevens, Davis, Miller & Mosher, of Alexandria, Virginia, argued for Appellants claim certain highly active catalysts used Appellants. in the polymerization of ethylene. The application discloses that the polymerization of ethylene has been Harris A. Pitlick, Associate Solicitor, of United States aided [**2] by "Ziegler" catalysts which are complexes Patent & Trademark Office, of Arlington, Virginia, of transition metal halides (the transition metal being argued for Appellee. With him on the brief were Joseph titanium, and the halide being a chloride, for example) F. Nakamura, Solicitor and John W. Dewhirst, Associate with organometallic compounds of metals belonging to Solicitor. Groups I, II, or III of the Periodic Table. The invention claimed in the application relates to a titanium-based JUDGES: Friedman and Davis, Circuit Judges, and Ziegler catalyst obtained by contacting the titanium Skelton,SeniorCircuitJudge. compound described below, with an anhydrous OPINIONBY:DAVIS magnesium dihalide support under conditions such that thecompoundispreactivatedorbecomesactivated. OPINION Claim17isillustrativeoftheclaimsonappeal: [*889] DAVIS,CircuitJudge. Polymerization catalysts obtained by This is an appeal from a decision of the Patent and mixing Trademark Office Board of Appeals (Board) affirming the examiner's final rejection of appellants' claims 17-34 (A) a catalyst-forming component in application Serial No. 543,520, (January 23, 1975) which is a hydride or organometallic entitled "Polymerization Catalyst." The Board's compoundofametalbelongingtoGroups affirmancewasbaseduponaholdingofobviousness-type I to III inclusive of the Mendelyeev double patenting over the claims of three PeriodicSystem commonly-owned applications, in view of four prior art with patentstoothers. Weaffirm. Page2 759F.2d887,*889;1985U.S.App.LEXIS14769,**2; 225U.S.P.Q.(BNA)645 (B) a catalyst-forming component been abandoned in favor of continuation which is the product obtained by applications Serial Nos. 190,375 and 151,828, dispersing a titanium compound having respectively. thegeneralformula Galli claims polymerization catalysts obtained by (NR[4])[p]Ti[m]X[(n.m)+p] mixing (a) the product obtained by contacting a titanium oxyhalide with a support composed, as in Mayr I, of an inwhichtheRsrepresenthydrogenor anhydrous magnesium dihalide in an active form, with hydrocarbon radicals; the X[(n.m)] (b) a Group I, II, or III hydride or organometallic substituents are halogen atoms or in part compound. As in Mayr I, the dihalide is either OR' groups in which R' is an organic preactivated or "cogrinded" with the titanium compound, radical; n is the titanium valency and m convertingthedihalidetoanactiveform. and p are the whole numbers 1, 2 or 3; on a[**3] carrieressentiallyconsistingofan On November 3, 1981, a [**5] patent was granted anhydrous magnesium dihalide in an on the Mayr II application (filed October 14, 1975), active form characterized in that in its entitled "Catalysts for the Polymerization of Olefins," X-rays spectrum the diffraction line of U.S. Patent No. 4,298,718. The Mayr II patent claims a highestintensitythatappearsintheX-rays catalyst with an active magnesium dihalide support, spectrum of the normal magnesium obtained in the same manner as claimed in Mayr I and dihalide decreases in intensity and in its Galli. Here,atitaniumtetrahalide(TiCl[4],forexample) placeahaloappears. is combined with the support magnesium dihalide and mixed with a hydride or organometallic compound. Alsoclaimedisthemethodofpreparingthecatalystsand Claim11isillustrative: theprocessofpolymerizationusingtheclaimedcatalysts. It is asserted that unexpected results are obtained when Polymerization catalysts prepared by the titanium compound is combined with an activated mixing anhydrousmagnesiumdihalidewhichservesasasupport forthetitaniumcompound. (a) a supported catalyst-forming component the essential support material B. TheCommonly-OwnedApplicationsandPatent of which is an active magnesium dihalide, said component being obtained by Appellants' application (the applicants are Longi, cogrinding a titanium tetrahalide with a Giannini and Mazzocchi) has been assigned to normal, non-active anhydrous magnesium Montedison S.p.A., an Italian company based in Milan, dihalide to obtain a component (a) the Italy. The [*890] assignee also owns the following magnesium dihalide support material of related applications: Serial Nos. 267,624 (Mayr I) which is activated and characterized in (applicants Mayr, Susa, and Giachetti); 524,380 (Galli) that it has one or both of the following (applicantsGalli,Susa,DiDrusco);1and622,550(Mayr properties (1) its X-rays powder spectrum II)(applicantsMayr,Susa,andGiachetti). MayrIclaims doesnotshowthemostintensediffraction polymerization catalysts obtained by mixing a hydride or lines as they appear in the X-rays powder organometallic compound with a product obtained [**4] spectrum of normal, non-active bycontactingatitaniumorvanadiumhalideinwhichthe magnesium dihalide, the spectrum of the metal has a valence lower than 4, with an active form of activated magnesium dihalide showing a anhydrous magnesium dihalide. Specifically, catalysts in broadeningofsaidmostintensediffraction which the transition metal halide is titanium trichloride [**6] lines; (2) the surface area of the (TiCl[3]) are claimed. Also claimed is the method of activated magnesium dihalide is greater preparing the catalyst by cogrinding the titanium halide than3m<2>/g,with with an anhydrous magnesium dihalide, thereby convertingthedihalidetoanactiveform. (b) a hydride or organometallic compound of a metal belonging to one of 1 Serial Nos. 267,624 and 524,380 have both Groups I to III inclusive of the Page3 759F.2d887,*890;1985U.S.App.LEXIS14769,**6; 225U.S.P.Q.(BNA)645 MendelyeevPeriodicTable.2 valence less than 4 (i.e., TiCl[3]); Galli a titanium oxyhalide; and Mayr II a titanium tetrahalide. The application in issue claims catalysts obtained in a similar manner as Mayr I, Galli, and Mayr II, except that a 2 This claim is set forth for purposes of titanium compound with a quaternary nitrogen group comparison to the claims in the instant (NR[4])isclaimed. application. C. ThePriorArt Considered together, the three other applications all claim catalysts obtained by mixing the product of a The prior art references relied on by the examiner titanium compound and an activated magnesium dihalide are: with an organometallic compound. Mayr I claims a catalyst composed in part of a titanium halide with a Hewett 3,238,146 March,1966 Argabright 3,069,446 Dec.,1962 Luft 2,981,725 April,1961 Nowlin 2,918,458 Dec.,1959 references disclose that the titanium compounds claimed [**7] Hewett's patent, entitled "Catalysts and their in the instant and prior applications are well-known Preparation," discloses the use of metal-containing componentsofZiegler-catalyts. catalysts, including titanium catalysts, for aiding polymerizationofunsaturatedmonomers. Thedisclosure D. TheExaminer'sRejection [*891] teachestheuseofmetalsaltssuchasmagnesium chloride, as carriers for the catalysts. Luft's patent, On February 10, 1981, the examiner finally rejected entitled "Process for Polymerizing Olefins," teaches the the claimed subject matter in Longi's application as use of promotors in conjunction with organometallic unpatentableonthegroundofestoppel,reasoningthatthe catalysts to improve the polymerization of ethylene. The titanium species claimed were either compounds known use of an inert organic carrier, such as magnesium to be used in forming Ziegler-type catalysts or were chloride, for the promotor and catalyst is specifically obvious in light of the prior art. The claims were further disclosed as useful in that it increases the accessible rejected by the examiner as unpatentable over the claims surface area of the catalyst, and thus lowers the amount of Mayr I, Galli and Mayr II in view of Nowlin, of catalyst required to produce a given quantity of Argabright, Hewett and Luft, on the grounds of double ethylene. patenting. The examiner suggested that the applicants might overcome this rejection by filing a disclaimer or Nowlin's patent, entitled "Process and Catalyst for havingthepatentsissueonthesamedate. Production of Olefin Polymers," discloses the use of a polymerization catalyst comprised of an ammonium Instead, appellants filed a declaration by Enrico radical, a titanium, and a halogen, combined with a Albizzati, a Montedison biologist researching catalysts hydride or organometallic compound. The disclosed used for olefin polymerization, which purports to outline complex metal halide compounds include ammonium the unexpected results obtained from the applicants' chlorotitonate ((NH[4])[2]TiCl[6]). The Argabright claimed [**9] invention. By comparing the results of patent, entitled "Titanium Halide Derivatives, also four tests which he supervised, Albizzati concluded that teaches [**8] that nitrogen-containing titanium halide the "compound (CH[3])[4]NTi[2]Cl[9] [claimed in the derivatives combined with an electron donor molecule instantapplication]usedaloneandinnotsupportedform perform as active catalysts. Thus, all together, the four [sic] (Test 2) is a catalytic component having very low activity, as compared to TiCl[3] ARA [claimed in Mayr Page4 759F.2d887,*891;1985U.S.App.LEXIS14769,**9; 225U.S.P.Q.(BNA)645 I] used in Test 3 or TiCl[4] [claimed in Mayr II] used in Notice (834 O.G. 1615, January 31, 1967) both state that Test 4." The examiner, however, found the Albizzati "'double patenting' rejections should not be applied to declaration unpersuasive and in his final rejection, based situations involving commonly owned cases of different on the grounds of estoppel and "obviousness type double inventive entities." The Board went on to say that the patenting,"stated: citedpriorartpatentsindicatethatthetitaniumcompound setforthintheinstantapplicationmaybeeffectivelyused It is certainly not surprising that the in conjunction with the well-known Ziegler omission of the magnesium dichloride polymerizationcatalyst.Further,theBoardsaid,itwould results in a catalyst that is far less active beanobviousexpedientandmerelyamatterofchoiceto than the analogous catalyst based on use any of these known titanium compounds in titanium tetrachloride or titanium conjunction with the activated magnesium dihalide trichloride,i.e.,Ziegler-typecatalystbased support and to combine the resulting complex with the on titanium tetrachloride or titanium main catalyst material. Accordingly, the claimed subject trichloride were [sic] known to be more matterwasrejectedasunpatentableovertheclaimsinthe active than those of Nowlin et. al. The commonly-owned applications in light of the four prior catalystofNowlinet.al.,thus,wouldbea artpatents. prime candidate for the activation technique described in the above II. application in view of its very low DOUBLEPATENTING activity. In considering the correctness of the Board's decision, we review any underlying facts [**12] found E. ProceedingsBeforetheBoard by the Board under the clearly erroneous standard. The The Board did not believe that the examiner [**10] Board's ultimate conclusion of obviousness is a question had established a proper basis for a rejection based on oflawdeterminedfromthesefacts,andwillbereviewed estoppel,andaccordinglyreversedastothisground.3As for correctness or error as a matter of law. 4 In re De to the second ground, the Board stated that the double Blauwe, 736 F.2d 699, 222 U.S.P.Q. (BNA) 191 (Fed. patenting rejection would be better characterized as a Cir. 1984). Before discussing the correctness of the rejection based upon 35 U.S.C. § 103 taken with § Board's conclusions, a brief review of the general 102(g). Then, in its opinion on reconsideration, the doctrineofdoublepatentingisappropriate. Board said that the "rejection is based on obviousness 4 We note that the Board did not make the under section 103." Appeal was then taken to this court. instant rejection under § 103. However, a double Inoralargumentbeforethiscourt,theSolicitorstatedthat patenting of the obviousness type rejection is theBoard'sdecisioncouldnotbedefendedasbasedupon "analogous to [a failure to meet] the § 103 in light of § 102(g), but could be sustained on the non-obviousnessrequirementof35U.S.C.§103," grounds of double [*892] patenting of the obviousness except that the patent principally underlying the type. In light of these conflicting statements, this court double patenting rejection is not considered prior heldthatitcouldnotdeterminethevalidityoftheBoard's art. In re Braithwaite, 379 F.2d 594, 600 n.4, 54 decision, and accordingly vacated and remanded. In re C.C.P.A. 1589, 154 U.S.P.Q. (BNA) 29 (1967). Longi,732F.2d167(Fed.Cir.1984)(unpublished). Therefore,ouranalysisconcerningthecorrectness 3 There is no issue on this appeal relating to oftheBoard'sdecisionintheinstantcaseparallels estoppel. ourpreviousguidelinesfora§103rejection.See, e.g.,InreDeBlauwe,736F.2d699,222U.S.P.Q. On remand, the Board affirmed the rejection based (BNA)191(Fed.Cir.1984). [**11] upon double patenting of the obviousness type. The Board stated that such a rejection was supported by [**13] A. DoublePatenting--InGeneral prior Court of Customs and Patent Appeals decisions A double patenting rejection precludes one person even though Section 804 of the Manual of Patent from obtaining more than one valid patent for either (a) Examining Procedure (MPEP) and a Commissioner's Page5 759F.2d887,*892;1985U.S.App.LEXIS14769,**13; 225U.S.P.Q.(BNA)645 the"sameinvention,"or(b)an"obvious"modificationof .5 the same invention. A rejection based on double patentingofthe"sameinvention"typefindsitssupportin 5 In Carman Industries, involving a design the language of 35 U.S.C. § 101, which states that patent, we added that a second patent would also "Whoever invents or discovers any new and useful be invalid if the first patent's claims would have process...mayobtainapatenttherefor...."(Emphasis been obvious from the claims of the second added.) Thus, the term "same invention," in this context patent. Appellants have neither asserted that this means an invention drawn to identical subject matter. In additional condition is lacking in the instant case, re Vogel, 57 C.C.P.A. 920, 422 F.2d 438, 164 U.S.P.Q. northattherequirementwhichwassetforthinthe (BNA)619(1970). design-utility patent situation even applies to the instant situation. We need not, therefore, address On the other hand, a rejection based upon double eitheradditionalissuehere. patenting of the obviousness type ((b), supra) is a judicially created doctrine grounded in public policy (a Appellants argue that clear lines of division among policy reflected in the patent statute) rather than based therespectivegroupsofclaimsintheseveralapplications purelyontheprecisetermsofthestatute. Thepurposeof have been maintained. They conclude that because there this rejection is to prevent the extension of the term of a are no "conflicting claims" and the claims in these patent, even where an express statutory basis for the applications do not "overlap," double patenting does not rejection is missing, by prohibiting the issuance of the exist. However, appellants confuse the difference claimsinasecondpatentnotpatentablydistinctfromthe between the two types of double patenting. Overlapping claims of [**14] the first patent. Carman Industries Inc. andconflictingclaimsareconsiderationsmoresignificant v. Wahl, 724 F.2d 932, 220 U.S.P.Q. (BNA) 481 (Fed. in a § 101 "same [**16] invention" double patenting Cir. 1983); and In re Thorington, 57 C.C.P.A. 759, 418 analysis. These are not "significant or controlling" F.2d 528, 163 U.S.P.Q. (BNA) 644 (1969), cert. denied, factors in an obviousness type double patenting analysis 397 U.S. 1038, 25 L. Ed. 2d 649, 90 S. Ct. 1356, 165 where a rejection may be applied to "clearly distinct U.S.P.Q.(BNA)290(1970).Fundamentaltothisdoctrine inventions." In re Jentoft, 55 C.C.P.A. 1026, 392 F.2d isthepolicythat: 633, 640, 157 U.S.P.Q. (BNA) 363, 369 (1968); see also In re Siu, 42 C.C.P.A. 864, 222 F.2d 267, 105 U.S.P.Q. The public should . . . be able to act on (BNA) 428 (1955). This type of double patenting theassumptionthatupontheexpirationof rejection has been applied where there are separate thepatentitwillbefreetousenot [*893] inventions, each of which is considered patentable over only the invention claimed in the patent the prior art absent the first patent. In re Bowers, 53 but also modifications or variants which C.C.P.A. 1590, 359 F.2d 886, 149 U.S.P.Q. (BNA) 570 would have been obvious to those of (1966). Thus, appellants' argument that the claimed ordinary skill in the art at the time the inventionsdonotoverlapisirrelevant. invention was made, taking into account Appellants also maintain that the entire doctrine of the skill of the art and prior art other than double patenting of the obviousness type should not the invention claimed in the issued patent. apply to commonly-owned applications with different (Emphasisinoriginal.) inventiveentities.Arejectionbaseduponsuchadoctrine, appellants say, is unduly restrictive and discourages group research. Moreover, each inventor in a research In re Zickendraht, 50 C.C.P.A. 1529, 319 F.2d 225, department should be entitled to separate patents for his 232, 138 U.S.P.Q. (BNA) 22, 27 (1963) (Rich, J., or her own independent contribution to the basic concurring). Under that facet of the doctrine of double objective of the overall research project. [**17] Such a patenting, we must direct our inquiry to whether the broad position has been previously rejected, and it is claimedinventionintheapplicationforthesecondpatent inconsistent with both our precedents and recent would have been obvious from the subject matter of the legislation. claims in the first patent, in light of the prior [**15] art. Many times our predecessor court, the Court of CarmanIndustries,724F.2dat940,220U.S.P.Q.at487 Customs and Patent Appeals, has treated Page6 759F.2d887,*893;1985U.S.App.LEXIS14769,**17; 225U.S.P.Q.(BNA)645 commonly-owned applications by different inventors as Solicitor also candidly points us to the related though they were filed by the same inventor, and then Commissioner's Notice on Double Patenting (834 O.G. relied upon the doctrine of double patenting of the 1615,January9,1967)whichstatesinrelevantportion: obviousness type to deny a second patent on subject matter not patentably distinct from the claims of the first The term 'double patenting' is properly patent. See In re Newton, 56 C.C.P.A. 1463, 414 F.2d applicable only to cases involving two or 1400, 163 U.S.P.Q. (BNA) 34 (1969); In re Frilette, 56 more applications and/or patents of the C.C.P.A. 1262, 412 F.2d 269, 162 U.S.P.Q. (BNA) 163 same inventive entity and should not be (1968); In re Rogers, 55 C.C.P.A. 1092, 394 F.2d 566, applied to situations involving commonly 157 U.S.P.Q. (BNA) 569 (1968); In re Bowers, 53 ownedcasesofdifferentinventiveentities. C.C.P.A. 1590, 359 F.2d 886, 149 U.S.P.Q. (BNA) 570 (1966);InreBorcherdt,39C.C.P.A.1045,197F.2d550, 94 U.S.P.Q. (BNA) 175 (1952); and In re Borg, 55 C.C.P.A. 1021, 392 F.2d 642, 157 U.S.P.Q. (BNA) 359 Appellants argue, therefore, that a terminal (1968). In fact, the appellant in In re Rogers made an disclaimerwouldbeineffective. However,thiscourthas argument similar to the one the present appellant makes never approved this guideline, and such a requirement is here. In that case, Rogers asserted that the obviousness inconsistent with many of our predecessor's decisions. type double patenting rejection was "distressing" [**18] See, e.g., In re Rogers, 394 F.2d at 567, n.4, 157 to corporate practitioners and did not take into account U.S.P.Q.at571(citationsomitted);andInreFrilette,56 the considerable exchange of information between C.C.P.A. 1262, 412 F.2d 269, 162 U.S.P.Q. (BNA) 163 inventors. The result, as the argument goes, would be [**20] (1969). In fact, the examiner here invited that a corporation would find itself in a [*894] "box" appellants' assignee, which declined, to file a terminal because patent protection for both inventions would not disclaimer in order to overcome the rejection. We have bepossible. held that the Double Patenting Notice, supra, is only a procedural memorandum which merely sets forth As we declared in that case, appellants, and those in guidelines for the Patent and Trademark Office, and that like situations, are not in an inescapable "box." In re where those guidelines are not even applied, as in the Rogers, supra, 394 F.2d at 571, 157 U.S.P.Q. at 573. A instantcase,theycanhavenobearingontheoutcome. In patent may still issue if an applicant faced with such a re Newton, 56 C.C.P.A. 1463, 414 F.2d 1400, 163 rejection were to file a terminal disclaimer under 35 U.S.P.Q. (BNA) 34 (1969). 6 In short, appellants' U.S.C.§253,disclaiming"anyterminalpartoftheterm. argumentinthisregardismeritless. . . of the patent," thereby guaranteeing that the second patentwouldexpireatthesametimeasthefirstpatent.It 6 As we point out infra, the PTO has partially is well-established that a common assignee is entitled to withdrawntheNoticeofJanuary9,1967. proceed with a terminal disclaimer to overcome a As a last resort, appellants argue that under the rejection based on double patenting of the obviousness recent legislative changes to 35 U.S.C. § 103, 7 the type. In re Bowers, supra, 359 F.2d 886, 149 U.S.P.Q. "tenuous and untenable" double patenting rejection is (BNA) 571. Since the second patent would expire unsupportable in light of the "fierce spotlight of the simultaneously with the first, this use of a terminal now-so-clearly revealed Congressional intent." 8 To disclaimer is consistent with the policy that the public respond to this contention, we inquire whether the recent shouldbefreetousetheinventionaswellasanyobvious legislation changes or in any [**21] way affects the modifications [**19] at the end of the patent's term. In doctrineofdoublepatentingoftheobviousnesstype. re Robeson, 51 C.C.P.A. 1271, 331 F.2d 610, 614, 141 U.S.P.Q.(BNA)485,486(1964). 7 Thissectionnowincludesthefollowing: Appellants respond to this suggested use of a Subject matter developed by disclaimerbycitingMPEP[ManualofPatentExamining another person, which qualifies as Procedure] § 804.03 for the proposition that terminal prior art only under subsection (f) disclaimers are not applicable to commonly-owned or (g) of section 102 of this title, applications made by different inventive entities. The shall not preclude patentability Page7 759F.2d887,*894;1985U.S.App.LEXIS14769,**21; 225U.S.P.Q.(BNA)645 under this section where the 130 CONG. REC. H10525 (daily ed. October 1, 1984); subject matter and the claimed SENATE COMMITTEE ON THE JUDICIARY, invention were, at the time the PATENTLAWAMENDMENTSACTOF1984,S.Rep. invention was made, owned by the 98-663, 98th Cong., 2d Sess. 8 (1984), reprinted in 1984 same person or subject to an U.S. Code Cong. & Ad. News 5834 (section-by-section obligation of assignment to the analysis of the Patent Law Amendments of 1984). sameperson. Althoughitwouldseemclearfromthisstatementthatthe recentamendmentwasnotintendedtoaffectthedoctrine Patent Law Amendments, Pub. L. No. 98-622, § of double patenting, but seems rather to reaffirm its 104,98Stat.3385(1984). viability, appellants argue otherwise. They assert that in 8 AppellantsalsomovedtoremandtotheBoard referring to "nearly identical subject matter," Mr. in light of these recent legislative changes. For Kastenmaierwascoininganewtermofartdifferentfrom reasonsexplainedinfra,thismotionisdenied. the established test utilized in the obviousness type doublepatentingdoctrine. Certainly the mere words of the new statute do not compel the elimination of that type of double patenting Thereisnosubstantialsupportforthisargument. As objection. The objective of this amendment was to deal we have previously discussed, double patenting of the with citation of a co-worker's research development, see same invention type under § 101 questions whether the In re Bass, 59 C.C.P.A. 1342, 474 F.2d 1276, 177 respective claims cover "identical" subject matter. In U.S.P.Q. (BNA) [**22] 178 (1973) and [*895] In re referring to "nearly identical subject matter," we believe Clemens, 622 F.2d 1029, 206 U.S.P.Q. (BNA) 289 Congressman Kastenmaier and the Committees were (1980),notwithdoublepatenting.See130CONG.REC. referring to subject matter which "would have been H10925 (October 1, 1984); PATENT LAW obvious" [**24] fromthesubjectmatteroftheclaimsof AMENDMENTSACTOF1984,PUB.L.NO.98-622,§ the first patent, in accordance with the established 104,98STAT.3385,reprintedin1984U.S.CodeCong. existing doctrine of double patenting of the obviousness & Ad. News 5833. Indeed, the present problem is type. Thatthedoctrinewasleftunaffectedbutreaffirmed definitively resolved by important legislative history of isfurthersupportedbythe"PTO'sInitialGuidelinesasto that legislation. Of particular interest are Congressman Implementation of Patent Law Amendments" which Kastenmaier's remarks, incorporated into the Senate state: Report, on the effect the legislation would have on the judiciallycreateddoublepatentingdoctrine: (14) Double patenting rejections may now be made in applications based on The Committee expects that the Patent commonly owned patents of different and Trademark Office will reinstitute in inventive entities and double patenting appropriate circumstances the practice of rejections of the obviousness type can be rejecting claims in commonly owned overcomebyterminaldisclaimers. applications of different inventive entities on the ground of double patenting. This ****** will be necessary in order to prevent an (16) The Commissioner's Notice of organization from obtaining two or more January 9, 1967, "Double Patenting," 834 patents with different expiration dates O.G.1615(Jan.31,1967)iswithdrawnto covering nearly identical subject matter. the extent that it does not authorize a In accordance with established patent law double patenting rejection where different doctrines, double patenting rejections can inventiveentitiesarepresent. be overcome in certain circumstances by disclaiming the terminal portion of the term of the [**23] later patent, thereby eliminating the problem of extending Reprinted in 29 BNA's Pat. T.M. & Copy. J. 214 patentlife. (Emphasisadded.) (December 20, 1984). For these reasons, we hold that double patenting of the obviousness type, as applied to Page8 759F.2d887,*895;1985U.S.App.LEXIS14769,**24; 225U.S.P.Q.(BNA)645 commonly-owned applications made by different claimed species of titanium compounds, as well as the inventiveentities,isstillaviabledoctrine. nitrogen-containing [**27] titanium compounds of the claims now before us, are well-known "titanium B. TheRejectioninThisCase compound" components of Ziegler-type catalysts. The compoundswerecorrectlyconsideredbytheexaminerto Thenarrowerquestioninthecurrentcaseiswhether, be qualitative equivalents. As the Board aptly noted, intheabsenceofaterminal[**25] disclaimer,theBoard qualitativeequivalencemeansthattheactiveZiegler-type erred in affirming the examiner's determination that the catalysts could be prepared from these titanium claimedsubjectmatterismerelyanobviousmodification compounds with the appropriate organometallic reducing of the invention claimed in the commonly-owned agents (i.e., active magnesium chloride). More applications and the Mayr II patent, in light of the four specifically,NowlinandArgabrightteachtheuseofsuch prior art references. Of course, a double patenting nitrogen-containing titanium compounds. Thus, with rejection presupposes a patent. Thus, we start by knowledge that an "activated magnesium halide" would examining the claims of the Mayr II patent, and by increase the catalytic activity of a Ziegler-type catalyst assessing the prior art references in order to ascertain prepared with the species of titanium compound claimed whether the PTO made out a prima facie case of [*896] in the commonly-owned patent, it would have been obviousness. Then we must look to the Albizzati obvious to one of ordinary skill in the art that the same declaration to determine whether the Board correctly effect would probably occur by using a concludedthatthissolerebuttalevidencewasinsufficient nitrogen-containingtitaniumcompound. toovercometheprimafaciecase. SeeInrePiasecki,745 F.2d1468,223U.S.P.Q.(BNA)785(Fed.Cir.1984). Appellants retort that the various species of titanium compounds are significantly different in structure from The basic concept underlying the claims in all the thenitrogen-containingtitaniumcatalyst.Butthepriorart commonly-owned applications and patent is the patents suggest that the Ziegler-type catalyst carrier (for formation of a highly active Ziegler-type catalyst by first example, magnesium halide) would have utility with combining a titanium compound with an activated form [**28] each type of titanium compound. Thus, the fact of magnesium halide. The particular species of titanium that the nitrogen-containing compounds disclosed in compoundcanbeselectedfromtitaniumtrihalides(Mayr Nowlins and Argabright might be different structurally I application), titanium oxyhalides (Galli application), or would not deter one of ordinary skill in the art from titanium tetrahalides [**26] (Mayr II patent). The combining the compound with the activated magnesium difference between the claims in the instant application, halide claimed in the commonly-owned Mayr II patent, on the one hand, and the Mayr II claims, on the other, is for example. Accordingly, a prima facie case of the recitation of the nitrogen-containing titanium obviousness-typedoublepatentingwasproperlymade. compoundinthepresentapplication.9Thus,thequestion becomes whether the prior art discloses to one of Contrary to appellants' arguments, the Albazzati ordinaryskillintheartthatmagnesiumhalidesin"active declaration fails to provide the unexpected results form" would have utility with the nitrogen-containing necessary to rebut the prima facie case of obviousness. titaniumcompoundembodiedinthecurrentinvention. We may assume that the declaration was designed to show that the different claimed titanium species 9 Appellants contend that the fact that the combinedonlywithanaluminumalkylyieldsaninferior previous applications claimed catalyst, while the same species combined additionally non-nitrogen-containing titanium shows that a with an active magnesium chloride support yields a clear line of division has been maintained highly active catalyst. However, as we have seen from between the applications, and therefore that the the claims of the commonly-owned patent, magnesium instant application is patentable. However, as we halide in "active form" increases the effectiveness of haveseen,thefactthatinventionsaredistinctand Ziegler-type catalysts containing the titanium chloride "non-overlapping" is not controlling when compounds. The important point is that the declaration applying the obviousness type double patenting does not speak at all to the critical issue of whether that doctrine.SeeInreJentoft,supra. "active" support combined [**29] with the nitrogen basedcompoundproducedunexpectedresultsnotalready As taught by the four prior art references, all the Page9 759F.2d887,*896;1985U.S.App.LEXIS14769,**29; 225U.S.P.Q.(BNA)645 obtainedwithotherZiegler-typecatalystssuchas [*897] of obviousness. See In re Lamberti, 545 F.2d 747, 192 those containing the titanium chloride compounds. There U.S.P.Q.(BNA)278(CCPA1976),andInreClinton,527 is nothing to show that the results attested in the F.2d 1226, 188 U.S.P.Q. (BNA) 365 (CCPA 1976). declarationwereunexpected.Thefactthatsometitanium Accordingly, the Board did not err in holding the claim compounds function more effectively, and that the exact subject matter unpatentable for double patenting of the magnitudeoftheincreasedcatalyticactivitymightnotbe obviousnesstype. predictable, does not preclude a conclusion of obviousness. Only a reasonable expectation of success, AFFIRMED. not absolute predictability, is necessary for a conclusion Page 11 ELI LILLLY AND COOMPANY, Pllaintiff-Crosss Appellant, vv. BARR LABBORATO- RIES, IINC., and APPOTEX, INC.. and BERNAARD C. SHERRMAN, and GGENEVA PHARMMACEUTICAALS, INC., Deefendants-Appellants, and INTERPHAARM, INC., Defendant.. 99-1262, 999-1263, 99-12264, 99-1303 UNITTED STATESS COURT OFF APPEALS FOR THE FEEDERAL CIRCUIT 2551 F.3d 955; 22001 U.S. Appp. LEXIS 112440; 58 U.S.P.QQ.2D (BNA) 11865 Mayy 30, 2001, Deecided SUBSEQUUENT HISTOORY: [**1] Opinioon on Huugh L. Moore,, and Diane I.. Jennings, Loord, Bissell && Rehearing May 30, 20001, Reported aat: 2001 U.S. App. Broook, of Chiccago, Illinois for defendaants-appellantss LEXIS 112441. Reported aat: 251 F.3d 9955 at 972. Appotex, Inc. andd [**2] Bernnard C. Shermaan. PRIOR HISTORY: Appealed frrom: United SStates Jefffrey P. Kushaan, Powell, GGoldstein, Frazzer & Murphyy District Coourt for the Soouthern Districct of Indiana. Chief LLLP, of Washinngton, DC, forr amicus curiaae Biotechnol-- Judge Sarahh Evans Barkeer. ogyy Industry Organization. Of counsel on tthe brief weree Eli Lilly && Co. v. Barr Labs., 251 F..3d 955, 20011 U.S. Ricchard Medwayy and Eric M. Solovy, Poweell, Goldstein,, App. LEXISS 11241 (Fed. Cir., 2001) Fraazer & Murphhy LLP; andd Charles E. LLudlam, Bio-- tecchnology Industry Organizattion, of Washiington, DC. COUNSELL: Charles E.. Lipsey, Finnnegan, Hendeerson, Wiilliam L. MMentlik, Lerrner, David,, Littenberg,, Farabow, GGarrett & Dunnner, L.L.P., oof Washingtonn, DC, Kruumholz & MMentlik, LLP, of Westfield, New Jersey,, argued for plaintiff-cross appellant, EEli Lilly and CCom- forr amicus curiaee Zenith Golddline Pharmaceeuticals, Inc. pany. Withh him on the bbrief were Alllen M. Sokal, Ken- neth M. Fraankel, and Davvid S. Formann. Of counsel wwas L. Josseph P. Lavellle, Howrey SSimon Arnoldd & White, off Scott Burwwell. Of counssel on the brieef were Dougllas K. Waashington, DCC, for amicus curiae Intellecctual Propertyy Norman, annd James P. LLeeds, Eli Lillyy and Companny, of Owwners Associattion. Indianapoliis, Indiana. Johhn C. Vassil, Morgan & Finnegan, L.LL.P., of Neww Richard S. Clark, Rochelle K. Seide, MMarta E. Delssigno- Yoork, New Yorkk, for amicus curiae Federaal Circuit Barr re, Louis SSorell, Robert Neuner, and Thomas J. Paarker, Association. Wiith him on tthe brief weree Michael P.. Baker & BBotts, of Neww York, New York, for deefend- Doougherty, Tonny V. Pezzanno, and Tini Thomas. Off ant-appellant, Geneva Phharmaceuticalss, Inc. couunsel on the brief were GGeorge E. Huutchinson andd Phiilip C. Swainn, Federal Circuit Bar Asssociation, off George C. Lombardi, WWinston & Sttrawn, of Chiicago, Waashington, DCC. Illinois, arggued for defenndant-appellannt Barr Laboraatories, Inc. With hhim on the briief were Jamees F. Hurst, Dan K. Jannice M. Muelller, Associatee Professor, Thhe John Mar-- Webb, Braadley C. Gravveline, Christtine J. Siwik, and shaall Law Schoool, of Chicago,, Illinois, amiccus curiae. Taras A. GGracey. Of couunsel on the brief was Maark E. Waddell, BBryan Cave, LLLP, of New YYork, New Yorrk. Of Naancy J. Linck, Guilford Phaarmaceuticals Inc., of Balti-- counsel waas Derek John Sarafa. moore, Maryland, for amicus ccuriae Guilford Pharmaceu-- ticaals Inc.