Ex parte Tullis

Informative decision only: persuasive authority, not binding precedent. When an application claim is a genus and a claim of the applicant's earlier patent is a species within it, the later genus claim is anticipated by, and not patentably distinct from, the earlier species claim, so absent a terminal disclaimer issuance is barred by obviousness-type double patenting. The Board applies a two-step analysis (construe the conflicting claims, then consider the differences to decide patentable distinctness), and may construe the earlier patent's claim in light of its prosecution history, including statements made to distinguish prior art. No prior Board precedent is named as addressed by this point; the Board relies on Federal Circuit authority, chiefly Eli Lilly & Co. v. Barr Labs., Inc. The examiner benefits because a genus claim is rejected simply by showing that an earlier species claim falls within it, and the examiner may use the earlier patent's prosecution history to narrow how that claim is read. The Board also entered a new 37 CFR 41.50(b) double patenting rejection extending the ground to most pending claims and told the examiner to consider claims 80-83. The applicant cannot avoid the rejection by arguing that the earlier claim is broader on its face if its own prosecution statements limited it, and it must file a terminal disclaimer or show a real patentable distinction. The binding authority cited is Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955 (Fed. Cir. 2001), and Renishaw plc v. Marposs Societa per Azioni, 158 F.3d 1243 (Fed. Cir. 1998), for reading claims in light of prosecution history. LEGAL TEST OR STANDARD: Obviousness-type double patenting entails a two-step analysis: first, the allegedly conflicting claims are construed, and second, the difference(s) between the claims are considered to determine whether the claims are patentably distinct. A later claim is not patentably distinct if it is obvious over, or anticipated by, the earlier claim, and a later genus claim is anticipated by an earlier species claim. Claims are interpreted in light of their prosecution history. TRIGGERING FACTS: The earlier patent claim (claim 1 of U.S. Patent 5,023,243, a phosphotriester-stabilized oligodeoxyribonucleotide method) was a species within instant genus claim 71 (oligonucleotide stabilized in any manner). Appellant argued the earlier claim was not limited to the mRNA coding region, but the earlier prosecution history, in which Appellant distinguished prior art by stressing complementarity to the coding region, showed that limitation. No terminal disclaimer was of record. Dependent claims were also rejected where the earlier claims recited the added limitation or suggested it. KEY QUOTE: "We agree with the examiner that the method of claim Iof the '243 patent is a specific embodiment that falls within the scope of claim 71 on appeal." (p. 10) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The Board follows Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 58 USPQ2d 1869 (Fed. Cir. 2001), and Renishaw plc v. Marposs Societa per Azioni, 158 F.3d 1243, 48 USPQ2d 1117 (Fed. Cir. 1998). PRACTICE TIP: When facing an obviousness-type double patenting rejection over your own earlier patent, expect the Board to read the earlier claims through their prosecution history. Do not argue that the earlier claim is broader than the later claim if your earlier remarks narrowed it. File a terminal disclaimer or identify a true patentable distinction.