Last week on one of the listservs to which I subscribe, someone posted a question. I received some nice feedback from some people I whose opinions I respect, so I decided to repost it here. First the question:
Has anyone received a rejection stating: “Once an applicant has received a patent for a specific embodiment, he is not entitled to a patent for a generic or broader invention; the more specific anticipates the broader.” The case, In re Goodman (29 USPQ 2d 2010) was decided when utility patents still expired 17 years after issuance. Is this case still relevant under the “new” patent term calculation? Has the case been overturned?
And my answer:
In re Goodman is usually cited by the PTO in obviousness-type double-patenting cases, as the basis for holding that later-pending generic claims in a continuation application are obvious over narrow claims in a parent application, therefore requiring a terminal disclaimer. (There's also some discussion about when a one-way vs. a two-way obviousness test is required.)
Assuming for the sake of discussion that that's the fact pattern here and you've received an otdp rejection, then yes, the PTO is correct in requiring a t.d. It's true that, in principle, the 1995 amendments changing the US to a 20-years-from-earliest-effective-filing-date regime should had obviated t.d. practice, if all one thinks about is the term disclaimer part. But don't forget that a t.d. not only disclaims patent term beyond a certain date, but also ensures that the ownership of the later- and earlier-issued patents will remain in the same hands. That's a policy concern that wasn't obviated by the 1995 amendments, and it's the main reason why t.d. practice remains in place.
Also keep in mind that with the 1999 AIPA [American Inventor Protection Act - DJF] and the institution of patent term adjustment (PTA) [to compensate for delays in prosecution due to the PTO - DJF], one can no longer assume that a parent and continuation will expire on the same day: if the PTO delayed in the prosecution of the con, that patent could theoretically be given PTA and expire on a later date than the parent. Hence the AIPA included provisions that a t.d. wipes out any PTA to which a con/divisional might have been entitled. So in that sense, the "disclaimer of term" part of the t.d. is actually still relevant, at least in some cases.
Finally, the CAFC has, unfortunately, only made more, not less, of a muddle of otdp practice in recent years, so as far as I know In re Goodman hasn't been overturned. But you should be able to sheperdize that, no?
(If we're talking not about a parent-con/div relationship but rather two completely separate applications with no benefit claim between them, and no grace period applicable, then the examiner shouldn't be citing In re Goodman, this should be a straight 103 rejection.)
Does that explain it?
The sad part of this, it came out later in private correspondence with the person who'd posed the question, was that the PTO was asserting not otdp but statutory double patenting between the parent and continuation claims. As the claims of the parent and the con were of different scope, a statutory dp rejection was wholly inappropriate. Moreover, In re Goodman is inapposite in such a case, and shouldn't be cited. Clearly the examiner didn't understand the two types of double-patenting. I hope the person is able to set the examiner right, but it's a shame that examiner and applicant time should have to be wasted on this.