Restricted-Out Claims Not Eligible for Priority in Later CIP Application
According to the opinion by Circuit Judge Dyk,
Pfizer filed a divisional application, which ultimately issued as the ’165 patent, that included the restricted-out composition claims, and a continuation-in-part application (“CIP”), which ultimately issued as the ’068 patent, that included the restricted-out method claims. . . .
We conclude that the protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications. We note that this interpretation of section 121 is consistent with the PTO’s understanding of section 121. See Ex parte Granados, No. 2002-2030, 2003 WL 25283825, *11 (B.P.A.I. Sept. 26, 2003) (not selected for publication) ("[T]he instant case is a continuation-in-part, not a divisional . . . . It therefore does not fall within the literal terms of [section 121]."); see also MPEP § 804.01 (similarly referring to "divisional" applications). Here, the ’068 patent, though it derived from the application that led to the ’823 patent, was filed as a CIP and not a divisional application. We hold that section 121 does not apply to the ’068 patent and that the ’165 patent may be used to invalidate the ’068 patent. Given our conclusion, we do not consider Teva’s alternative argument that section 121 does not apply because the ’165 patent is not consonant with the restriction requirement made in the parent application.
Because section 121 does not prohibit us from using the ’165 patent as a reference against the ’068 patent, we must next determine whether the claims of the ’068 patent are patentably distinct from the claims of the ’165 patent. . . .
. . . We have also held that a "claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use." Geneva, 349 F.3d at 1385-86. . . .
We agree that the relevant claims of the two patents are not patentably distinct. The claims at issue of the ‘068 patent merely recite methods of administering a "therapeutically-effective amount" of the compositions found in claim 5 of the ’165 patent. Moreover, the term "therapeutically-effective amount" is found in claim 1 of the ’165 patent and was stipulated by the parties to mean the same thing in both patents. Thus, we agree with the district court that the ’068 patent merely claims a particular use described in the ’165 patent of the claimed compositions of the ’165 patent. [Footnote 9: Pfizer argues that claims 15-17 must be considered separately because these claims are directed to the particular disorders of arthritis, pain, and fever. We find that these recitations do not claim non-obvious subject matter, since claim 5 of the ’165 patent generally claims compounds, which the specification indicates are used to treat "inflammation-related disorders."] The asserted claims of the ’068 are therefore not patentably distinct over the claims of the ’165 patent.