No Graham Analysis for U.S. Obviousness-Type Double Patenting

Graham Analysis Not Necessary for Obviousness-Type Double Patenting Rejection

 

In In Re Basell Poliolefine Italia S.P.A. (November 13, 2008), the Federal Circuit reiterated that a full Graham analysis is not required for an obviousness-type double patenting rejection: 

We are also unpersuaded by Basell's assertion that the double patenting rejection should be reversed because the Board failed to expressly conduct a full Graham analysis in determining that the '687 patent claims were an obvious variant of claim 1 of the '987 patent. Indeed, "this court has endorsed an obviousness determination similar to, but not necessarily the same as, that undertaken under 35 U.S.C. § 103 in determining the propriety of a rejection for double patenting." In re Braat, 937 F.2d 589, 592-93 (Fed. Cir. 1991). Hence, we find no basis for reversing the Board's decision merely because the Board failed to expressly set forth each of the Graham factors in its analysis. The Board carefully considered claim 1 of the '987 patent and the claims of the '687 patent and determined that a person of ordinary skill in the art would have found the '687 patent claims to have been obvious. We find no error in the Board's analysis.

. . . We agree with the Board's conclusion that the claims of the '687 patent are not patentably distinct from claim 1 of the '987 patent. Claim 1 of the '687 patent covers polymerizing 1) an alpha-olefin of C4 or higher, 2) with ethylene, 3) using a titanium halide aluminum alkyl catalyst. As the Director and the Board correctly noted, the claim encompassing those limitations is an obvious variant of claim 1 of the '987 patent. Specifically, with regard to the alpha olefin of C4 or higher, claim 1 of the '987 patent provides that one of the monomeric materials may include "unsaturated hydrocarbons of the formula CH2�CHR in which R is selected from the group consisting of saturated aliphatic radicals containing 1 to 4 carbon atoms." Thus, both claims of the '987 patent and the '687 patent cover alpha olefins of C4 to C6. In addition, with regard to ethylene, claim 1 of the '987 patent recites "another olefinic monomer," and thus covers a genus that includes ethylene. Similarly, with regard to the titanium halide aluminum alkyl catalyst, claim 1 of the '987 patent covers a genus that the parties do not dispute includes titanium halide, as well as a genus that includes aluminum alkyl. Claim 1 of the '687 patent is thus not patentably distinct from claim 1 of the '987 patent.