In Re Jack Emert and Robert D. Lundberg’s Empirical Analysis

Citation profile

2 district ·

Most-quoted passages

The sentences later courts lift from this opinion, ranked by how many decisions quote each — the parts of the opinion doing the work. These counts are smaller than the citation total above because most of the 11 citing decisions cite the case generally; a passage count includes only decisions quoting that exact language verbatim.

1. “This court has set forth two tests for obviousness-type double patenting rejections. In In re Braat, 937 F.2d 589, 593 , 19 USPQ2d 1289, 1292 (Fed.Cir.1991), the court applied a “two-way” patenta-bility test. In that case, the applicant filed two applications, the second of which issued first due to the PTO’s unjustified delays in the prosecution of the earlier filed application. This court also noted that the assignee could not have included the claims of the later-filed Dil application in the Braat application. Id. at 593-94 . Because “applications for basic and improvement patents should not be penalized by the rate of progress of the applications through the PTO, a matter over which the applicant does not have complete control,” this court applied a two-way obviousness analysis. Id. at 593 . Under the two-way analysis, this court examined each claim to determine whether it was an obvious variant of the other, rather than just examining the application claim for patentable distinctiveness from the patent claim. Although the Dil patent had issued before the pending Braat application, the court determined that the Dil claims were “patentably distinct from the subject matter defined by the claims of Braat.” Id. at 594 . Under this two-way analysis, therefore, this court reversed the Board’s double patenting rejection. In Goodman , this court set forth the “one-way” test for obviousness-type double patenting. In that case, the applicant chose to file a continuation for a broad”

   1 later decision quote this exact passage · from the majority
   e.g. 225 F. Supp. 2d 1069 - Engineered Products Co. v. Donaldson Co., Inc.

2. “Emert insists that the claims stand in a combination ('624 patent) and subcombination ('887 application) relationship. The PTO insists that the claims stand in a genus ('887 application) and species ('624 patent) relationship. . . . In spite of the parties' eagerness to conform the round-peg facts of the case into semantic, square holes, the critical inquiry remains whether the claims in the '887 application define an obvious variation of the invention claimed in the '624 patent.”

   1 later decision quote this exact passage · from the majority
   e.g. In Re Metoprolol Succinate Patent Litigation

3. “the '887 application's claimed invention, an oil soluble dispersant comprising B1, while not anticipated by the '624 patent due to the slight modification of three claim limitations, would have been prima facie obvious in light of the claim to the combination [A and B]”

   1 later decision quote this exact passage · from the majority
   e.g. In Re Metoprolol Succinate Patent Litigation