The U.S. Court of Appeals for the Federal Circuit determined that the two-way test for obviousness-type double patenting is applicable when the claims could have been presented in an earlier application in the family. In re Fallaux, Case No. 08-1545 (Fed. Cir., May 6, 2009) (Moore, J.).

The Fallaux application, which was filed on July 11, 2003, was the fifth filed in a family of applications stemming from a Patent Cooperation Treaty (PCT) filing of June 15, 1995. The four intervening applications in the family had all issued as patents. In rejecting the Fallaux application, the examiner applied the one-way test for obviousness-type or non-statutory double patenting. This rejection was based on a patent to Vogel, which shared a single common inventor with the Fallaux application.

Fallaux argued that the two-way test for obviousness-type or non-statutory double patenting should have been applied. Under the two-way test, the examiner would have had to show that Vogel’s claims were also obvious in view of the Fallaux claims, instead of just the Fallaux claims being rendered obvious by the Vogel claims. The examiner agreed that under the two-way test the rejection could not be maintained. However, the examiner maintained the rejection because Fallaux failed “to argue, much less provide evidence that, the issuance of the [Vogel] patents prior to the instant application was due to administrative delay on the part of the PTO.” Instead, the examiner reasoned that claims at issue could have the presented in any one of the earlier-issued patents in the family.

Fallaux appealed to the Board of Patent Appeals and Interferences (the Board). The Board affirmed the examiner. The Board determined that the record indicated that Fallaux was entirely responsible for the delay that caused the Vogel patent to issue prior to the filing of the Fallaux application. Fallaux appealed to the Court of Appeals for the Federal Circuit.

After reviewing the jurisprudence related to whether the one-way test or two-way test is appropriate, the Court determined that an “applicant is entitled to the narrow exception of the two-way test when the PTO is at fault for the delay that causes the improvement patent to issue prior to the basic patent.” Fallaux argued that because he did not manipulate prosecution for some ill-gotten gain, but rather prosecuted the family of applications in the ordinary course of business, the delay should not be attributed to him. The Court rejected this argument, noting that the rule is not that an applicant is entitled to the two-way test absent proof of nefarious intent to manipulate prosecution. The Court sided with the Board by reasoning that the delay was attributable to Fallaux. Thus, the one-way test for obviousness-type double patenting rejection was appropriate.