Top 50 Design Patent Case #5 In re Thorington
The number five most cited case in design patent prosecutions is In re Thorington, 418 F.2d 528 (CCPA 1969). This case stands for the principle that a nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). In particular, this case stands for the principle that a double patenting rejection can be appropriate when the prior reference is a design patent and the claims are in a utility patent application. Since January 2021, it has been cited in at least 4,346 design patent prosecutions having at least one non-final rejection (according to Design Patent ProSearch).
How this case fits in: A utility patent has a term of 20 years from the earliest filing date (the filing date of the application or the earliest priority date, if applicable), subject to the payment of maintenance fees. A design patent term is 15 years from the date of grant in the United States for applications filed on or after May 13, 2015 (for applications filed before this date, the term is 14 years from the date of grant). These periods of exclusivity are granted in exchange for the inventor properly describing and enabling the subject matter for the public. A nonstatutory double patenting rejection is intended to prevent a patentee from improperly extending the patent terms by obtaining additional patents that are not patentably distinct from the original patent.
In re Thorington involved a utility patent application for a noncircular cross-section fluorescent lamp tube. The tube had one or more grooves rotated around and along the tube’s length in a curved path along the entire length of the tube for more than one full turn. The examiner rejected the claims for double patenting over a design patent and three utility patents. Figure 1 of the design patent (USD198,268 to Thorington) is as follows:
The applicant argued on appeal that the design patent protects only the ornamental appearance of the design, while the utility claims on appeal are directed to the exact structure and function of the lamp. The court disagreed, stating that an obviousness type double patenting rejection can be appropriate when the same feature constitutes the novel utilitarian aspect of a utility patent and the unique ornamental appearance of a design patent.
Comment: There are two different types of double patenting rejections. The first is the “same invention” type (statutory) double patenting prohibited by 35 U.S.C. §§ 101 and 171. These statutes both provide that an inventor may obtain “a patent,” which has been interpreted strictly to be one patent. When the claimed subject matter is identical to a previously granted patent or a copending patent application, a statutory double patenting rejection is appropriate. Since §101 is limited to utility patents and § 171 is limited to design patents, statutory double patenting rejections are limited to utility-utility and design-design situations, i.e., design-utility and utility-design rejections are not permitted. Statutory double-patenting may not be overcome by a terminal disclaimer.
The second type is non-obviousness type double patenting, which is a judicially-created doctrine grounded in public policy. It is primarily intended to prevent improper extension of a patent term by prohibiting claim(s) in a second patent that are not patentably distinct from claims in a first patent. Nonstatutory double patenting also is intended to prevent multiple lawsuits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. See In re Van Ornum, 686 F.2d 937, 944-48 (CCPA 1982) (ninth most cited case). Nonstatutory double patenting can be based either on anticipation, one-way obviousness, or two-way obviousness. It can be overcome by a terminal disclaimer.
Under the one-way obviousness test, the examiner determines whether the claims in the application are obvious over the claims in an earlier patent. This is the general rule applied in most cases. In re Hubbell, 709 F.3d 1140, 1149 (Fed. Cir. 2013). In contrast, the two-way test is a narrow exception applied in specific circumstances. Under this test, the examiner not only asks whether the application claims are obvious over the patent claims but also whether the patent claims are obvious over the application claims. This test is used to prevent unfair rejections for obviousness-type double patenting when the applicant filed first for a basic invention and later for an improvement, but due to no fault of the applicant, the Patent and Trademark Office (PTO) decided the applications in reverse order. Id. The two-way test is appropriate only when the PTO is solely responsible for the delay that caused the second-filed application to issue before the first-filed application. Id.
The obviousness analysis for nonstatutory double patenting is “similar to, but not necessarily the same as, that undertaken under 35 U.S.C. 103.” In re Longi, 759 F.2d 887, 892 n.4 (Fed. Cir. 1985) (eighth most cited case). In particular, the examiner need not show a motivation to combine references because the comparison is between claims and not between a claim and the prior art. Further, the secondary considerations of commercial success, industry praise, and copying do not come into play.
