Chapter §12.04 Foundational Case Study

• Jurisdiction: United States

§12.04 Foundational Case Study

A foundational case study for double patenting analysis is In re Vogel,⁴² which involved methods of packaging meat products to prevent spoilage. Vogel initially obtained a U.S. patent on his method as applied to pork. Claim 1 of Vogel's patent recited:

1. A method of preparing pork products, comprising the steps of: boning a freshly slaughtered carcass while still hot into trimmings; grinding desired carcass trimming while still warm and fluent; mixing the ground trimmings while fluent and above approximately 80 degrees F., mixing to be completed not more than approximately 3 1/2 hours after the carcass has been bled and stuffing the warm and fluent mixed trimmings into air impermeable casings.

Vogel subsequently filed a second patent application that more broadly claimed his method as applied to "meat" generally, and also as applied specifically to beef. Application claim 10 recited:

10. A method for prolonging the storage life of packaged meat products comprising the steps of: removing meat from a freshly slaughtered carcass at substantially the body bleeding temperature thereof under ambient temperature conditions; comminuting the meat during an exposure period following slaughter while the meat is at a temperature between said bleeding and ambient temperatures; sealing the comminuted meat within a flexible packaging material having an oxygen permeability ranging from 0.01 × 10-10 to 0.1 × 10-10 cc.-mm/sec/cm2/cm Hg at 30 degrees C. during said exposure period and before the meat has declined in temperature to the ambient temperature; and rapidly reducing the temperature of the packaged meat to a storage temperature below the ambient temperature immediately following said packaging of the meat.

Vogel's application claim 11 depended from claim 10 but was limited to beef.

The USPTO rejected Vogel's application claims 10 and 11 as unpatentable in view of claim 1 of Vogel's issued patent (in combination with a reference to one Ellies). The agency characterized the rejection as same invention-type double patenting under 35 U.S.C. §101.

On appeal, the Court of Customs and Patent Appeals (CCPA) provided a roadmap for double patenting analysis. The first question to be asked, the court explained, is whether "the same invention [is] being claimed twice?"⁴³ By "same invention" the court meant "identical subject matter," which implies identical claim scope. For example, "halogen" is not the same invention for double patenting...