United States Federal Circuit

Because the Director of the PTO's interpretation of 37 C.F.R. section 1.601(n) as establishing a "two-way" test for determining whether two parties are claiming the "same patentable invention" is neither plainly erroneous nor inconsistent with the regulation, and the Board committed no reversible error in applying the two-way test to determine that a patent and the corresponding claims of a reissue application do not define the same patentable invention, the discretionary authority granted to the Director must be affirmed.

Appellate Information

• Decided 07/03/2003
• Published 07/03/2003

Judges

• GAJARSA, Circuit Judge., Before MICHEL, LOURIE, and GAJARSA, Circuit Judges.

Court

• United States Federal Circuit

Counsel

• For Appellant:
  
• Charles E. Lipsey,Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for appellant.   With him on the brief were Kenneth J. Meyers and Deborah Katz. Of counsel on the brief were Brian P. Barrett and Steven P. Caltrider, Eli Lilly and Company, of Indianapolis, Indiana., John M. Whealan, Solicitor, United States Patent and Trademark Office, of Arlington, Virginia, for amicus United States Patent and Trademark Office.   With him on the brief were James A. Toupin, General Counsel;  and Stephen Walsh and Henry G. Sawtelle, Associate Solicitors.


• For Appellees:
  
• William F. Lee, Hale and Dorr LLP, of Boston, Massachusetts, argued for appellee.   With him on the brief were Lisa J. Pirozzolo, of Boston, Massachusetts;  and James L. Quarles III and Henry N. Wixon, of Washington, DC. Of counsel were Maria L. Maebius and William G. McElwain, of Washington, DC.