## Facts

- Inventors Virgil W. Vogel and Paul W. Vogel sought patent claims (7, 10, 11) for a process to prolong storage life of packaged meat products by packaging meat before it cooled to ambient temperature and then rapidly chilling it.
- Claims 7 and 10 covered “meat” generally and recited use of flexible packaging material with a specified oxygen-permeability range.
- Claim 11 was limited to the same general process but restricted to beef.
- The Patent Office rejected all three claims for double patenting over Vogel’s earlier patent claiming a method for processing pork, combined with the Ellies reissue patent teaching the oxygen-permeability range for meat-packaging material.
- The Board of Appeals affirmed, holding the claims unpatentable over the earlier Vogel pork patent in view of Ellies.
- Vogel appealed to the United States Court of Customs and Patent Appeals.

## Issues

1. Whether the later application claims to “meat” and “beef” were the same invention as the earlier patent claims to “pork” (statutory/same-invention double patenting).
2. If not the same invention, whether the later claims were merely an obvious variation of the earlier patented invention in view of Ellies (obviousness-type double patenting).
3. Whether the record supported treating a beef-specific process as an obvious extension of a pork-specific process for purposes of obviousness-type double patenting.

## Decision

- The court held there was no same-invention double patenting because the subject matter of the claims was not identical.
- The court affirmed the double-patenting rejection of claims 7 and 10 as obviousness-type double patenting over the earlier pork patent in view of Ellies.
- The court reversed the double-patenting rejection of claim 11 because the record did not establish that a beef-limited process was an obvious variation of the pork process.

## Legal Principles

- Double patenting analysis proceeds in two steps: (1) determine whether the claims are to the same invention (identical subject matter); if not, (2) determine whether the later claims define only an obvious variation of an invention disclosed and claimed in the earlier patent.
- A useful objective test for “same invention” is whether one claim could be literally infringed without literally infringing the other; if so, the claims are not to the same invention.
- Obviousness-type double patenting bars later claims that would improperly extend exclusivity by claiming an obvious modification of an earlier claimed invention, including when the difference is supplied by teachings in prior art references.
- When the later claim is limited to a materially different category (e.g., a different meat species), the rejection requires an evidentiary basis showing why the limitation would have been obvious in the relevant context.

## Conclusion

The court rejected statutory double patenting but applied obviousness-type double patenting to invalidate broad “meat” claims that effectively encompassed the earlier pork process with an oxygen-permeability feature taught by Ellies, while permitting a beef-specific claim because the Patent Office failed to show that extending the pork process to beef was obvious on this record.


In re Vogel, 422 F.2d 438 (C.C.P.A. 1970)