Appeal No. 95-0143
Application 07/865,849
may have issued before broader ones. However, in this case,
Appellants elected to take the patent on the narrower claim 1 of
the patent and to continue prosecution on the broader claim 10 in
this application. Thus, the facts of this case are
distinguishable from Braat.
In In re Goodman, 11 F.3d 1046, 1053, 29 USPQ 2d 2010, 2016
(Fed. Cir. 1993), the court held that where appellants choose to
accept narrower claims to file a continuing application of the
broader claims rather than to appeal the rejection of the broader
claims, the two-way obviousness determination was not required.
The court noted that “[a] second application ... ‘containing a
broader claim, more generical in its character than the specific
claim in the prior patent’ ... typically cannot support an
independent valid patent.” In re Goodman, 11 F.3d at 1053, 29
USPQ2d at 2016.
We find that a one-way obviousness determination is the
proper determination. Furthermore, we find that upon reviewing
the patented claim 1, that Appellants’ broader claim 10 is
obvious over the narrower patented claim 1. Therefore, we will
sustain the Examiner’s rejection of claim 10 under the judicially
created doctrine of obviousness-type double patenting.
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