Appeal No. 94-2894
Application 07/725,222
Double Patenting Rejection
This rejection is clearly erroneous. In relevant part, the claims on appeal require the
presence of a "lower alkanol" while the claims of the '654 patent require the presence of
"ethanol." The examiner's position as stated at page 2 of the Answer is "The instant
claims are rejected under 35 USC § 101 based on Applicant's own specification wherein
the only alkanol disclosed is ethanol."
It is difficult to discern why at this point in time an examiner would make such a
rejection. The facts presented in this application are very similar to those presented in In
re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970). In Vogel at 441, 164 USPQ at
622, the court stated:
A good test, and probably the only objective test, for "same invention," is
whether one of the claims could be literally infringed without literally infringing
the other. If it could be, the claims do not define identically the same
invention.
Here, the present claims would be infringed by a device which uses methanol where such
a methanol containing device would not infringe the claims of the ‘654 patent. Similar to
the facts in Vogel, where the court determined that claims requiring pork are not identical
to claims requiring meat, the claims in this application which require lower alkanol are not
identical to the claims in the '654 patent which require ethanol.
The double patenting rejection is reversed.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007