Appeal No. 96-2673
Application No. 07/851,887
the first paragraph of 35 U.S.C. ' 112. Therefore, claim 15
before us now is not the same as the claim 15 before us in the
previous decision. While we are not saying that a case could not
be made for still applying Elms, under either 35 U.S.C. ' 102 or
' 103, against the new claim 15 and/or its dependent claims, we
are saying that the examiner has simply not made that case. The
examiner has completely ignored the claim language, “the inverter
and load circuitry being additionally characterized by…” and, as
such, has failed to consider the claimed subject matter as a
whole. Accordingly, no prima facie case has been established and
we will not sustain the rejection of claims 15, 16, 32, 33, 35,
37 through 41 and 43 under 35 U.S.C. '' 102(b)/103.
A similar problem exists with regard to the rejection of
claims 15 through 43 under obviousness-type double patenting.
Even though the claims have changed since our previous decision
suggested that the examiner might want to consider the
applicability of a rejection under obviousness-type double
patenting, the examiner entered such a rejection and entered it
without so much as an explanation as to specifically why the
instant claims are considered patentably indistinct from the
myriad of claims in related applications. Again, we do not say
that an obviousness-type double patenting rejection may not, in
fact, be appropriate. We merely contend that the examiner has
failed to establish a basis for this rejection. The instant
claim language must be measured against specific claim language
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