Appeal No. 97-1278
Application No. 08/046,286
the two-way test for double patenting. We do not agree. In
the recently decided In re Berg, F.3d , , 46 USPQ
1226, 1229-30 (Fed. Cir. 1998), the court stated that the two-
way test is a narrow exception to the general rule of the one-
way test, and that the two-way test applied when a later-filed
improvement patent issues before an earlier filed basic
invention. In the present case, it does not appear that claim
1 of Rieger is an improvement over the appealed claims of the
present application. Indeed, with respect to the claimed
compounds of Rieger, claim 1 of Rieger is broader than the
subject matter of the appealed claims. As apparently
acknowledged by appellants, the compounds of the appealed
claims are species within the claimed genus of Rieger.
Also, the court stated in Braat that if an applicant can
file all of his claims in one application, but chooses not to
do so, he is not entitled to the exception of the two-way
test. In the present case, based on the close correspondence
in subject matter disclosed in the present application and the
patent specification, it appears to us that claim 1 of Rieger3
3Page 3 of the present specification states that the
present invention relates to the compounds of formula I and to
their use as components of liquid-crystalline media, and to
-5-
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007