Appeal No. 97-1691
Application No. 08/519,375
Considering first the rejection under the judicially
created doctrine of obviousness-type double patenting, it is
the examiner's position that:
Although the conflicting claims are not identical,
they are directed to the same inventive concept and
are not patentably distinct from each other because
the subject matter of the application claims is
fully disclosed in the patent specification and
covered by the patented claims. The patented claims
are inclusive for they are drafted using the
"comprising-type" format and cover the subject
matter of the application claims(s). Since
applicant has obtained the right to exclude others
from making and using the subject matter set forth
in the claims of this application by virtue of the
patented claims, the issuance of this application
into a patent without a terminal disclaimer as
provided for under 37 CFR § 1.321(b) would amount to
an unjustified extension of this right.
As stated IN [sic, in In] Re Schneller, 37 F.2d
350, 158 USPQ 210 (CCPA 1968), and quoted with
approval IN [sic, in In] re Van Ornum, 686 F.2d 937,
214 USPQ 761 (CCPA 1982), "the fundamental for the
rule against double patenting is to prevent
unjustified timewise extension of the right to
exclude granted by a patent no matter how the
extension is brought about." [Answer, pages 4 and
5.]
The appellant does not argue that 35 U.S.C. § 121 acts as
a bar to a rejection based on obviousness-type double
patenting in view of the restriction requirement in the
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