Appeal No. 1997-1236
Application No. 08/212,385
patent] is fully capable of such measurements. In other
words, the structure exists to accomplish such a function”
[id. page 6]. As with all rejections, the examiner
has the burden of presenting a prima facie case of
unpatentability. In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443
(Fed. Cir. 1992). In making an obvious double patenting
rejection, the examiner must demonstrate that each claim of
the application is unpatentable over a single claim of a
patent. This demonstration should contain a showing of what
is recited in each respective claim of the application and the
corresponding respective single claim of the patent. An
analysis of the differences between these claims should then
be provided. Finally, a discussion as to why the artisan
would have found it obvious to modify the claim of the patent
or to combine the claim with additional prior art teachings to
arrive at the application claim must be presented by the
examiner. The examiner’s demonstration here contains none of
these showings. Additionally, the examiner relies primarily
on the disclosure of Li ’960 as prior art against these
appealed claims. The disclosure of Li ’960, however, may not
be used against appellant Li in an obvious double patenting
6
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