Appeal No. 1998-0941 Page 3
Application No. 08/226,660
appellants and the examiner. As a consequence of our review, we
make the determinations which follow.
The examiner has rejected claims 20-34 and 43-72 under the
judicially created doctrine of double patenting over claim 15 of
U.S. Patent No. 5,295,196, since he believes the claims, if
allowed, would improperly extend the "right to exclude" already
granted in the patent (answer, p. 3). We do not agree.
In support of the rejection, the examiner determined
(answer, pp. 3-5) that the subject matter claimed in the instant
application is fully disclosed in the patent and is covered by
the patent since the patent and the application are claiming
common subject matter and there is no apparent reason why
appellants were prevented from presenting claims corresponding to
those of the instant application during prosecution of the
application which matured into the patent. In support of this
type of rejection the examiner cited (answer, p. 5) In re
Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). In addition,
the examiner refers (answer, p. 6) to the Manual of Patent
Examining Procedure (MPEP) § 804 as providing support for this
type of rejection.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007