Appeal No. 00-0910
Application No. 08/821,176
directed to BCX and ABCX using the open “comprising” format.
In the continuing application under rejection, the claims were
directed to the combinations ABCY and ABCXY. In affirming the
examiner’s double patenting rejection, the court stated at 397
F.2d 355-56, 158 USPQ 216 that:
The combination ABC was old. He [Schneller]
made two improvements on it, (1) adding X and (2)
adding Y, the result still being a unitary clip of
enhanced utility. While his invention can be
practiced in the forms ABCX or ABCY, the greatest
advantage and best mode of practicing the invention
as disclosed is obtained by using both inventions in
the combination ABCXY. . . . Anyone undertaking to
utilize what [Schneller] disclosed in the patent . .
. in the preferred and only form in which he
described these clips, would thus run afoul of a
still unexpired patent if the appealed claims were
allowed. [Italics in original.]
Thus, among the “unique circumstances” present in Schneller
was the circumstance that the preferred and only forms of the
invention disclosed by applicant were covered by both the
patent claims and the claims of the application under appeal.
Turning to the present application, the invention
disclosed in the Scharboneau patent and the continuation-in-
part application is a modular steering wheel and airbag
combination. The combination may be regarded as comprising a
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