Appeal No. 2000-1980
Application No. 08/476,980
Other Issues
Should further prosecution occur in this application we would urge the examiner to
step back and consider, anew, the present claims in light of both Okrongly and Clark.
While we have determined that the claims of these patents are not directed to the identical
invention as presently claimed in this application, we recognize the possibility of overlap as
to the subject matter encompassed by these two patents and the claims before us. We
would, thus, urge the examiner to evaluate the facts of this application with a view to
determine whether a rejection under the judicially-created doctrine of obviousness-type
double patenting may be appropriate. (See In re Berg, 140 F.3d 1428, 46 USPQ2d 1226
(Fed. Cir. 1998); Georgia-Pacific Corp. v. United States Gypsum Co., 195 F.3d 1322, 52
USPQ2d 1590 (Fed. Cir. 1999); and In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
1985)). The examiner should, in the first instance, consider the record as a whole to
determine whether such a rejection is appropriate in this case. We note, for example, the
extensive restriction requirements which occurred in the instant application as well as in
the application which resulted in the issuance of Clark ('852). We do not have available
the file record for Application No. 08/330,207
which issued as Okrongly ('410). Thus, we leave it to the examiner to evaluate the record
of all three applications and determine if there is a reasonable basis for questioning the
patentability of the claims in this application. Should the examiner determine that there is a
basis for rejecting the claims of this application under the judicially created doctrine of
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