Appeal No. 2001-0096
Application 09/301,891
application can be made by a materially different process. (Main Brief, page 4, lines 14-
18).
The Examiner observes that Pannell contains claims which are not in product by
process structure; specifically, claims 5, 6, 7, 8, and 9. (Examiner’s Answer, page 7,
lines 9-10). The Examiner also asserts that the argument relating to restriction is mere
conjecture. (Examiner’s Answer, page 7, lines 8-9).
Although a Reply Brief was filed, it fails to acknowledge the existence of claims
5-9 of Pannell. It does, however, seem to assert that the appropriate standard for
reviewing obviousness-type double patenting rejections should be that applied for
determining infringement, or alternatively that for the imposition of a restriction
requirement. (Reply Brief, page 4, line17 – page 5, line 2).
An obviousness-type double patenting rejection is a question of law. In re
Goodman, 11 F. 3d 1046, 1052, 29 USPQ2d 2010, 2015 (Fed. Cir. 1993), Texas
Instruments Inc. v. International Trade Commission, 988 F.2d 1165, 1179, 26 USPQ2d
1018, 1029 (Fed. Cir. 1993).
An obviousness-type double patenting rejection is properly used to reject claims
to subject matter in a pending application which are different but not patentably distinct
from the subject matter claimed in a prior patent. Goodman, 11 F. 3d at 1052, 29 USPQ
at 2015, In re Braat, 937 F. 2d 589, 592, 19 USPQ2d 1289, 1291-1292 (Fed. Cir. 1991).
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007