Appeal No. 2001-0096
Application 09/301,891
Appellant’s briefs miss the point of an obviousness-type double patenting rejection,
which is, from the patent term standpoint, as follows:
The public should … be able to act on the assumption that upon the expiration of
the patent it will be free to use not only the invention claimed in the patent but
also the modifications or variants which would have been obvious to those of
ordinary skill in the art at the time the invention was made, taking into account
the skill of the art and prior art other than the invention claimed in the issued
patent (Emphasis in Original).
In re Longi, 759 F.2d 887, 892-893, 225 USPQ 645, 648 (Fed. Cir. 1985), citing In re
Zickendraht, 319 F.2d 225, 232, 138 USPQ 23, 27 (CCPA 1963) (Rich, J. concurring).
We decline the Appellant’s inherent invitation to substitute an infringement-type
standard or restriction requirement-type standard for this rationale. Claims may have
different scope and yet remain not patentably distinct. The proper analysis is an
obviousness analysis.
Appellant’s additional argument that the issued patent and the pending
application have the same priority claims and therefore will expire simultaneously is
without merit. Patent terms may be adjusted for various reasons, e.g. pursuant to 35
U.S.C. § 154 (b).
Appellant also states (without citation to authority) that “It is improper to combine
references when formulating an obviousness-type double patenting rejection.” (Main
Brief, page 5, lines 22-23), and “Obviousness-type double patenting cannot combine
references” (Reply Brief, page 5, line 3).
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