Appeal No. 1998-0671
Application 08/285,328
The test for obviousness-type double patenting is whether the
claimed subject matter of the application is obvious over what is
covered by the patent claims (or the application claims in the case
of a provisional obviousness-type double patenting rejection).
"[T]he disclosure of a patent cited in support of a double patenting
rejection cannot be used as though it were prior art, even where the
disclosure is found in the claims." General Foods v.
Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1281, 23 USPQ2d 1839,
1846 (Fed. Cir. 1992). "[P]atent claims are looked to only to see
what has been patented, the subject matter which has been protected,
not for something one may find to be disclosed by reading them." Id.
at 1281, 23 USPQ at 1846, citing In re Aldrich, 398 F.2d 855, 859,
158 USPQ 311, 314 (CCPA 1968). What has been patented is the subject
matter covered by the claims. The question to be asked in the
analysis is whether the subject matter covered by the present claims
would have been obvious over the subject matter covered by the claims
of either the '821 patent or the '324 application.
We are not aware of any legal support for the Examiner's use of
a hypothetical "claim" of the type found at EA4-5. Although the
Examiner states that the limitations are merely a summary of the
common subject matter drafted as a series of method steps, not a
- 8 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007