Appeal No. 2000-1646
Application 08/467,425
structural susceptor is used to bond two fiber reinforced resin composites together.
(Examiner’s Answer, page 3, lines 10-14).
The Appellants argue that (1) the current PTO rules for restriction are arbitrary
and the public is hurt by the vagueness and interaction of the restriction practice and
obviousness-type double patenting rejections; (2) the claims of the present application
are independent and distinct from the structural susceptor product claims of Christensen
and the PTO would have required restriction; and (3) a double patenting rejection is
improper because no patent term extension can occur because a patent issuing from
this application will expire on the same day, and the law in general has a general
contempt for restraints on alienation which the PTO should reconsider. (Appeal Brief,
page 10, line 3 - page 11, line 22).
The Appellants do not, however, dispute that the claims are not patentably
distinct over Christensen.
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).
The Appellants’ brief misses the point of an obviousness-type double patenting
rejection, which is, from the patent term standpoint, as follows:
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007