Appeal No. 2002-0679 7
Application No. 08/684,351
11, 17 and 24. As we discussed above in the rejection on the grounds of anticipation, the
examiner has not addressed the limitation directed to “consists essentially of hydrogen
bonding,” and this omission constitutes reversible error as the burden of proof likewise rests
with the examiner to establish a prima facie case of obviousness.
For the foregoing reasons, we determine that the examiner has neither established a
prima facie case of anticipation nor obviousness in view of the references of record.
Accordingly, the rejections are not sustained.
The Rejection Under Obviousness-type Double Patenting
All proper double patenting rejections rest on the fact that a patent has been issued
and a later issuance of a second patent will continue protection beyond the date of
expiration of the first patent of the very same invention claimed therein or of a mere
variation of that invention which would have been obvious to those of ordinary skill in the
relevant art. See In re Kaplan, 789 F.2d 1574, 1579-80, 229 USPQ 678, 683 (Fed.
Cir. 1986).
Our analysis of the examiner's rejection of claim1 under the doctrine of judicially
created double patenting parallels that for a § 103 rejection. While the double patenting
rejection is analogous to a failure to meet the non-obviousness requirement of 35 U.S.C.
§ 103, that section is not itself involved in double patenting rejections because the patent
principally underlying the rejection is not usually prior art. In re Braat, 937 F.2d 589,
592-93, 19 USPQ2d 1289, 1291-92 (Fed. Cir. 1991); In re Longi, 759 F.2d 887,
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