Appeal No. 2003-0132
Application 09/741,356
review. By failing to properly ascertain the differences between
the scope and content of a patent claim and a claim in the
application at issue and failing to provide any fact-based
analysis relying on evidence to support a conclusion that any of
claims 1 through 17 of the present application are unpatentable
under the judicially created doctrine of obviousness-type double
patenting over any of claims 1 through 6 and 10 through 14 of
U.S. Patent No. 5,992,686, the examiner has clearly failed to
established a prima facie case of obviousness-type double
patenting. Accordingly, we are unable to sustain the examiner's
double patenting rejection of claims 1 through 17 as stated in
the answer.1
In the interest of judicial economy and to relieve
appellants of the need for any further protracted prosecution of
the application, we will also comment upon the examiner’s attempt
to use the Suh patent in establishing that claims 1 through 17 of
the present application are unpatentable under the judicially
1 In making any future rejection of the type present here,
the examiner would be well served to review the memorandum issued
to the Examining Corps by Deputy Commissioner for Patent
Examination Policy, Steven G. Kunin, entitled “Procedures for
Relying on Facts Which are Not of Record as Common Knowledge or
for Taking Official Notice,” dated February 21, 2002.
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