Appeal No. 2004-2028
Application No. 09/423,746
with the examiner that one of ordinary skill in the art would have
been led to employ the claimed amount of magnesium oxide, magnesium
hydroxide and/or lignite coke in the powdery reactive composition
of the type recited in Fagiolini ‘567, motivated by a reasonable
expectation of obtaining “substantial advantage”.
The appellants do not contest the examiner’s determination
that the claims of Fagiolini ‘567, together with the disclosure of
Regler, would have rendered the claimed subject matter of the
present application obvious. See the Brief, pages 15 and 16.
Rather, the appellants rely on the discussion of a Section 101
double patenting rejection drawn to patent and application claims
involving “the same invention (same claim scope)” in Vogel and
Studiengesellschaft Kohle mbH v. Northern Petrochemical Co., 784
F.2d 351, 355, 228 USPQ 837, 840 (Fed. Cir. 1986) to argue that the
examiner has applied a wrong analysis in maintaining the
obviousness-type double patenting rejection in question. Id.
However, continued reading of Vogel and Studiengesselschaft Kohle
mbH reveals that the analysis employed in the Section 101 double
patenting determination is not applicable to the present situation.
Vogel, Braat, Longi and Studiengesselschaft Kohle mbH all support
the use of the analysis employed by the examiner in making an
obviousness-type double patenting determination.
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