Appeal No. 96-2391
Application 08/002,286
claims on appeal would have been obvious to the artisan in view
of the claims of the patent. According to the examiner, the
judicially created doctrine of obvious-type double patenting
precludes the granting of a full term patent on the claims in
this application. Appellants respond that the obvious-type
double patenting rejection is not properly made under the facts
of this case because the examiner has not demonstrated two-way
obviousness [reply brief, pages 10-12]. We agree with
appellants.
In obvious-type double patenting rejections, the
differences between the application of one-way obviousness
determinations and two-way obviousness determinations have been
clarified by the courts. In In re Braat, 937 F.2d 589, 19 USPQ2d
1289 (Fed. Cir. 1991), the court held that a two-way obviousness
determination must be satisfied in the situation where an
applicant is not at fault that narrower claims may have issued
before broader ones. Here, appellants filed narrower claims in a
continuation-in-part application filed after the filing date of
this application which contains the broader claims. The subject
matter added in the continuation-in-part application could not
have been added to this application without violating the new
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