Appeal No. 96-2391
Application 08/002,286
matter prohibitions of the statute. Thus, the facts of the
situation here are such that the narrower claims of the
continuation-in-part application issued before the broader claims
of this application through no fault of appellants. In contrast,
consider the facts of In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010
(Fed. Cir. 1993). In Goodman, appellants voluntarily chose to
accept narrower claims and to file a continuing application on
the broader claims rather than to appeal the rejection of the
broader claims. The court held that the two-way obviousness
determination was not required under those facts. The court
indicated that this would improperly extend the term limit
mandated by Congress. The court noted that “[a] second
application -- ‘containing a broader claim, more generical in its
character than the specific claim in the prior patent’ --
typically cannot support an independent valid patent,” Id. 11
F.3d at 1053, 29 USPQ2d at 2016, citing Miller v. Eagle Mfg. Co.,
151 U.S. 186, 198 (1894). Thus, the court in Goodman decided
that under the facts of that case, one-way obviousness would be
sufficient and that generically broader claims are generally
obvious over their more narrow counterparts.
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