Appeal No. 96-2391
Application 08/002,286
In applying the rules of Braat and Goodman to the facts
of this case, we find appellants’ position to be correct. Since
appellants received the patent on the narrower claims of the Hale
patent first through no fault of their own, the proper test for
the application of an obvious-type double patenting rejection is
the two-way obviousness determination. Thus, even though the
examiner is correct that as a general rule, the broader claims of
this application are obvious over the narrower claims of the Hale
patent, Goodman, supra, the examiner’s failure to demonstrate the
obviousness of the patent claims over the claims of this
application, that is two-way obviousness, results in a failure to
support a rejection on obvious-type double patenting under the
facts of this case.
In conclusion, since two-way obviousness is necessary
under the facts of this case, and since the examiner has not
properly addressed this question, we do not sustain the rejection
of claims 1-20 on the ground of obvious-type double patenting.
We now consider the rejection of claims 1-20 under 35
U.S.C. § 103. In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
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