Ex parte HYATT et al. - Page 13

          Appeal No. 95-0143                                                          
          Application 07/865,849                                                      

          claim may be rejected under the obviousness-type double patenting           
          doctrine only if there is some clear evidence, relating to why              
          the variation would have been obvious.  Appellants argue that the           
          Examiner has not presented evidence as to why it would have been            
          obvious to modify the claimed invention of patent claim 1 to                
          achieve the invention set forth by Appellants’ claim 10.                    
               The Examiner has found that Appellants’ claim 10 is broader            
          than patent claim 1.  We also find that Appellants’ claim 10 is             
          broader than patent claim 1.                                                
               While the narrowing limitations added to the claim 1 of the            
          patent may render those claims unobvious over the claim 10 of               
          this application, the reverse is not necessarily true.  As the              
          Examiner has noted, the claim 10 on appeal here is broader than             
          the corresponding claims of the patent.  We note that the                   
          Examiner has only determined one-way obviousness and not two-way            
               The difference 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,           
          594, 19 USPQ2d 1289, 1293 (Fed. Cir. 1991), the court held that a           
          two-way obviousness determination must be satisfied in a                    
          situation where an applicant is not at fault that narrower claims           


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