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
obviousness.
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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