Appeal No. 95-0143 Application 07/865,849 may have issued before broader ones. However, in this case, Appellants elected to take the patent on the narrower claim 1 of the patent and to continue prosecution on the broader claim 10 in this application. Thus, the facts of this case are distinguishable from Braat. In In re Goodman, 11 F.3d 1046, 1053, 29 USPQ 2d 2010, 2016 (Fed. Cir. 1993), the court held that where appellants choose to accept narrower claims to file a continuing application of the broader claims rather than to appeal the rejection of the broader claims, the two-way obviousness determination was not required. 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.” In re Goodman, 11 F.3d at 1053, 29 USPQ2d at 2016. We find that a one-way obviousness determination is the proper determination. Furthermore, we find that upon reviewing the patented claim 1, that Appellants’ broader claim 10 is obvious over the narrower patented claim 1. Therefore, we will sustain the Examiner’s rejection of claim 10 under the judicially created doctrine of obviousness-type double patenting. 14Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 NextLast modified: November 3, 2007