Ex parte HYATT et al. - Page 14

          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.                      


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