Appeal No. 95-5076
Application 08/079,220
the claimed process of Won ‘675. Thus, it appears that claim 12 of Won ‘675 and the
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claims on appeal can be considered to be obvious variants. What is not clear is whether
in the welter of parent applications, there was a restriction requirement under 35 U.S.C. §
121 which would preclude a double patenting rejection.
Upon return of the application, the examiner should review Won N675, PDR, and any
other relevant prior art and determine whether a double patenting rejection is proper. In so
doing, the examiner should review the parent applications and determine whether a double
patenting rejection, otherwise proper, would not be proper because of a previous
restriction requirement.
4. Adequacy of search.
A significant aspect of the present invention is the provision of a controlled released
or sustained released formulation of retinoic acid. Appellants have based patentability of
the claimed invention on that feature, comparing the claim formulation with the prior art
2To the extent appellants would urge that the respective sets of claims are
directed to two different statutory classes and, thus, double patenting would not be proper,
we refer to the recent decision in In re Lonardo, ___ F.3d ___, 43 USPQ2d 1262, 1268
(Fed. Cir. 1997). Therein the court determined that double patenting was proper between
claims directed to a device and claims directed to a method of using the device stating
“the claimed structure of the device suggests how it is to be used and that use thus would
have been obvious.” Here, claim 12 of Won ‘675 results in the formation of a product,
which on this record, falls within the products required by the claims on appeal when
retinoic acid is used as the retinoid.
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