Appeal No. 96-3494
Application 08/160,299
considered even though there are other rejections pending
against the claims.
At the outset we note that the examiner’s rejection is
not based on obvious double patenting. Rather, the rejection
indicates that it is based on the same invention type double
patenting of 35 U.S.C. § 101. A rejection on this basis
requires that the two inventions be exactly the same and not
simply patentably indistinct. The claims of copending
application Serial No. 08/160,111 are different from the
claims of this application in that each corresponding claim of
the copending application recites a mask generator in addition
to the elements recited in the claims of this application.
Thus, the claims of this application and the copending
application are not of exactly the same scope because the
claims of the copending application recite an additional
element. The only legally applicable double patenting
rejection on this record would be a rejection of the
obviousness-type. Such a rejection is not before us, however,
and we do not consider it. We are constrained on this record
to reverse the examiner’s provisional rejection of claims 1-33
on the ground of double patenting under 35 U.S.C. § 101.
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