Appeal No. 97-3187
Application No. 07/999,422
Furthermore, it is our opinion that it is inappropriate to
extend the "divisional doctrine" set forth in Orita to cover
the facts of this case.
For the reasons stated above, we do sustain the
examiner's rejection of claims 1, 2, 5 and 6 under 35 U.S.C. §
251.
New ground of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection:
Claims 1, 2, 5 and 6 are rejected for obviousness-type
double patenting over claims 1, 3 and 7 from U.S. Patent No.
4,901,661, for the reasons explained below.
In this case, the proper test for obviousness-type double
patenting is the "one-way" test set forth in In re Goodman,
11 F.3d 1046, 1053, 29 USPQ2d 2010, 2015-16 (Fed. Cir. 1993),
since the appellants chose to file a continuation (i.e.,
Application No. 07/470,974) and seek issuance of the allowed
claims in Application No. 07/321,720 by payment of the issue
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