Ex parte STURM et al. - Page 11




          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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