Appeal No. 94-3812
Application 07/857,701
THE OBVIOUSNESS DOUBLE PATENTING REJECTION
We shall reverse this rejection. While we agree with the
examiner's implicit conclusion that only a so-called "one-way"
test was necessary here because Bilkadi's assignee, the
Minnesota Mining and Manufacturing Company could have filed
the appealed claims and the Bilkadi claims in one application
and, thus, appellant's assignee effectively controlled the
rate of prosecution , for reasons set forth below we find that5
the examiner has not established a prima facie case of
obviousness.
On page 10 of Paper Number 23, the examiner concedes that
Bilkadi claims neither a metal surface nor a polyacrylamide
radiation cured crosslinked polymer. The examiner relies on
the disclosure in Bilkadi in columns 7 and 8 that his coatings
may be applied to metal and the disclosure in Reilly, Jr. at
column 11, Example 5 where aluminum is allegedly coated with a
polyacryoyl monomer and silica gel as evidence that the
appealed claims would have been obvious from Bilkadi's claims.
Additionally, the examiner considers Reilly, Jr. to teach the
equivalence of polyacryloyl monomers and polyacrylamides for
In re Berg, 140 F.3d 1428, 1431, 46 USPQ2d 1226, 12295
(Fed. Cir. 1998).
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