Appeal No. 94-4291
Application No. 07/627,009
that a "one-way" analysis is the proper test for the
obviousness-type double patenting rejection before us based
upon the rationale set forth in the recent case of In re
Emert, 124 F.3d 1458, 44 USPQ2d 1149 (Fed. Cir. 1997).
The provisional obviousness-type
double patenting rejection
We fully share the examiner's conclusion that it would
have been obvious for one with ordinary skill in the art to
substitute Drahnak's catalyst for the catalyst in the claims
of the '904 application in order to obtain the advantages
disclosed by Drahnak and based upon a reasonable expectation
of success. O'Farrell, Id. It is the appellants' basic
contention that such a substitution would not have been
obvious "because catalytic activity is unknown except by
actual test" (brief, page 19). That is, the appellants
in essence believe no basis exists for a reasonable
expectation that Drahnak's catalyst would be successfully used
in the hydrosilation process and composition claimed in the
'904 application. However, the requisite
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