Appeal No. 94-4409
Application 07/958,526
62 were finally rejected under the judicially-created doctrine
of obviousness-type double patenting in view of claims 1 and 9
of U.S. Patent No. 5,204,320.
It is apparently agreed that U.S. Patent No. 5,204,320 to
Patel is a commonly owned, later filed ?improvement patent? and
thus a ?two-way? test is required to determine obviousness-type
double patenting. In re Berg, 140 F.3d 1428, 1432, 46 USPQ2d
1226, 1229 (Fed. Cir. 1998). However, the examiner argues
that a ?two-way? test is not required herein because appellants
have not diligently prosecuted the present application which
includes claims to the basic invention. As evidence thereof,
the examiner contends, inter alia, that appealed claims 66 and
76 herein were originally filed so broadly as to read on
?admitted prior art?. However, the examiner never identifies
what ?admitted prior art? is relied on by him. Moreover, as
best as we can determine from the multi-year prosecution of
the present application and its parents, the Uhl patent was
first applied in an office action mailed July 9, 1992. Thus
it is our view that the examiner has failed to meet his burden
of showing that it has been appellants’ lack of diligence
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