Appeal No. 95-2803
Application 08/024,851
The full text of the examiner's rejection and response
to the argument presented by appellants appears in the final
rejection and answer (Paper Nos. 21 and 27), while the complete
statement of appellants’ argument can be found in the brief
(Paper No. 26).3
OPINION
3The final rejection and examiner’s answer only specify a
“same invention” double patenting rejection. Appellants have
interpreted language in the Advisory Action of September 23,
1994 (Paper No. 23) as reflecting that the examiner has with-
drawn the “same invention” double patenting rejection and sub-
stituted therefor a rejection for obviousness type double
patenting. With this understanding, appellants present argu-
ments addressed to both “same invention” and “obviousness type”
double patenting. We disagree with appellants’ above perception.
As the examiner’s answer reveals (page 3) only a “same invention”
double patenting rejection is specified by the examiner. An
“obviousness type” double patenting rejection is not set forth
in the final rejection or answer. While the examiner may have
commented upon the pending claims as being broader than the
patented claims in the aforementioned Advisory Action, this
viewpoint, when considered with the examiner’s listing of only a
“same invention” double patenting rejection in the answer, makes
it clear to us that the examiner did not intend and has not added
an “obviousness type” double patenting rejection to the record.
For this reason, we need not address appellants’ arguments
directed towards an obviousness type double patenting issue
(brief, pages 5 through 9). As a concluding point, we simply
note In re Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986)
as a case addressing the circumstance of broad claims of one
patent dominating another patent’s narrower claims.
3
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