Appeal No. 95-4985
Application No. 08/164,227
Having carefully considered all of the arguments and the
evidence relied on by the examiner and appellants in support
of their respective positions, we conclude that the examiner
has not established a prima facie case of unpatentability
either under the judicially created doctrine of obviousness-
type double patenting or under 35 U.S.C. § 103. Thus, we
will not sustain any of the above rejections. Our reasons for
this determination follow.
DOUBLE PATENTING
A patent's disclosure cannot be considered as "prior art"
in considering obviousness-type double patenting. See, e.g.,
In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970). Instead,
the law of double patenting is concerned only with that which
is claimed and thus involves an inquiry into what, if
anything, has been claimed twice. See General Foods Corp. v.
Studiengesellschaft Kohl mbH, 972 F.2d 1272, 23 USPQ2d 1839
(Fed. Cir. 1992). As noted in In re Braat, 937 F.2d 589,
592, 19 USPQ2d 1289, 1291-1292 (Fed. Cir. 1991):
Obviousness-type double patenting is a judicially
created doctrine intended to prevent improper
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