Appeal No. 95-4985
Application No. 08/164,227
timewise extension of the patent right by
prohibiting the issuance of claims in a second
patent which are not "patentably distinct" from the
claims of a first patent. See In re Longi, 759 F.2d
887, 892, 225 USPQ 645, 648 (Fed. Cir. 1985). The
doctrine has also been phrased as prohibiting claims
in the second patent which define "merely an obvious
variation" of an invention claimed in the first
patent. In re Vogel, 422 F.2d 438, 441, 164 USPQ
619, 622 (CCPA 1970). (emphasis in original)
The examiner contends that the subject matter of claims 1
through 12 is no more than “an obvious variation” of an
invention claimed in the patent issued to Orthmann. The
examiner, however, does not explain why those skilled in the
art would have been led to employ Orthmann’s elastomer making
process for making prepolymers, in spite of the significant
differences between the compositions of the starting materials
and the physical and chemical properties of the elastomer and
the prepolymer involved. Compare In re Ochiai, 71 F.3d 1565,
1569-71, 37 USPQ2d 1127, 1131-32 (Fed. Cir. 1995). As
correctly argued by appellants at page 6 of the Brief, the
examiner simply has not supplied evidence sufficient to
conclude that the instantly claimed prepolymer making process
is an obvious variation of Orthmann’s elastomer (rubber)
making process.
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