Appeal No. 96-2179 Page 23
Application 07/613,466
arguments of counsel that we have already rejected.
Consequently, we reverse the rejection of claims 25-37 and 49-
61 under section 112 as not enabled.
D. Double-patenting - Callaghan '900
10. We presume that a one-way double-patenting analysis
applies for applications filed after 1984. See Berg, __ F.3d
at ___, 46 USPQ2d at 1230. Appellants have not urged any
reason for applying a two-way analysis. Although Appellants
focus on the "concept" of the invention and the examiner
focuses on what is disclosed, case law requires us to
determine "whether the application claims are obvious over the
patent claims." Id., ___ F.3d at ____, 46 USPQ2d at 1229
(emphasis added). The fact that all of the claims being
compared are either means-plus-function or step-plus-function
claims further restricts the reasonable scope of the
comparison.
11. We conclude that claims 25 and 49 are not obvious
over the claims of Callaghan '900 because the claimed process
step of closed-loop control self-adaptation, in itself and as
programmed in the self-adapt means, was not disclosed or
suggested. Even though claims 25 and 49 and the claims of
Callaghan '900 have similar functions and results, the acts of
the self-adapting step and means differ beyond what would have
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