Appeal No. 98-0964
Application 08/557,436
No. 377,473 “since the claims, if allowed, would improperly
extend the ‘right to exclude’ already granted in the patent”
(answer, page 4), we note that the examiner has taken the
position that the subject matter in the instant application “is
fully disclosed in the patent and is covered by the patent since
the patent and the application are claiming common subject
matter.” As is apparent from our
determination above regarding benefit under 35 U.S.C. § 120 and
our discussion of “written description” in the ‘506 design
patent application under § 112, first paragraph, the examiner’s
stated position here is factually inconsistent with his own and
our earlier determinations and is therefore in error. Since the
design patent does not disclose or claim the first and second
“hatch surfaces” required in independent claim 23 on appeal, it
follows that the present application and the design patent are
not “claiming common subject matter” and that the subject matter
in the instant application is not “fully disclosed in the
patent,” as the examiner urges. In addition, we note that the
examiner’s reliance on In re Schneller (answer, page 4) is
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