Appeal No. 1995-4851
Application 08/167,656
For the above reasons, we conclude that the examiner has
not carried his burden of establishing a prima facie case of
obviousness-type double patenting over claims 1-12 of Corbin
in view of Manzer. We therefore reverse the obviousness-type
double patenting rejection.
Prior board decision
When the examiner’s rejection of appellants’ claims under
35 U.S.C. § 103 over Manzer in view of Groppelli, and the
provisional rejection of the claims under the judicially
created doctrine of obviousness-type double patenting over the
claims of the application which issued as the Corbin patent
previously were before the board (appeal no. 93-0865), the
board apparently
relied upon a per se rule that appellants’ claimed process
would have been prima facie obvious to one of ordinary skill
in the art through control of reaction variables, provided
that the prior art discloses a catalyst and starting materials
which are similar to those used by appellants. Subsequent to
the board’s decision, the Federal Circuit stated in In re
Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir.
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