Appeal No. 96-1502
Application 08/169,107
The examiner concedes that the claims herein and those in
the application involved in Appeal 96-0460 are not identical.
The examiner maintains, however, that the sets of claims
"differ from one another only in the scope of coverage being
sought" (Examiner's Answer, page 5). The examiner therefore
reasons that "[t]he instant process would have been obvious
because of the overlapping scope of the subject matter being
claimed" (id.). Answering applicants' argument that the feed
stock here and the feed stock in the claims involved in Appeal
96-0460 are different, the examiner again notes an overlap.
The examiner has applied what appears to be a per se rule
that if the scope of two sets of claims overlap, one set of
claims will render obvious within the meaning of 35 U.S.C.
§ 103 the other set of claims. There is no such per se rule.
On the contrary, each difference must be analyzed and an
explanation must be provided as to why the subject matter, as
a whole, of one set of claims renders obvious the subject
matter, as a whole, of the other set of claims. We decline to
undertake that analysis in the first instance and accordingly
vacate the examiner's double patenting rejection and remand so
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