Appeal No. 1996-2088
Application No. 08/082,432
metal layer comprising Ti/one of TiON, TiN or TiW/Ti thereon, and then depositing a layer of an Al-
based material thereon. According to the examiner, Sugano differs in failing to specify the specifics of
the metal Al deposition but it would have been obvious to substitute the two-layer Al metal of Tracy or
Madokoro in the method of Sugano to improve step coverage (Tracy) and increase stress migration
resistance (Madokoro) (answer, para. bridging pages 5-6).
As noted above, the analysis of obviousness-type double patenting parallels the obviousness
determination outlined above for the rejection under 35 U.S.C. § 103, except that the claims of the
earlier filed patents form the basis for the obviousness determination. If the application is the later filed
case or both the application and the patented cases are filed on the same day, only a one-way
determination in which the examiner asks whether the application claims are obvious over the patent
claims is needed in resolving the issue of patentability. Similarly, as here, even if the application at issue
is the earlier filed case, only a one-way determination of obviousness is needed to support a double
patenting rejection, in the absence of a finding of administrative delay on the part of the Patent and
Trademark Office (PTO) causing delay in prosecution of the application at issue, i.e., the earlier filed
case. Thus, a two-way test need only be applied when there is administrative delay. In the absence of
administrative delay, a one-way test is appropriate.
Appellants argue that the patented claims are not obvious over the appealed claims (brief, page
11), i.e., that a two-way test is required in the present case, and that Goodman does not apply
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