Appeal No. 1996-2088
Application No. 08/082,432
because there is no genus/species relationship between the pending/patented claims (reply brief, page
5). However, appellants have not established that the later filed application issued to a patent before
the present application as a result of delay entirely within the control of the PTO. No such argument
has been advanced by appellants. Thus, a one-way test to determine obviousness-type double
patenting is appropriate.
Here, we agree with the examiner that claims 22 and 19, but not claim 16, would have been
obvious over claims 1, 2 and 5-7 of Sugano in combination with Tracy or Madokoro for the reasons
set forth above in the § 103 obviousness discussion. Therefore, the obviousness-type double patenting
rejection of claims 19-22 and 24 is sustained and the obviousness-type double patenting rejection of
claims 16-18 and 23 is reversed.
CONCLUSION
To summarize, the decision of the examiner (I) to reject claim 22 under 35 U.S.C. § 112, first
paragraph (enablement)) is reversed, (II) to reject claims 16-24 under 35 U.S.C. § 103 as being
unpatentable over Maeda or Hu in view of APA and either Tracy or Madokoro is affirmed-in-part,
and (III) to reject claims 16-24 under the judicially created doctrine of obviousness-type double
patenting over claims 1, 2 and 5-7 of Sugano in view of either Tracy or Madokoro is affirmed-in-part.
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