Appeal No. 96-2675
Application No. 08/299,760
The Double Patenting Rejection
All proper double patenting rejections rest on the fact
that a patent has been issued and a later issuance of a second
patent will continue protection beyond the date of expiration
of the first patent of the very same invention claimed therein
or of a mere variation of that invention which would have been
obvious to those of ordinary skill in the relevant art. See
In re Kaplan, 789 F.2d 1574, 1579-80, 229 USPQ 678, 683 (Fed.
Cir. 1986).
Our analysis of the examiner's rejection of claims 1
through 24 and 26 through 30 under the doctrine of judicially
created double patenting parallels that for a § 103 rejection.
While the double patenting rejection is analogous to a failure
to meet the non-obviousness requirement of 35 U.S.C. § 103,
that section is not itself involved in double patenting
rejections because the patent principally underlying the
rejection is not usually prior art. In re Braat, 937 F.2d
589, 592-593, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991); In re
Longi, 759 F.2d 887, 892-93, 225 USPQ 645, 648 (Fed. Cir.
1985); In re Braithwaite, 379 F.2d 594, 600, n. 4, 154 USPQ
29, 34, n. 4 (CCPA 1967). When considering whether the
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