Appeal No. 1996-3816 Page 15
Application No. 08/293,331
manifested in 35 U.S.C. § 121. Indeed, the Court in In re
Taylor, 360 F.2d 232, 236, 149 USPQ 615, 619 (CCPA 1966) held
that no obviousness-type double patenting exists under similar
circumstances. Specifically, the Court in Taylor, 360 F.2d at
236, 149 USPQ at 619 states that:
Were the process claims of the patent identical
with the process step recited in the appealed claim,
a closer question might have been presented. We
note, however, in this respect that in this art it
appears to have been a past practice of the Patent
Office to require restriction under Rule 142 between
claims defining collagen films and claims defining a
process for centrifugally casting a film.
The appealed claim defines a product wherein
oriented collagen fibers having a preferred tensile
strength are produced in a collagen film of uniform
thickness. The patented claims define a process in
which the collagen film of uniform thickness. The
patented claims define a process in which the
collagen solution is subjected to spin casting on a
precast wax base and helical cutting the film to
produce a collagen film of uniform cross-section.
While the patented process may produce a product
which falls within the claim to a product as defined
in the appealed claim, this does not require the
conclusion that double patenting exists.
Accordingly, the decision of the examiner regarding the
obviousness-type double patent rejection should be reversed.
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