Appeal No. 1999-0610 Page 10
Application No. 08/601,186
terms of 35 U.S.C. § 154, the 20-year term limitation of
section 154 does not address this second concern.7
For the foregoing reasons, we shall sustain the
examiner's rejection of claims 49 through 60 under the
judicially created doctrine of double patenting.
The obviousness rejection
Before addressing the examiner's rejections based upon
prior art, it is an essential prerequisite that the claimed
subject matter be fully understood. Analysis of whether a
claim is patentable over the prior art under 35 U.S.C. §§ 102
and 103 begins with a determination of the scope of the claim.
The properly interpreted claim must then be compared with the
prior art. Claim interpretation must begin with the language
of the claim itself. See Smithkline Diagnostics, Inc. v.
Helena Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468,
1472 (Fed. Cir. 1988). Accordingly, we will initially direct
In order to address this concern, 37 CFR § 1.321(c)(3) also requires7
that a terminal disclaimer filed in an application to obviate a double
patenting rejection include a provision that any patent granted on that
application be enforceable only for and during the period that the patent is
commonly owned with the application or patent which formed the basis for the
rejection.
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007