Appeal No: 2000-0635
Application No: 08/511,028
Obviousness-type double patenting is a judicially created
doctrine that prohibits an inventor from obtaining a second
patent for claims that are not patentably distinct from the
claims of the first patent. A terminal disclaimer may
overcome an obviousness-type double patenting rejection,
assuming that the earlier patent has not expired. In re
Lonardo, 119 F.3d 960, 965, 43 USPQ2d 1262, 1266 (Fed. Cir.
1997). No terminal disclaimer is of record in the
application.
Generally, a one-way test is applied and the relevant
inquiry is whether the application claims are obvious in view
of the earlier patented claims. See In re Berg, 140 F.3d
1428, 1432, 46 USPQ2d 1226, 1229 (Fed. Cir. 1998). We apply a
one-way test since applicants, in their brief, have not
suggested that a two-way analysis should be applied nor
pointed to a reason why a two-way analysis would be
appropriate.
Applicants argue that the claimed ratio of "at least
1.5:1 such that some mononitrotoluene will remain in the
reaction mixture" is not rendered obvious by the Schieb
claimed ratio of "at least 2:1".
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