Appeal No. 1996-1838 Page 6
Application No. 08/119,655
(CCPA 1970). A good test, and probably the only objective
test, for "same invention," is whether one of the claims would
be literally infringed without literally infringing the other.
If it could be, the claims do not define identically the same
invention. Vogel, 422 F.2d at 441, 164 USPQ at 621-22
(halogen is not the "same" as chlorine; meat is not the "same"
as pork). All types of double patenting which are not "same
invention" double patenting have come to be referred to as
"obviousness-type" double patenting. See In re Van Ornum, 686
F.2d 937, 942-43, 214 USPQ 761, 766 (CCPA 1982), which states
in discussing cases leading to Vogel's restatement of the law
of double patenting, 2,3
numerous cases were considered in which application
claims were directed to mere obvious modifications of, or
improvements on, inventions defined in the claims of
patents already issued to the same inventors, or to
common assignees, and it had been decided that they might
be allowed to go to patent if the applicants filed
terminal disclaimers. We classified these as
"obviousness type double patenting." This latter
classification has, in the course of time, come, somewhat
2 Vogel, 422 F.2d at 441-42, 164 USPQ at 621-22.
3Judge Rich in Kaplan, 789 F.2d at 1579, 229 USPQ at 682,
stated that the restatement of the law of double patenting set
forth in Vogel "serves as a good starting place" for deciding
the double patenting issue raised in that appeal.
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