Appeal No. 1996-1838 Page 10
Application No. 08/119,655
Dembiczak, 175 F.3d 994, 1002, 50 USPQ2d 1614, 1619-20 (Fed.
Cir. 1999) and Braat,
937 F.2d at 593-94, 19 USPQ2d at 1292-93, a "two-way" test was
applied. Under this "two-way" test, the examiner asks whether
the application claims are obvious over the patent claims and
also asks whether the patent claims are obvious over the
application claims.
We recognize that the examiner's rejection is based in
large measure on the decision of the court in In re Schneller,
397 F.2d 350, 158 USPQ 210 (CCPA 1968). However, it is our 4
view that Schneller does not set forth another test for
4 Schneller is a rather unusual case in that there was no
majority opinion because only Judges Rich and Smith joined the
principal opinion, while Judges Worley and Kirkpatrick
concurred in the result and Judge Almond wrote a concurring
opinion. Thus, the principal opinion therein is of doubtful
controlling precedent. As Judge Rich observed in Kaplan, 789
F.2d at 1578, 229 USPQ at 682,
[t]he development of the modern understanding of
"double patenting" began in the Court of Customs and
Patent Appeals (CCPA) about the time of In re
Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963), a
rather unusual case is [sic, in] that there was no
majority opinion because only two judges joined each of
the two principal opinions. Neither opinion therein,
therefore, can be regarded as controlling precedent in
this court.
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