Appeal No. 1996-1838 Page 11
Application No. 08/119,655
determining "obviousness-type" double patenting. In that
regard, it is clear to us that the court in Schneller was
concerned with whether or not the invention claimed in the
patent was independent and
distinct from the invention of the appealed claims. While 5
the court in Schneller did use a "cover" test in making the 6
determination that the invention claimed in the patent was not
independent and distinct from the invention of the appealed
claims, we are of the view that the term "cover" was used by
the court as synonymous with not patentably distinct. Thus,
under the "cover" test, one would ask whether the application
claims are covered by (i.e., not patentably distinct from) the
claims of the patent. To the extent that Judge Rich in
Schneller was setting forth a domination theory of double 7
5 See Schneller, 397 F.2d at 354, 158 USPQ at 214-15.
6As set forth in the Manual of Patent Examining Procedure
(MPEP) § 804, one part of the test is whether patent
protection for the invention, fully disclosed in and covered
by the claims of the reference, would be extended by the
allowance of the claims in the later filed application.
7A first patent or application "dominates" a second
patent or application when the first patent or application has
a broad or generic claim which fully encompasses or reads on
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