Appeal No. 1996-1838 Page 12
Application No. 08/119,655
patenting, we note that Judge Rich in Kaplan, 789 F.2d at
1577-78, 229 USPQ at 681-82, set forth the Courts opinion that
"[d]omination is an irrelevant fact." In any event, it is our
view that Schneller did not establish a rule of general
application and thus is limited to the particular set of facts
set forth in that decision. In fact, the Court in Schneller,
397 F.2d at 355, 158 USPQ at 215, cautioned against the
tendency to freeze into rules of general application what, at
best, are statements applicable to particular fact situations.
Accordingly, the question before us in this appeal is
whether the application claims are patentably distinct from
claim 24 of U.S. Patent No. 5,321,680.
With respect to the rejection before us, the examiner has
stated the following:
All of the claims of the instant application and
patent No. 5,321,680 are drawn to a single embodiment of
7(...continued)
an invention defined in a narrower or more specific claim in
the second patent or application.
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