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.Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 NextLast modified: November 3, 2007