Appeal No. 1996-2123
Application No. 08/069,458
Any analysis employed in an obviousness-type double patenting rejection must parallel the
analysis used to determine obviousness under 35 U.S.C. ' 103.
At page 4 of the Examiner=s Answer, the examiner states:
Although the conflicting claims are not identical, they are not patentably
distinct from each other because the product of the patent does not
patentably differ from the product claimed in claim 55, note the claims of
the patent. Further, both the product of the patent and the product of
claim 55 are produced by the same process wherein agitation is used in a
fermentation process to form reticulated cellulose.
Note the examiner=s statement, that A[f]urther, both the product . . . produced by the same process
wherein agitation is used in a fermentation process to form reticulated cellulose.@ The claims of >162 are
directed to biologically pure strains of Acetobacter. Appealed claim 55 is directed to a mutant strain of
Acetobacter. Therefore, it is unclear why the examiner references Aa fermentation process to form
reticulated cellulose.@ The examiner recognizes at page 14 of the Examiner=s Answer, that A[a]ppellants
argue that the strains of >162 are different from the claimed mutant strains since the claimed biologically
[pure] strains of >162 are not the mutant(s) as claimed herein.@ However, the examiner maintained the
rejection concluding, Athe claimed mutants appear to not differ significantly from the patented strains of
>162.@ See, Examiner=s Answer, page 14. Missing from the examiner=s explanation is a factual analysis to
support this conclusion.
In the bridging paragraph of pages 33-34 of appellants= Brief, appellants state:
In the Final Rejection mailed January 26, 1993 (07/683,304, Paper
10). Claim 55 was rejected under 35 U.S.C. ' 101 for double patenting
and claiming the same invention as Claims 1 through 5 of U.S. Patent
5,079,162 . . . . The [e]xaminer has stated that reasons for making the
obviousness-type double patenting rejection are the same as her reasons
for making the rejection under 35 U.S.C. ' 101, i.e., that she sees no
difference between the claimed subject matter in claim 55 and the claims
in U.S. Patent No. 5,079,162.
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