Appeal No. 1996-2123
Application No. 08/069,458
A double patenting rejection of the obvious type is Aanalogous to [a failure to meet] the
nonobviousness requirement of 35 U.S.C. ' 103@ except that the patent principally underlying the double
patenting rejection is not considered prior art. In re Braithwaite, 379 F.2d 594, 600 n.4, 154 USPQ 29, 34
n.4 (CCPA 1967). Therefore, any analysis employed in an obvious-type double patenting rejection
parallels the guidelines for analysis of a 35 U.S.C. ' 103 obviousness determination. In re Braat, 937 F.2d
589, 592-93, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991); In re Longi, 759 F.2d 887, 892 n.4, 225 USPQ 645,
648 n.4 (Fed. Cir. 1985).
Because the examiner failed to analyze this obviousness-type double patenting rejection in a
manner which parallels the guidelines for analysis of a 35 U.S.C. ' 103 obviousness determination, we
vacate the examiner=s rejection in view of a new ground of rejection under 37 C.F.R. ' 1.196(b).
New ground of rejection under 37 C.F.R. ' 1.196(b):
Claim 55 is rejected under the judicially created doctrine of obviousness-type double patenting as
being unpatentable over (1) claims 1, 3 and 5, or in the alternative, over (2) claims 3-5 of >162. Although
the conflicting claims are not identical, they are not patentably distinct from each other for the following
reasons.
Claim 55 is drawn to a mutant strain of Acetobacter microorganism selected from the group
consisting of strains ATCC Nos. 53264, 53263 and 53524. There are two possible interpretations of this
claim:
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