Appeal No. 1997-0186
Application No. 08/314,568
[A] rejection based upon double patenting of the
obviousness type . . . is a judicially created
doctrine grounded in public policy (a policy
reflected in the patent statute) rather than based
purely on the precise terms of the statute. The
purpose of this rejection is to prevent the
extension of the term of a patent, even where an
express statutory basis for the rejection is
missing, by prohibiting the issuance of the claims
in a second patent not patentably distinct from the
claims of the first patent. . . . Fundamental to
this doctrine is the policy that:
The public should * * * be able to act on
the assumption that upon the expiration of
the patent it will be free to use not only
the invention claimed in the patent but
also modifications or variants which would
have been obvious to those of ordinary
skill in the art at the time the invention
was made, taking into account the skill of
the art and the prior art other than the
invention claimed in the issued patent.
(Emphasis in original.)
[Citation omitted.] Under that facet of the
doctrine of double patenting, we must direct our
inquiry to whether the claimed invention in the
application for the second patent would have been
obvious from the subject matter of the claims in the
first patent, in light of the prior art.
See also In re Braithwaite, 379 F.2d 594, 600, 154 USPQ 29, 34
(CCPA 1967) (rejection based on obviousness-type double
patenting examines whether the difference between what is
claimed in application to Braithwaite and what is claimed in
the patent to Braithwaite is only such a difference or
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