Appeal No. 1997-3995
Application No. 07/952,303
Furthermore, there is no apparent reason why
applicant was prevented from presenting claims
corresponding to those of the instant
application during the prosecution of the
application which matured into a patent. In re
Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA
1968). See also MPEP § 804 [answer, pages
4-5].
Appellant argues that the examiner has offered nothing
more than his unsupported assertion that improper double
patenting is present here. Appellant points to differences
between the claims of the instant application and the claims
of the Nilssen patent, and appellant argues that these claimed
differences preclude the application of the double patenting
rejection. The examiner does not respond to these arguments.
The examiner has termed this rejection as a judicially
created rejection which may be overcome by the filing of a
terminal disclaimer [answer, page 3]. Accordingly, we view
this rejection as being based on the judicially created
doctrine of obviousness-type double patenting.
As with all rejections, the examiner has the burden of
presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In
making an obvious double patenting rejection, the examiner
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