Ex parte WILLIAMS et al. - Page 6




          Appeal No. 1997-4067                                                        
          Application 08/285,324                                                      

          Obviousness-type double patenting must use the claims.  It                  
          appears that the Examiner's rejection is based on an                        
          improper application of In re Schneller, 397 F.2d 350,                      
          158 USPQ 210 (CCPA 1968).                                                   
               Schneller is a very special case of obviousness-type                   
          double patenting.  Schneller applies to those situations                    
          where: (1) the subject matter recited in the claims of the                  
          application is fully disclosed and covered by a claim in the                
          patent (i.e., there has been no improvement or modification                 
          invented after filing and the application claim reads on                    
          subject matter which has been protected by a patent claim);                 
          and (2) there is no reason why appellant was prevented from                 
          presenting the same claims for examination in the issued                    
          patent (i.e., there is no justification for extending the                   
          protection, such as the existence of a restriction                          
          requirement).  The Patent and Trademark Office has applied                  
          the term "non-'obviousness-type'" (as opposed to                            
          "obviousness-type") double patenting to the factual                         
          situation in Schneller in the past, MPEP § 804 (6th ed.                     
          Jan. 1995), pages 800-15, -16, but does not now use this                    



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