Appeal No. 1997-4067
Application 08/285,324
invention was not claimed in the '821 patent or the '328
application. As Appellants point out (Br13-14), they were
not trying to gain an unjustified or improper timewise
extension of the right to exclude by filing separate
applications as in Schneller. Thus, this is not a special
Schneller fact situation.
Because claim 1 of the present application contains
limitations in addition to those in claim 1 of the '821
patent, the Examiner must shown how those limitations are
obvious. It is the usual case that subject matter within
the scope of a claim must be shown to be nonobvious; e.g.,
if BCE represents a telephone and ABCDEE' represents a
touch-tone telephone, it is necessary to demonstrate the
obviousness of the combination with the additional
limitations to ADE'. The obviousness-type double patenting
rejection over the '328 application has the same problems;
i.e., the claims in the present application are narrower
than those in the '328 application. The Examiner has not
addressed the obviousness of limitations (a), (d), and (e)
and, accordingly, has failed to establish a prima facie case
of obviousness-type double patenting over the claimed
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