Appeal No. 1998-0425 Page 4
Application No. 08/272,527
The argument set forth by the appellants on pages 4-7 of
their brief (Paper No. 20, filed March 28, 1997) is as
follows:
Each of the two patents relied upon to support the
rejection ("the cited patents") is a parent case of the
present application. For verification of the parent
status of these two patents, please see page 1 of the
specification of this application and the preliminary
amendment filed in this case on July 11, 1994 attached
hereto as Appendix B.
Obviousness-type double patenting is a judicially
created doctrine that may, in certain instances, prevent
the owner of a pending application from using that
application as a vehicle to obtain claims which vary from
the owner's prior patent claims only in ways that are
obvious in view of the prior art. In re Braithwaite, 154
USPQ 29 (CCPA 1967).
The claims of a parent patent can be used as a basis
("base patent") for a double patenting rejection, but
these claims cannot be treated as "prior art." In re
White and Langer, 160 USPQ 417, 418 (CCPA 1969); In re
Sutherland, 146 USPQ 485, 491 (CCPA 1965) ("the words of
such claims cannot be treated as "prior art"); In re
Bartfeld, 17 USPQ2d 1885, 1888 (Fed. Cir. 1991) ("Double
patenting depends entirely on what is claimed in an
issued patent. Obviousness relates to what is disclosed
in a prior art reference"). Thus, a rejection founded on
a conclusion that claims in an application differ from
claims of a base patent only in an obvious manner must be
supported by citation of an additional reference that
represents prior art relative to the application claims.
Ex parte Oetiker, 23 USPQ2d 1651 (Bd. App. 1990)
dealt with the types of evidence which must be supplied
to support double patenting (obviousness) rejections. In
Oetiker the Board noted that
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