Appeal No. 1998-0425 Page 5
Application No. 08/272,527
[2] The test for obviousness-type double patenting
is ... whether the claimed invention in the subject
application would have been obvious from the subject
matter of the claims in the other case ... in light
of the prior art. See In re Longi, 774 F.2d 1100,
225 USPQ 645 (Fed. Cir. 1985).
In the present case, it is evident that the claims
in appellant's copending application differ from
claims 1 through 7 and 14 through 20 in the subject
application by reciting, inter alia, the hook means
for closing the clamping band. The Examiner has
cited no prior art whatever for showing that this
difference amounts to an obvious modification of the
invention defined in claims 1 through 7 and 14
through 20. For these reasons, the double patenting
rejection ... cannot stand.
Oetiker at 1654 (emphasis added). Oetiker and Longi both
appear to stand for the proposition that prior art must
be cited to support an obviousness-type double patenting
rejection. Absent citation of prior art in addition to
the base patent, there is no factual basis for the
rejection.
Although in theory either of the cited patents might
have been properly used as a base patent supporting an
obvious-type double patenting rejection, since each of
the two patents relied upon to support the rejection is a
parent case of the present application, neither of them
is available as "prior art" under 35 U.S.C. § 103 in the
present instance.
Longi indicates why a parent patent may not serve as
the prior art to be used in conjunction with a base
patent to support an obviousness-type double-patenting
rejection.
The public should . . . be able to act on the
assumption that upon the expiration of the patent it
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