Appeal No. 1998-0425 Page 6
Application No. 08/272,527
will be free to use not only the invention claimed
in the patent but also modifications or variants
which would have been obvious to those of ordinary
skill in the art at the time the invention was made.
Id. at 648.
A parent patent, from which a rejected application
derives internal priority under 35 U.S.C. § 120, does not
represent prior art. Prior art, according to 35 U.S.C. §
102, must have been available as a reference at the time
the invention was made. In re Gieger and Wilfert, 165 USPQ
572, 574-575 (CCPA 1970). Thus, the claims of the '601 are
not "prior art" for the purpose of supporting an
obviousness-type double patenting rejection based upon the
claims of the '620 patent. The '601 patent was filed on
October 12, 1989 as a continuation of the '620 patent
(which issued on December 26, 1989). The '601 patent issued
on July 12, 1994 having claims based upon the same
disclosure as that of the claims of the '620 base patent.
Clearly, the claims of the '601 patent do not represent
evidence of what was known to others "at the time the
invention was made", as required by Longi.
The examiner's response to the appellants' argument set
forth by the examiner on pages 5-6 of the answer (Paper No. 21,
mailed July 9, 1997) is as follows:
The case law citations furnished by appellants have
been carefully considered by the examiner, but none of
them seem to duplicate the situation in the instant
application. Since appellants concede that "...either of
the cited patents might have been properly used as a base
patent supporting an obviousness-type double patenting
rejection...", why can they not be used in additive
combination to support an obviousness-type double patent
rejection? The disclosure and claims of the instant
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