Appeal No. 1998-0425 Page 7
Application No. 08/272,527
application are seen to be a combination of the claims of
appellants' two prior patents. It would not seem to be in
the best interests of the public to allow appellants an
extension of the monopoly provided by the two prior
patents merely by combining the claims of the two in a
new application which combines the patentable features of
the existing patent claims.
In response to the answer, the appellants submitted
additional argument on pages 1-4 of their reply brief (Paper
No. 22, filed September 9, 1997) as follows:
The Answer also asserts that
"[s]ince applicants have conceded that each of
the two patents is available as a 'base patent'
in an obviousness-type double patenting
rejection, their use in additive combination in
such a rejection is seen to be proper (emphasis
added)." See page 5 of the Answer.
However, as the Answer itself shows in part in the last
line of the same page, and as page 6 of Applicants'
Appeal Brief shows more completely, this assertion
proceeds from a faulty premise. What Applicants have
agreed is that
". . . in theory either of the cited patents might
have been properly used as a base patent supporting
an obvious-type double patenting rejection . . .
(emphasis added)"
The word "either," in this context, referred to use of
one or the other of the parent patents, but not to use of
both of them together. Applicants have never conceded:
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