Appeal No. 1998-0425 Page 8
Application No. 08/272,527
(a) that either of these parent patents constituted
prior art,
(b) that use of both parent patents in combination
was proper,
(c) that the combination of these patents satisfied
the requirement, set forth in prior decisions of
this Honorable Board, for citation of prior art
to support an obviousness double patenting
rejection, or
(d) that the parent patents, singly or in
combination, demonstrated the obviousness of the
claimed subject matter; no proper double-
patenting obviousness rejection having been
made, it was not incumbent on Applicants to
provide obviousness arguments.
Proceeding from the above-described faulty premise,
the Answer posed the following question concerning the
parent patents:
"[W]hy can they not be used in additive combination
to support an obviousness-type double patent
rejection?" See page 6 of the Examiner's Answer.
Use of such combinations in lieu of prior art violates
the requirements of such precedents as Oetiker and
Longi, cited in Applicants' Brief, which have held that
prior art must be provided to support double patenting
obviousness rejections.
The Examiner also argues that
"[t]he disclosure and claims of the instant
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
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007