Appeal No. 1998-0425 Page 9
Application No. 08/272,527
existing patent claims." See page 6 of the
Examiner's Answer.
The "extension of the monopoly argument is misplaced."
What monopoly is being extended?
The Answer has not established that the claims in
issue are the same invention as the subject matter of the
claims of either of the prior patents. No "same
invention" double patenting rejection has been
maintained. Use of the double patenting rejection tacitly
admits that there are differences between the claims at
issue and those of either one of the parent patents. Nor
has the Answer established that prior art demonstrates
the claims in issue to be an obvious extension of what is
claimed in either one of the prior patents. Thus, the
patent protection that would be afforded by grant of the
claims in issue, and that would continue after the parent
patents expire, is not the same invention as, or an
obvious extension of the protection afforded by, either
parent patent. If the present claims are issued, there
will be no extension of any monopoly previously granted
to applicant.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, and to the respective positions set forth by the
appellants and the examiner. Upon evaluation of all the
evidence before us, it is our conclusion that the decision of
the examiner to reject claims 2, 3 and 11 to 32 under the
judicially created doctrine of obviousness-type double
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