Appeal No. 1998-0425 Page 11
Application No. 08/272,527
prohibition of double patenting of the same invention is based
on 35 U.S.C. § 101. In re Goodman, 11 F.3d 1046, 1052, 29
USPQ2d 2010, 2015 (Fed. Cir. 1993); Longi, 759 F.2d at 892,
225 USPQ at 648. By "same invention," the court means
"identical subject matter." Longi, 759 F.2d at 892, 225 USPQ
at 648; In re Vogel, 422 F.2d 438, 441, 164 USPQ 619, 621
(CCPA 1970). A good test, and probably the only objective
test, for "same invention," is whether one of the claims would
be literally infringed without literally infringing the other.
If it could be, the claims do not define identically the same
invention. Vogel, 422 F.2d at 441, 164 USPQ at 621-22
(halogen is not the "same" as chlorine; meat is not the "same"
as pork). All types of double patenting which are not "same
invention" double patenting have come to be referred to as
"obviousness-type" double patenting. See In re Van Ornum, 686
F.2d 937, 942-43, 214 USPQ 761, 766 (CCPA 1982), which states
in discussing cases leading to Vogel's restatement of the law
of double patenting, 3,4
3 Vogel, 422 F.2d at 441-42, 164 USPQ at 621-22.
4Judge Rich in Kaplan, 789 F.2d at 1579, 229 USPQ at 682,
(continued...)
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