Appeal No. 1998-0425 Page 15
Application No. 08/272,527
Goodman, 11 F.3d at 1052-53, 29 USPQ2d at 2015-16 and Van
Ornum, 686 F.2d at 942-43, 214 USPQ at 766-67, a test similar
to the "one-way" test was applied. Under this test, the
examiner asks whether the application claims are generic to
any species set forth in the patent claims. In In re
Dembiczak, 175 F.3d 994, 1002, 50 USPQ2d 1614, 1619-20 (Fed.
Cir. 1999) and Braat, 937 F.2d at 593-94, 19 USPQ2d at
1292-93, a "two-way" test was applied. Under this "two-way"
test, the examiner asks whether the application claims are
obvious over the patent claims and also asks whether the
patent claims are obvious over the application claims.
From our review of the above-cited case law and other
cases involving an "obviousness-type" double patenting
rejection we have been unable to discover any support for the
type of rejection before us in this appeal (i.e., an
"obviousness-type" double patenting rejection wherein two
claims from separate patents, neither of which are prior art
to the appellants, are combined together). In fact, the case
law clearly demonstrates that the examiner must establish that
each application claim being rejected under "obviousness-type"
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