Appeal No. 1998-0941 Page 13
Application No. 08/226,660
In my opinion, Schneller does not support the proposition
that there is "obviousness-type" double patenting per se (i.e.,
without any obviousness analysis) whenever the application claim
recites elements in addition to those recited in the patent
claims. Domination (when one claim reads on or "covers" a later
claim) is not, per se, double patenting. See In re Kaplan,
789 F.2d 1574, 1577, 229 USPQ 678, 681 (Fed. Cir. 1986). As
stated in In re Zickendraht, 319 F.2d 225, 232, 138 USPQ 22, 27
(CCPA 1963) (Rich, J., concurring):
To sum it up, the operation of the rule [of
obviousness-type double patenting] is that claims to
inventions closely related to the invention claimed in the
patent and not patentably distinguishable therefrom must be
included in the same patent unless the applicant has been
forced to make them in a separate application by a
requirement of restriction, in which case section 121 of the
statute acts to waive the rule.
Applicants are not required to claim every invention that could
be claimed in a single application, which is what a mechanical
application of Schneller would essentially require.
Schneller involves two special factual circumstances which
limit its general application: (1) the preferred embodiment and
best mode of the clip were disclosed to be ABCXY, which indicated
that the patent claim ABCX intended to protect the combination
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