Appeal No. 1998-0941 Page 14
Application No. 08/226,660
ABCXY (see Schneller, 397 F.2d at 356, 158 USPQ at 216: "Anyone
undertaking to utilize what [Schneller] disclosed in the patent
. . . , in the preferred and only form in which he described
these clips [ABCXY] would thus run afoul of a still unexpired
patent if the appealed claims [to ABCXY and ABCY] were
allowed."); and (2) the fact that the patent had issued eight
years before, which made it appear that he was seeking to
impermissibly extend the period of patent protection. Schneller
should be limited to similar factual situations.
Therefore, it is the Examiner's duty to present obviousness
reasoning to address the differences between the patent claim and
the claimed subject matter. The Examiner cannot just rely on the
fact that the application recites elements in addition to those
recited in the patent claims because this confuses domination
with double patenting. That is, if the patent (and the
application) disclose A, B, C, X, Y, and Z, and the patent claims
ABC, it is not sufficient to say that an application claim to
ABCXYZ is unpatentable for double patenting because ABC covers
ABCXYZ, and because ABCXYZ could have been claimed.
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007