Appeal No. 1998-1993
Application 08/320,729
The rejection of claims on obviousness-type double
patenting based on the decision in Schneller has recently
found favor with patent examiners. The Board of Patent
Appeals and Interferences has recently published a decision
which discusses in detail the “cover” test of Schneller and
its applicability to obviousness-type double patenting
rejections. See ex parte Davis, 56 USPQ2d 1434 (BPAI 2000).
We adopt the reasoning of the panel in Davis in deciding this
appeal. To put it briefly, the “cover” test of Schneller
should be interpreted as a test to determine whether the
claims of an application and the claims of a patent are
patentably distinct. Thus, in considering the obviousness-
type double patenting rejection before us on this appeal, the
appropriate question is whether claims 44-51 and 53 of this
application are patentably distinct from the claims of Mano.
Claims 44-51 and 53 recite limitations which do not
appear in the claims of the Mano patent. As noted above, the
examiner has made no determinations regarding the obviousness
of these limitations which do not appear in the claims of the
patent. In making a prima facie case of obviousness-type
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