Appeal No. 1998-1993
Application 08/320,729
double patenting, an examiner has the same burden as when an
obviousness rejection under 35 U.S.C. § 103 is made. Thus, at
a minimum the examiner is required to identify the differences
between the applications claims and the claims of the patent
and to provide a reason why these differences would have
resulted from an obvious modification to the claims of the
patent. The examiner’s failure to address the differences
between the appealed claims and the claims of the Mano patent,
and the examiner’s failure to address the obviousness of these
differences result in a failure by the examiner to establish a
prima facie case of unpatentability. Therefore, we do not
sustain any of the examiner’s rejections of claims 44-51 and
53 based on obviousness-type double patenting.
We now consider the rejection of the claims under 35
U.S.C. § 103. In rejecting claims under 35 U.S.C. § 103, it
is incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
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