Appeal No. 1998-2045
Application 08/402,374
to one of ordinary skill in the art the obviousness of the
invention as set forth in claims 23-32. Accordingly, we
reverse.
We consider first the rejection of claims 23-32 based on
the grounds of double patenting. Although the examiner has
nominally designated this rejection as being based on the
judicially created doctrine of obviousness-type double
patenting, the examiner has made no obviousness determinations
of the appealed claims with respect to the claims of Mano.
Instead, the examiner has asserted that obviousness
determinations did not have to be considered because, in the
examiner’s view, these appealed claims fall within the ambit
of In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968).
Based on the examiner’s interpretation of Schneller, the
examiner finds that appealed claims 23-32 of this application
cover subject matter “already adequately claimed and covered
in [Mano]” [answer, page 6].
Appellants do not discuss the application of Schneller to
the facts of this case. Instead, appellants simply argue that
the appealed claims are not unpatentable under the doctrine of
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