Appeal No. 1998-2045 Application 08/402,374 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 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 application 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 23-32 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 7Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007