Appeal No. 1998-2051
Application 08/426,814
withdrawn. We disagree with the position of the appellant on
two separate grounds. First of all, the examiner's statement
of the rejection does not refer to a non-obviousness-type
double patenting rejection. While the examiner does refer to
In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968) in his
remarks, the examiner certainly does not refer to this ground
in the statement of the rejection. Having analyzed claim 20
with respect to claim 1 in appellant's prior patent, it is our
conclusion that a double patenting rejection of the
obviousness-type is proper in this instance. The generic
invention of claim 20 is anticipated by the species of the
patented invention. Cf. Titanium Metals Corp. v. Banner, 778
F.2d 775, 227 USPQ 773 (Fed. Cir. 1985), (holding that an
earlier species disclosure in the prior art defeats any
generic claim). The Federal Circuit's predecessor court has
held that without a terminal disclaimer, the species claims
preclude issuance of the generic invention. In re Van Ornum,
686 F.2d 937, 944, 214 USPQ 761, 767. See In re Goodman, 11
F.3d 1046, 1053, 29 USPQ2d 2010, 2016 (Fed. Cir.
1993)("without a terminal disclaimer, the species claim
precludes issuance of the generic application"). Accord, Eli
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