Appeal No. 1999-0189
Application No. 08/344,691
Furthermore, there is no apparent reason why
applicant was prevented from presenting claims
corresponding to those of the instant application
during prosecution of the application which matured
into a patent. See In re Schneller, 397 F.2d 350,
158 USPQ 210 (CCPA 1968). See also MPEP § 804. [1]
In response to the examiner’s Schneller-based rejection,
appellant argues (Brief, pages 4 through 14) that Schneller
has been overruled by subsequent cases. According to
appellant (Brief, page 4), the Court of Customs and Patent
Appeals (CCPA) overruled Schneller in In re White, 405 F.2d
904, 906, 160 USPQ 417, 418 (CCPA 1969) by stating “[o]f
course, if the appealed invention is unobvious, there can be
1The examiner’s rationale for the rejection tracks the
reasoning used by the court which is as follows:
While his [Schneller’s] invention can be practiced
in the forms ABCX or ABCY, the greatest advantage
and best mode of practicing the invention as
disclosed is obtained by using both inventions in
the combination ABCXY. His first application
disclosed ABCXY and other matters. He obtained a
patent claiming BCX and ABCX, but so claiming these
combinations as to cover them no matter what other
feature is incorporated in them, thus covering
effectively ABCXY. He now, many years later, seeks
more claims directed to ABCX and ABCXY. Thus,
protection he already had would be extended, albeit
in somewhat different form, for several years beyond
the expiration of his patent, were we to reverse.
Schneller, 397 F.2d at 355-56, 158 USPQ at 216.
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