Appeal No. 1999-0189
Application No. 08/344,691
on Schneller until it was addressed in the 6th edition of the
MPEP does not affect the use of Schneller as a basis for
instituting a double patenting rejection when the facts in an
application support such a rejection. When Schneller is
properly applied, it will not “cast doubt over the validity of
an untold number of issued patents, create disputes, and
invite litigation” (Brief, page 13).
According to appellant (Brief, page 14), “[t]he second
step of the Schneller-based double patenting analysis inquires
whether there was a reason why an applicant was prevented from
presenting the later-examined claims in the prior
application.” Appellant argues (Brief, page 14) that he “was
indeed prevented from doing so by operation of Title 37, Code
of Federal Regulation, section 1.141" which “prevents an
applicant from claiming two or more ‘independent and distinct’
inventions in a single application.”
A limitation-by-limitation comparison of the claims on
appeal to the claims in the patent is needed to determine
whether the two sets of claims present “independent and
distinct” inventions. The examiner has not made a “side by
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