Appeal No. 1999-0189
Application No. 08/344,691
side comparison of the reference and application claims.” See
MPEP § 804 II B(2), page 800-21. Notwithstanding the lack of
such an analysis by the examiner, the Court has indicated that
appellant should establish that "the invention claimed in his
patent is independent and distinct from the invention of the [4]
appealed claims.” Schneller, 397 F.2d at 354, 158 USPQ at
214. Accordingly, appellant argues (Brief, pages 16 and 17)
that:
It is clear that the appealed claims and the
claims of the ‘131 patent do not form a single
general inventive concept. For example, the [15]
appealed recording claims relate to an apparatus and
method of producing a signal used for forming a
record disc. In contrast, claims 1-6 of the ‘131
patent recite an apparatus for playing a record
disc, and claims 7-12 of that patent recite a method
for playing a record disc. Clearly then, an
apparatus and method for producing signals that are
used to form a record disc and an apparatus and
method for playing a record disc do not form a
single general inventive concept. A recording
device and method produce signals used for storing
information on the record disc. In contrast, a
playback device and method is directed to a
4In other words, a determination has to be made whether
there is a "patentable difference" or a "patentable
distinction" between the claims of the patent and the claims
on appeal. General Foods Corp. v. Studiengesellschaft Kohle
mbH, 972 F.2d 1272, 1278-79, 23 USPQ2d 1839, 1844 (Fed. Cir.
1992).
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