Appeal No. 1999-1447
Application No. 08/446,316
judicially created doctrine of double patenting over
claims 1-12 of U.S. Patent No. 4,583,131 since the
claims, if allowed, would improperly extend the
“right to exclude” already granted in the patent.
The subject matter claimed in the instant
application is fully disclosed in the patent and is
covered by the patent since the patent and the
application are claiming common subject matter, as
follows: a disc playing apparatus for reproducing
information from a disc storing at least video
picture information and audio information having
means for scanning the disc to produce the picture
information and the audio information and a memory
for storing the audio signal outputted from the
scanning means. The subject matter recited in
claims 43 and 45-54 of this patent application-
“comprising ABCY” - is fully disclosed in the patent
4,583,131. The allowance of these claims would
extend the rights [sic] to exclude already granted
in claims 1-12 of the patent - that right to exclude
covering the device “comprising ABCX”. The
transitional phrase “comprising” does not exclude
the presence of elements other than A, B, C, and X
in the claims of the patent. Because of the phrase
“comprising” the patent claims not only provides
[sic] protection to the elements ABCX claimed in the
patent but also extends [sic] patent coverage to the
disclosed combination - ABCXY. Likewise, if
allowed, the claims of this application, because of
the phrase comprising, not only would provide patent
protection to the claimed combination ABCY but would
also extend patent coverage to the combination ABCXY
- already disclosed and covered by the claims in the
patent. Thus, the controlling fact is that patent
protection for the device, fully disclosed in and
covered by the claims of the patent, would be
extended by the allowance of the claims in this
application.
Furthermore, there is no apparent reason why
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