Appeal No. 1999-1447 Application No. 08/446,316 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. [2] In response to the examiner’s Schneller-based rejection, appellant argues (Brief, pages 7 through 17) that Schneller has been overruled by subsequent cases. According to appellant (Brief, page 8), 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 2The 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. 9Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 NextLast modified: November 3, 2007