Appeal No. 1999-1447
Application No. 08/446,316
only recognized bases for a double patenting rejection.” We
agree with appellant’s argument. Schneller fits within the
latter type of double patenting rejection, and a “Schneller-
based double patenting [rejection] is legally viable” (Brief,
page 11).
Appellant argues (Brief, page 18) that “[i]f Schneller
was good law, why did the U.S.P.T.O. fail to apply it between
1970 and 1994?” The mere fact that the Office failed to rely
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 18).
According to appellant (Brief, page 20), “[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 20) that he “was
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