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 12Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 NextLast modified: November 3, 2007