Appeal No. 1999-1447
Application No. 08/446,316
1.141" which “prevents an applicant from claiming two or more
‘independent and distinct’ inventions in a single
application.”
A limitation-by-limitation comparison of the claims on
appeal to the claims in the patent is needed to determine
whether the two sets of claims present “independent and
distinct” inventions. The examiner has not made a “side by
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 [5]
appealed claims.” Schneller, 397 F.2d at 354, 158 USPQ at
214. Accordingly, appellant argues (Brief, page 22) that:
It is clear that the appealed claims and the
claims of the ‘131 patent do not form a single
general inventive concept. The appealed claims [18]
recite apparatuses and methods relating to the
reproduction of information from a disc. The
5In 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).
14
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: November 3, 2007