Appeal No. 1999-1494
Application 08/596,062
In contrast to the foregoing situation, there is no
dispute that the instant application and the Bernard patent
are commonly owned. With regard to the second double
patenting rejection on appeal, the examiner explains that
[t]he patented and the pending claims set forth the
same invention of substantially the same scope
except the invention of patented claims 1-16 lacks a
groove formed on an embedded portion of a metal
locking wedge. However, it is well known in the art
[as demonstrated by Woods] to employ a groove
(30,31) on an embedded portion of barb (25) in order
to produce a section of reduced barb width and to
reduce the weakening of the flexure region.
In view of Woods, it would have been obvious to one
of ordinary skill in the art to modify the patented metal
locking wedge of claims 1-16 by forming a groove on the
metal locking wedge in order to produce a section of
reduced barb width and to reduce the weakening of the
flexure region [answer, page 4].
The examiner’s analysis here is flawed because it fails
to account for a substantial difference between the
appellants’ claims and the claims in the Bernard patent. The
question in an obviousness-type double patenting analysis is
whether any claim in an application defines merely an obvious
variation of an invention disclosed and claimed in a patent.
See In re Vogel, 422 F.2d 438, 441, 164 USPQ 619, 622 (CCPA
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