Appeal No. 1999-1924 Page 10
Application No. 08/486,545
Dembiczak, 175 F.3d 994, 1002, 50 USPQ2d 1614, 1619-20 (Fed.
Cir. 1999) and Braat, 937 F.2d at 593-94, 19 USPQ2d at
1292-93, a "two-way" test was applied. Under this "two-way"
test, the examiner asks whether the application claims are
obvious over the patent claims and also asks whether the
patent claims are obvious over the application claims.
We recognize that the examiner's rejections are based in
large measure on the decision of the court in In re Schneller,
397 F.2d 350, 158 USPQ 210 (CCPA 1968). However, it is our 5
view that Schneller does not set forth another test for
determining "obviousness-type" double patenting. In that
5 Schneller is a rather unusual case in that there was no
majority opinion because only Judges Rich and Smith joined the
principal opinion, while Judges Worley and Kirkpatrick
concurred in the result and Judge Almond wrote a concurring
opinion. Thus, the principal opinion therein is of doubtful
controlling precedent. As Judge Rich observed in Kaplan, 789
F.2d at 1578, 229 USPQ at 682,
[t]he development of the modern understanding of
"double patenting" began in the Court of Customs and
Patent Appeals (CCPA) about the time of In re
Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963), a
rather unusual case is [sic, in] that there was no
majority opinion because only two judges joined each of
the two principal opinions. Neither opinion therein,
therefore, can be regarded as controlling precedent in
this court.
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