Appeal No. 1999-1924 Page 11
Application No. 08/486,545
regard, it is clear to us that the court in Schneller was
concerned with whether or not the invention claimed in the
patent was independent and distinct from the invention of the
appealed claims. While the court in Schneller did use a6
"cover" test in making the determination that the invention7
claimed in the patent was not independent and distinct from
the invention of the appealed claims, we are of the view that
the term "cover" was used by the court as synonymous with not
patentably distinct. Thus, under the "cover" test, one would
ask whether the application claims are covered by (i.e., not
patentably distinct from) the claims of the patent. To the
extent that Judge Rich in Schneller was setting forth a
domination theory of double patenting, we note that Judge8
6 See Schneller, 397 F.2d at 354, 158 USPQ at 214-15.
7As set forth in the Manual of Patent Examining Procedure
(MPEP) § 804, one part of the test is whether patent
protection for the invention, fully disclosed in and covered
by the claims of the reference, would be extended by the
allowance of the claims in the later filed application.
8A first patent or application "dominates" a second
patent or application when the first patent or application has
a broad or generic claim which fully encompasses or reads on
an invention defined in a narrower or more specific claim in
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