Appeal No. 1999-1924 Page 13
Application No. 08/486,545
While Appellant has presented claims of varying scope
such as including the bias coil arm in the instant
application, the actual improvement over the prior art
centers around the inclined loading and unloading of the
disk hub onto the spindle magnet. The other sub-
components, such as the bias coil assembly, door links,
cartridge receiver latch, and parking arm, which are
known in the art per se, have been reconfigured to
cooperate with the cartridge loading mechanism and their
inclusion (in different permutations) in the claims of
the five applications does not create patentably distinct
inventions. Therefore, these claims drawn to a single
disclosed embodiment of the invention are considered to
be mere obvious variant ways of claiming the same
invention within the scope of the meaning of the
judicially created doctrine of "obviousness-type" double
patenting. [Answer, p. 13].
[T]he inventions set forth in the claims of all five
applications are all covering the same invention, are all
drawn to obvious variants of the same single
disclosed embodiment, and are not independent and
distinct from each other. [Answer, p. 42].
It is the Examiner’s position that the claims of the
instant application, the claims of the three issued
patents, and the claims of application 08/482,052 are not
independent and distinct. It is notable that throughout
the prosecution of the earliest filed application, no
requirement for restriction was made, even though claims
drawn to the same scope as now found in the later four
applications were present, because they were all drawn to
the same, single disclosed embodiment of the invention.
The public policy considerations underlying 35 U.S.C. 121
permit separate patents on "independent and distinct"
inventions which are initially "claimed in one
application." [Answer, p. 48].
If ABC and XYZ are independent and distinct
inventions, Appellant can choose to only claim ABC in the
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