Appeal No. 2000-0002
Application 08/848,477
subject matter would have been obvious from appellant's
earlier issued patent claims. Nevertheless, in In re Berg, 140
F.3d 1428, 1431, 46 USPQ2d 1226, 1229 (Fed. Cir. 1998) the
court held that a claim is properly rejected under this
doctrine when it is not patentably distinct from subject
matter claimed in a commonly owned patent. The court observed
that the test is generally a one-way test, requiring only a
determination of the obviousness of the application claims
over the earlier issued patent claims. Under certain unusual
circumstances not found here, the court recognized that a two-
way test may sometimes apply. But the two-way test was
characterized as "a narrow exception to the general rule of
the one-way test." Id.
We find that appellant here is entitled to the one-way
test because there are no unusual circumstances which would
trigger the two-way test being applied. Appellant made a
conscious, deliberate prosecutorial decision in the parent
application not to pursue the appeal of the product-by-process
claims but to allow the process claims to issue and to re-file
a continuing application on the subject matter of the product-
by-process. Because appellant has conceded that the products
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