Appeal No. 2000-0002
Application 08/848,477
patenting rejection is based on the following (Answer, page
5):
Although the conflicting claims are not identical,
they are not patentably distinct from each other
because the process produces an insoluble hematite
complex (col. 11, line 54) which suggests the
claimed residue.
I agree with the Appellant that the Examiner’s reasoning
simply presumes that the product recited in the appealed
claims is obvious (Brief, page 9). It must be remembered that
the Examiner bears the initial burden of presenting a prima
facie case of unpatentability. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). With respect to
obviousness-type double patenting, the Examiner must
specifically point out the differences between the inventions
defined by the patented claims and the appealed claims (the
conflicting claims). The Examiner must then articulate the
reasons why a person of ordinary skill in the art would
conclude that the invention defined in the appealed claims is
an obvious variation of the invention defined in the patented
claims. The Examiner has not pointed out the differences nor
has the Examiner presented reasons supporting a conclusion
that the differences are obvious variations. Simply declaring
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