Appeal No. 00-0910
Application No. 08/821,176
during prosecution of the application which matured
into a patent. In re Schneller, 397 F.2d 350, 158
USPQ 210 (CCPA 1968). See also MPEP § 804. The
examiner notes that the patent disclosure provides
full support for the claims of the instant
application, i.e. the claims of the instant
application read on at least figure 5 and 6A of the
patent.
Appellants argue on pages 8-10 of the main brief that the
present case is distinguishable from In re Schneller in that
here there are several reasons why claims corresponding to the
appealed claims could not have been presented during
prosecution of the application that matured into the
Scharboneau patent. Specifically, appellants argue that (1)
the claims in the present application will not lead to an
unjustified time wise extension of the right to exclude
granted in the Scharboneau patent because any claims allowed
from the present application will expire on the same date as
the claims of the Scharboneau patent, (2) “the present
application is exactly the ‘example’ set forth in In re
Schneller of when two separate applications are appropriate
[because] [t]he inventors of the present application are not
the inventors of the [Scharboneau] patent” (main brief, page
9), and (3) the Scharboneau patent and the present application
6
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