Appeal No. 00-0910
Application No. 08/821,176
are not commonly assigned, such that “[t]he claims in the
present application could not have been made in the
[Scharboneau] patent. Thus, it was necessary to claim the
inventions in separate applications” (main brief, page 10).
In the position we take infra in deciding the propriety
of the examiner’s double patenting rejection, it is not
necessary for us to decide whether any of the above noted
arguments constitute a sufficient reason why claims
corresponding to the appealed claims could not have been
presented during prosecution of the application that matured
into the Scharboneau patent. Accordingly, we need not address
the above noted arguments.
The discussion in the MPEP concerning Schneller-type
double patent rejections indicates that rejections of this
type are based on certain “unique circumstances.” Taking a
closer look at the facts in Schneller, the applicant therein
had stated that the preferred and best mode of practicing the
invention was a combination of elements the court designated
ABCXY, of which the combination ABC was old. In the patent
that formed the basis for the rejection, the claims were
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