Appeal No. 00-0910
Application No. 08/821,176
selling subject matter corresponding to appealed claims 1 and
10. In short, the fact pattern presented here simply does not
conform to the “unique circumstances” present in Schneller,
such that the rationale used by the court in Schneller in
affirming the examiner’s rejection is not applicable here.
In light of the foregoing, we shall not sustain the
double patenting rejection of the appealed claims.
The 35 U.S.C. § 102(e) Rejection
In rejecting the appealed claims as being anticipated by
the Scharboneau patent, the examiner states that “[b]ased upon
the earlier effective U.S. filing date of the . . .
[Scharboneau patent], it constitutes prior art under 35 U.S.C.
§ 102(e)” (answer, page 3).
We cannot accept this position. As set forth in 35
U.S.C.
§ 120, in order for a claim in a continuing application to
receive the benefit of an earlier filed parent case, the
subject matter of that claim must be disclosed in the manner
provided by the first paragraph of 35 U.S.C. § 112 in the
parent case. That is, in order to claim benefit of earlier
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