Appeal No. 2000-1980
Application No. 08/476,980
The rejections under 35 U.S.C. § 101
The examiner has rejected claims 1, 6, 7, and 31 under 35 U.S.C. § 101 as
claiming the same invention as claimed in claims 10, 11, and 12 of U. S. Patent
4,933, 410 to Okrongly and claims 1, 2, 3, and 4 of U.S. Patent 5,484,852 to Clark. With
respect to Okrongly, the examiner urges that "[t]he 'polystyrene surface' of [the] patent does
not distinguish over [the] 'article' of present claims and/its surface." (Answer, page 3). As
to Clark, the examiner urges that "[t]he polar groups recited in patent includes the nitrogen-
containing group in claimed subject matter." (Answer, page 4). As noted by appellant,
"[s]tatutory double patenting requires that the claims be directed to the same invention."
(Brief, page 6-7). In re Vogel, 422 F.2d 438, 441, 164 USPQ 619, 621 (CCPA 1970).
Claims 10, 11, and 12 of Okrongly do not require that the article have "at least 5% of the
aryl groups in said polyaryl addition polymer to a depth of 100D . . . substituted with a
functionalized nitrogen-containing group." (Appealed Claim 1). Thus, the claims of
Okrongly are not directed to the same invention as appealed claims 1, 6, 7, and 31.
Claims 1 - 4 of Clark require that the aryl group be substituted with "a polar group."
Appealed claim 1 requires the aryl groups of the polyaryl addition polymer to be
substituted with an "nitrogen-containing group." While there may be overlap in the defined
substituents, the claim limitation relating to this substituent are not the same as indicated
by appellant's discussion at page 7 of the Appeal Brief.
Thus, claims 1, 6, 7, and 31 are not directed to the same invention as claimed in
either Okrongly or Clark. Therefore, the rejection of these claims under 35 U.S.C. § 101 is
reversed.
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