Appeal No. 2000-2008
Application No. 09/227,903
claims 10 and 11 because it is capable of such use. It is
well settled that the recitation of an intended new use for an
old product does not make a claim to that old product
patentable. In re Schreiber, supra. Cf. In re Casey, 370
F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967).
Accordingly, rejection (1) of claims 6 to 11 will be
sustained.
Rejection (2)-Double Patenting
On page 2 of the final rejection and page 4 of the
answer, the examiner's statement of this rejection is:
Claims 1-11 are rejected under the judicially
created doctrine of obviousness-type double
patenting as being unpatentable over claims 1, 3,
and 4 of U.S. Patent No. 5,897,323. Although the
conflicting claims are not identical, they are not
patentably distinct from each other because they
derive from the same disclosure, contain slight
variations on the same limitations, and could have
been claimed in the original application.
This statement is not sufficient to enable this Board to
determine whether or not the rejection should be sustained.
Therefore, pursuant to 37 CFR § 1.196(a), this case is
remanded to the examiner to amplify the basis of the
rejection. In so doing, the examiner should, for each of
claims 1 to 11, (1) compare that claim with the single claim
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