Appeal No. 2001-0096
Application 09/301,891
This is simply incorrect. The appropriate procedure for a double-patenting
rejection has been laid out by the Federal Circuit as follows:
Thus, we start by examining the claims of the … patent, and by assessing the
prior art references in order to ascertain whether the PTO made out a prima facie
case of obviousness.
Longi, 759 F.2d at 895-896, 225 USPQ at 651. It is proper to combine references in an
obviousness-type double patenting rejection and this argument of Appellant is without
merit.
Appellant criticizes the Examiner’s use of the specification of the secondary
reference in formulating the rejection, stating that (without citation to authority) “For
double patenting, only the claims can be compared and relied upon” (Main Brief, page
5, lines 15-16 and Reply Brief, page 5, lines 24-25). The Examiner notes that the
examination and analysis which occurs in an obviousness-type double-patenting
rejection is an analysis which is “similar in nature to that which transpires when a
rejection under 35 USC 103(a) is made” (Examiner’s Answer, page 10, lines 7-8).
The Examiner is correct. We note that the law on this point is well settled and
clear.
[A] double patenting of the obviousness-type rejection is “analogous to [a failure
to meet] the non-obviousness requirement of 35 U.S.C. §103,” except that the
patent principally underlying the double patenting rejection is not considered prior
art.
Longi, 759 F.2d at 892, n.4, 225 USPQ at 648, n.4. In Longi, the Federal Circuit noted
that the prior commonly-owned patents disclosed titanium compounds, and relied upon
the specifications of four additional prior art references to establish that nitrogen-
containing titanium was an equivalent for catalytic purposes, noting that “a prima facie
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