Appeal No. 2001-0252
Application 08/760,652
1 of Patent No. 5,430,964 discloses all of the structure
defined by the applicant in claims 21-23 and 30-32 except
for detecting only two transparencies which is considered
to be within one skilled in the art to modify claim 1 of
Patent No. 5,430,964.
It is of great interest to us that the single difference
pointed to by the examiner (i.e., detecting only two
transparencies) is found only in independent claim 21 on
appeal and does not appear in independent claims 23, 30 and 31
which are also subject to this ground of rejection. Thus, we
are at a loss to understand exactly how the examiner has
reached the conclusion that appellant’s claims 23 and 30
through 32 are unpatentable under the judicially created
doctrine of obviousness-type double patenting, since the
examiner has identified no differences between those claims
and claim 1 of U.S. Patent No. 5,430,964 and has provided no
statement as to what is considered to have been obvious.
Thus, the examiner has not established a prima facie case of
obviousness-type double patenting. In reviewing claims 23 and
30 through 32, we note that there are clearly differences
between the subject matter covered by those claims and the
subject matter set forth in claim 1 of U.S. Patent No.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007