Appeal No. 1996-0478
Application No. 08/171,769
It appears to us that the examiner's rejection is based on an improper
application of Schneller.1 Schneller is a very special case of "obviousness-type"
double patenting.2 The United States Patent and Trademark Office has applied the
term "non-obviousness-type" (as opposed to "obviousness-type") double patenting to
the factual situation in Schneller in the past, MPEP § 804 (6th ed. Jan. 1995),
1 Schneller is a rather unusual case in that there was no majority opinion
because only Judges Rich and Smith joined the principal opinion, while Judges Worley
and Kirkpatrick concurred in the result and Judge Almond wrote a concurring opinion.
Thus, the principal opinion therein is of doubtful controlling precedent. As Judge Rich
observed in In re Kaplan, 789 F.2d 1574, 1578, 229 USPQ 678, 682 (Fed. Cir. 1986):
The development of the modern understanding of "double patenting"
began in the Court of Customs and Patent Appeals (CCPA) about the time of
In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963), a rather unusual
case is [sic, in] that there was no majority opinion because only two judges
joined each of the two principal opinions. Neither opinion therein, therefore, can
be regarded as controlling precedent in this court.
2 All types of double patenting which are not "same invention" double patenting
have come to be referred to as "obviousness-type" double patenting. See In re Van
Ornum, 686 F.2d 937, 942-43, 214 USPQ 761, 766 (CCPA 1982), which states in
discussing cases leading to the restatement of the law of double patenting set forth in
In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 621-22 (CCPA 1970):
numerous cases were considered in which application claims were
directed to mere obvious modifications of, or improvements on, inventions
defined in the claims of patents already issued to the same inventors, or
to common assignees, and it had been decided that they might be allowed
to go to patent if the applicants filed terminal disclaimers. We classified
these as "obviousness type double patenting." This latter classification
has, in the course of time, come, somewhat loosely, to indicate any
"double patenting" situation other than one of the "same invention" type.
See also General Foods Corp. v. Studiengesellschaft Kohl mbH, 972 F.2d 1272,
1279-80, 23 USPQ2d 1839, 1844-45 (Fed. Cir. 1992).
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