Appeal No. 1996-0478
Application No. 08/171,769
pages 800-15, -16, but does not now use this label, MPEP § 804 (7th ed., Rev. 1, Feb.
2000), pages 800-21 through 800-23 (classifying double patenting as either "same
invention" type or "non-statutory-" type where "non-statutory-type" could include a
rejection which is not the usual "obviousness-type" double patenting). MPEP § 804
(7th ed., Rev. 1, Feb. 2000) now provides that "non-statutory-type" double patenting of
the Schneller-type applies to those situations where: (1) the subject matter recited in
the claims of the application is fully disclosed and covered by a claim in the patent
(i.e., there has been no improvement or modification invented after filing and the
application claim reads on subject matter which has been protected by a patent claim);
and (2) there is no reason why the appellants were prevented from presenting the
same claims for examination in the issued patent (i.e., there is no justification for
extending the protection, such as the existence of a restriction requirement); and (3) no
terminal disclaimer has been filed.
The condition of Schneller that the subject matter recited in the claims of the
application is fully covered by a claim in the patent is not satisfied in this instance as
clearly shown by the appellant’s comparison of patent claims 1-5 and the claims under
appeal (brief, pp. 10 and 11).
It is our view that insofar as Schneller is concerned, this case does not, as it
appears the examiner would have us believe, stand for the proposition that simply
because the subject matter recited in the claims on appeal was disclosed in the
application from which the patent matured and the events which gave rise to the
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