Appeal No. 1996-0478
Application No. 08/171,769
Generally, an obviousness-type double patenting analysis entails
two steps. First, as a matter of law, a court construes the claim in the
earlier patent and the claim in the later patent and determines the
differences. Georgia-Pacific Corp. v. United States Gypsum Co.,
195 F.3d 1322, 1326, 52 USPQ2d 1590, 1593 (Fed. Cir. 1999). Second,
the court determines whether the differences in subject matter between
the two claims render the claims patentably distinct. Id. at 1327, 52
USPQ2d at 1595. A later claim that is not patentably distinct from an
earlier claim in a commonly owned patent is invalid for obvious-type
double patenting. In re Berg, 140 F.3d 1428, 1431, 46 USPQ2d 1226,
1229 (Fed. Cir. 1998).
Here, appellant argues that the obvious-type (non-statutory) double patenting
rejection required a comparison of the issued claims with the pending claims. (See
brief at page 5.) We agree with appellant. Appellant argues that when a comparison
of the claimed invention is made with the claims of the ‘044 patent, the pending claims
are patentably distinct from those of the ‘044 patent. (See brief at page 9.) We agree
with appellant. Appellant argues that each of the independent claims requires that the
gate insulating layer extend beyond the edge of the gate electrode such that the
exposure to light irradiation is carried out through the part of the gate insulating layer
located outside the gate electrode. (See brief at page 9.) We note that the language
of independent claims 24 and 27 does not specifically recite forming the gate
insulating layer to extend beyond the gate electrode. When asked at the oral hearing,
appellant’s representative argued that the “wherein clause” of claims 24 and 27 clearly
recites that the irradiation is carried out through a part of the gate insulating layer
thereby clearly setting forth that the gate insulating layer extends beyond the gate
electrode over the source and drain regions. We agree with appellant. At the oral
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