Appeal No. 1997-1281
Application No. 08/317,830
issuance of claims in a second patent which are not
“patentably distinct” from the claims of a first
patent. See In re Longi, 759 F.2d 887, 892, 225 USPQ
645, 648 (Fed. Cir. 1985). The doctrine has also been
phrased as prohibiting claims in the second patent
which define “merely an obvious variation” of an
invention claimed in the first patent. In re Vogel,
422 F.2d 438, 441, 164 USPQ 619, 622 (CCPA 1970).
[Emphasis in original.]
Thus, the threshold issue to be determined here is whether the
subject matter on appeal as represented by claim 1 is patentably
distinct from (or an obvious variation of) the claims of Hodak
‘226, Hodak ‘152, and Edwards ‘242. Our review indicates that
the claims of Hodak ‘226, Hodak ‘152, and Edwards ‘242 would have
rendered the subject matter on appeal obvious to one of ordinary
skill in the art. Specifically, we find that Hodak ‘152 recites
a “water dispersible or water soluble organic gel which is a
continuous system” containing an effective amount of a hazardous
material, 5 to 95% of a water soluble or water dispersible
surfactant and 0.1 to 50% of a gelling agent. See columns 13 and
14, claim 1, in conjunction with columns 15 and 16, claims 15 and
30. The water soluble or water dispersible surfactant may be a
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