Appeal No. 1997-3805
Application No. 08/439,602
patent term for the presently claimed genus, which is not, in fact, separate and distinct from
the patented genus.
There is no dispute between appellant and the examiner that the presently claimed
genus is obvious over the patented species, but the patented species is not obvious over
the claimed genus. Examiner’s Answer, page 9. Thus, in our view, the dispositive issue is
whether one-way obviousness is sufficient basis for the examiner’s rejection of claims 24
through 26 under the doctrine of obviousness-type double patenting.
According to appellant, the examiner must apply the two-way obviousness analysis
described in In re Braat, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir.1991) because the
two divisional applications were filed concurrently. Inasmuch as the patented claims are
directed to a species which falls within the scope of the generic claims of this application,
appellant argues that, in keeping with Braat, the examiner must determine not only whether
the genus is an obvious modification of the species, but whether the species is also an
obvious and trivial modification of the genus, and “submits that such a showing could not
be made.” Brief, pages 4 and 5.
Nevertheless, the examiner does not concede that a two-way test of obviousness is
required under the circumstances. In our judgment, the examiner is correct in applying the
one-way test.
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007