Appeal No. 1997-3805
Application No. 08/439,602
As shown in the table, the two divisional applications were filed on the same day.
Likewise, the PTO initiated prosecution of the two applications on the same day, imposing
the double patenting rejection from the start. On the other hand, appellant’s initial
response in the phenyl “genus” divisional was submitted approximately two months later
than the initial response in the phenyl diethanolamine “species” divisional, and this pattern
continued throughout prosecution of the two applications. Given this prosecution history,
we see no evidence that the PTO controlled the rate of prosecution in such a way as to
cause the phenyl diethanolamine species claims to issue before the phenyl genus claims.
Thus, we conclude that the second prong of the test has not been satisfied, and a two-way
obviousness analysis is not required in this instance. Inasmuch as there is no dispute that
one-way obviousness exists between the genus and species claims, the rejection of the
claims under the doctrine of obviousness-type double patenting, based on a one-way
analysis, is affirmed.
Obviousness
Claims 24 through 26 and 30 through 43 stand rejected under 35 U.S.C. § 103 as
unpatentable over Baker and Gantzer.
Baker describes a method, composition, and kit for determining occult blood in a
fecal sample. The sample is combined with an oxidizable substrate (guaiac) and a
developer solution comprising ethanol, water, a peroxide, and an enhancer. Hemoglobin
in the sample has peroxidative activity and catalyzes the oxidation of guaiac, resulting in a
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