Appeal No. 1998-0671
Application 08/285,328
hypothetical claim (EA8), since the Examiner judges the
obviousness-type double patenting over these limitations, rather than
actual claims, it is fair to say that the Examiner has drafted a
hypothetical claim. The hypothetical claim does not represent the
actual claims of the present application, the '324 application, or
the '821 patent. Obviousness-type double patenting analysis must use
the actual claims. Therefore, the Examiner's analysis based on
common disclosure is in error.
It appears that the Examiner's rejection may be based on an
improper application of In re Schneller, 397 F.2d 350, 158 USPQ 210
(CCPA 1968). Schneller is a very special case of obviousness-type
double patenting. Schneller 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 appellant was
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). The
U.S. Patent and Trademark Office has applied the term
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