Ex parte WILLIAMS et al. - Page 10




          Appeal No. 1998-0671                                                        
          Application 08/285,328                                                      

          "non-'obviousness-type'" (as opposed to "obviousness-type") double          
          patenting to the factual situation in Schneller in the past, MPEP           
          § 804 (6th ed. Jan. 1995), pages 800-15, -16, but does not now use          
          this label, MPEP § 804 (7th ed. July 1998), pages 800-21 through            
          800-23.                                                                     
               The second Schneller condition is not met because the present          
          application, the '324 application, and the '326 application were            
          filed on the same day.  That is, there is no issue here about               
          Appellants filing an application, getting protection for an                 
          invention, and then some years down the road filing another                 
          application claiming subject matter that was clearly covered by the         
          claims of the first application (e.g., a best mode embodiment) for          
          the purpose of improperly extending the right to exclude.  Because          
          the second condition is not met, it is not necessary to address the         
          first condition.                                                            
               To prove obviousness-type double patenting, the Examiner must          
          show why the presently claimed subject matter would have been obvious       
          over claimed subject matter of the '324 application or the '326             
          application ('821 patent).  This has not been done since the Examiner       
          does not analyze the claims of the '324 application or the '326             
          application ('821 patent).  Appellants' claim analysis (e.g.,               

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