Appeal No. 1998-1664
Application No. 08/323,982
As indicated above, appealed claims 1 through 8, 19
through 21, 23, 28 through 33, 44 through 47, 51 through 62,
75 through 77, 81 through 83, 101, and 102 stand rejected
under the judicially created doctrine of obviousness-type
double patenting as unpatentable over claims 1 through 80 of
the Adams patent.
Separately, the same appealed claims stand rejected under the
same legal basis as unpatentable over claims 1 through 69 of
the Blystone patent.
The examiner’s position is stated as follows:
Although the conflicting claims [i.e., the claims of
the Adams ‘346 patent and the claims on appeal] are
not identical, they are not patentably distinct from
each other because while not of the same scope, the
instantly claimed overbased salts and compositions
containing said salts are encompassed by the claims
of the ‘346 patent. . .
Although the conflicting claims [i.e., the claims of
the Blystone ‘546 patent and the appealed claims]
are not identical, they are not patentably distinct
from each other because while not of the same scope,
the instantly claimed overbased salts and
compositions containing said salts are encompassed
by the claims of the ‘546 patent. [Underscoring
added; examiner’s answer, pp. 4-5.]
Conspicuously absent in the examiner’s analysis, however,
is an explanation as to why one of ordinary skill in the art
would have found it prima facie obvious, given the teachings
8
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