Appeal No. 1998-1664
Application No. 08/323,982
of solely the patented claims, to make overbased metal salts
having the metal ratios as recited in claim 1 on appeal and
separately argued claim 28. In re Longi, 759 F.2d 887, 892
n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985) (“[A] double
patenting of the obviousness type rejection is ‘analogous to
[a failure to meet] the non-obviousness requirement of 35
U.S.C. §103,’ except that the patent principally underlying
the double patenting rejection is not considered prior art.”).
In particular, the mere fact that the appellants’ claimed
salts may be “encompassed by” the claims of the Adams or
Blystone patent does not necessarily establish that the
subject matter of the appealed claims would have been prima
facie obvious to one of ordinary skill in the art over the
subject matter of the patented claims. In this regard, we
also point out that the specification of the Adams or Blystone
patent cannot be used as if it were prior art. In re Kaplan,
789 F.2d 1574, 1579, 229 USPQ 678, 682 (Fed. Cir. 1986) (“In
considering the question [of obviousness in a double patenting
context], the patent disclosure may not be used as prior art.
[Citation omitted.]”).
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