Appeal No. 1998-1855 6
Application No. 08/459,537
Claims 1 through 17 and 27 through 52 stand rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable over claims
1 through 29 of U. S. Patent No. 5,332,559 (Brierley ‘559).
OPINION
We have carefully considered all of the arguments advanced by the appellants and
the examiner, and agree with the appellants that the rejections of claims 1 through 17
and 27 through 52 under §§ 103 and 112 are not well founded. Accordingly, we
reverse these rejections. We also reverse the rejections under the judicially created
doctrine of obviousness-type double patenting over Brierley ‘559, or Brierley ‘942. We
sustain the rejection under the judicially created doctrine of obviousness-type double
patenting over Brierley ‘486.
“[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability,” whether on the
grounds of anticipation or obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992).
The New Matter Rejections
In a rejection under the first paragraph of 35 U.S.C. § 112, “written description
requirement,” it is sufficient if the originally filed disclosure would have conveyed to one
of ordinary skill in the art that an appellant had possession of the concept of what is
claimed.
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