Appeal No. 1998-1855 12
Application No. 08/459,537
combining Hackl with Krebs-Yuill in the manner described in the Answer, the omission
of the requisite limitation with regard to the moisture content from the disclosure of each
of the prior art references, as required by the claimed subject matter would result in a
process created that would, in any event, fall short of the invention defined by the
claimed subject matter, as the aforesaid claimed subject matter requires features that
cannot be achieved by
combining the references. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
Accordingly, the examiner has not established a prima facie case of obviousness.
The Obviousness-type Double Patenting Rejections
As an initial matter, the appellants have argued that, “[t]he presently pending
claims are not believed to stand or fall together.” See Brief, page 9. Throughout the
discussion of the rejection on the grounds of obviousness, separate arguments are
presented with respect to limitations present in claims argued separately. With respect to
the rejections on the grounds of obviousness-type double patenting however, no such
separate arguments are present by the appellants. Accordingly, we select claim 1 as
representative of the claimed subject matter and limit our consideration of the
obviousness-type double patenting rejection thereto. See 37 § CFR 1.192 (c)(7)
(1997).
All proper double patenting rejections rest on the fact that a patent has been
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