Appeal No. 1998-1855 14
Application No. 08/459,537
variation of that invention which would have been obvious to those of ordinary skill in
the relevant art. See In re Kaplan, 789 F.2d 1574, 1579-80, 229 USPQ 678, 683
(Fed. Cir. 1986).
Our analysis of the examiner's rejection of claims 1 and 3 through 5 under the
doctrine of judicially created double patenting parallels that for a section 103 rejection.
While the double patenting rejection is analogous to a failure to meet the non-
obviousness requirement of 35 U.S.C. § 103, that section is not itself involved in
double patenting rejections because the patent principally underlying the rejection is not
usually prior art. In re Braat, 937 F.2d 589, 592-93, 19 USPQ2d 1289, 1291-92
(Fed. Cir. 1991); In re Longi, 759 F.2d 887, 892-93, 225 USPQ 645, 648 (Fed. Cir.
1985); In re Braithwaite, 379 F.2d 594, 600 n. 4, 154 USPQ 29, 34 n. 4 (CCPA
1967). When considering whether the claimed subject matter is an obvious variation of
the invention defined in the claims of the Brierley patents, the disclosure of the patent
may not be used as prior art. The specification however can always be used as a
dictionary to learn the meaning of a term in the patent claim. In re Boylan, 392 F.2d
1017, 1018 n.1, 157 USPQ 370, 371 n.1 (CCPA 1968).
We find that the claims of the Brierley ‘559 and Brierley ‘942 patents fail to
provide for particulates comprising less than 12% by weight moisture as required by the
claimed subject matter. Furthermore, the oxidative bioleaching of Brierley ‘942 does not
disclose the limitation of “forming particulates from particles and an inoculate comprising
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