Appeal No. 1998-2002
Application 08/690,016
According to the examiner, the obviousness-type double
patenting rejection is based on the following (Answer, p. 4):
The instant claims [(claims 33-40 and 42-57)] are
broader than the claims recited in Patent 5,492,682,
since they merely recite the corresponding “means”
for carrying out the process recited in the claims
of Patent 5,492,682.
Manifestly, claims 33-40 and 42-57 recite structural
limitations in “means-plus-function” format which do not
appear in the process claims of U.S. Patent No. 5,492,682.
Therefore, it is unclear how the various “means” recited in
claims 33-40 and 42-57 render those claims “broader” than the
process claims of U.S. Patent No. 5,492,682.
Furthermore, the examiner has failed to interpret claims
33-40 and 42-57 in accordance with 35 U.S.C. § 112, sixth
paragraph, and explain why the apparatus defined by claims 33-
40 and 42-57 would have been obvious in view of the process
claimed in U.S. Patent No. 5,492,682 which does not recite the
claimed “means.” See Reply brief. Therefore, for the sole
reason that the examiner failed to set forth a prima facie
case of unpatentability, the rejection of claims 33-40 and 42-
57 under the judicially created doctrine of obviousness-type
double patenting is reversed.
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