Appeal No. 1999-1335
Application No. 08/463,437
appellants would have us believe, whether delays in the
prosecution of the application were caused by the PTO.4 As we
indicated above, the appellants do not contest the examiner's
determination that appealed claim 47 is patentably indistinct
from the claims of the '233 patent. Under these circumstances,
we must uphold the examiner's rejection under the judicially
created doctrine of obviousness-type double patenting as a matter
of law.
The appellants argue that "[f]orcing a terminal disclaimer
robs him [sic, them] of protection he otherwise would have had if
the government had not intervened and caused delay in the
prosecution of his application." (Appeal brief, page 7.) This
is incorrect. The examiner would have been justified in
rejecting the appealed claims on obviousness-type double
patenting over the claims of the '233 patent even if no delays
had been present.
4
To the extent that the appellants believe that these delays
justify a two-way double patenting test, we note that the facts of the
present case are removed from the facts of In re Braat, 937 F.2d 589,
592, 19 USPQ2d 1289, 1291-92 (Fed. Cir. 1992). Unlike Braat, the
inventive entity of the present application is the same as that of the
'233 patent. In addition, the invention claimed in the '233 patent is
not a later-filed improvement of the present invention. Further, the
claims of the present application and the claims of the application
which matured into the '233 patent could have been combined in a
single continuation-in-part application. In re Berg, 140 F.3d 1428,
1433, 46 USPQ2d 1226, 1230 (Fed. Cir. 1998) ("[B]ecause Berg could
have filed the claims of its separate applications in a single
application, and it simply chose to file two applications despite
nearly identical disclosures, Berg is not entitled to the two-way
test."). In any event, we note that the appellants do not dispute the
examiner's determination (answer, p. 6) that the claims of the present
application and the claims of the '233 patent are patentably
indistinct from each other under the two-way double patenting test.
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