Appeal No. 1999-2119
Application No. 08/815,410
disclosed in US‘112 [i.e., Watanabe ‘112] and is covered by the
claims of US‘112 [i.e., Watanabe ‘112]” and that “identical
subject matter is claimed” (answer, page 42). Notwithstanding
the examiner’s aforequoted statement that “identical subject
matter is claimed,” this double patenting rejection plainly is
not the “same invention” type under 35 U.S.C. § 101. In re
Vogel, 422 F.2d 438, 441, 164 USPQ 619, 621-22 (CCPA 1970).
Further, we do not believe that the examiner considers this
double patenting rejection to be the “same invention” type.
Instead, this rejection appears to be premised upon the
examiner’s view that claim 3 of Watanabe ‘112 could be broadly
interpreted as dominating the here claimed invention. It is well
settled, however, that domination by itself cannot support a
double patenting rejection. In re Kaplan, 789 F.2d 1574, 1577,
229 USPQ 678, 681 (Fed. Cir. 1986); In re Sarett, 327 F.2d 1005,
1014, 140 USPQ 474, 482 (CCPA 1964). Further, on the record
before us, the examiner has not, in our view, carried her burden
of showing that the patent protection afforded by claim 3 of
Watanabe ‘112 would be unjustifiably extended by allowance of the
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