Appeal No. 1997-3047
Application 08/480,152
222 F.3d 973, 987, 55 USPQ2d 1609, 1619 (Fed. Cir. 2000),
relied upon by the board (decision, pages 8-9), is contrary to
prior controlling law (request, pages 3-4). Appellant argues
that In re Stanley, 214 F.2d 151, 102 USPQ 234 (CCPA 1954)
indicates that mere dominance by generic claims is not
decisive (request, page 4). In Stanley, the Truitt patent had
the same assignee as the appellant’s application, was based
upon an application filed more than two years after the
appellant’s application was filed, and contained claims which
were limited to an improvement over the appellant’s generic
claims. Stanley, 214 F.2d at 152 and 158, 102 USPQ at 235 and
240. The court in Stanley, 214 F.2d at 156, 102 USPQ at 238,
citing In re Mann, 47 F.2d 370, 8 USPQ 381 (CCPA 1931), noted
what it called an exception to the obviousness-type double
patenting rejection:
In certain cases, where there are two
applications by different inventors, but held by a
common assignee, and there is a disclosure of the
same basic invention in both applications, but in
one of which it is asserted that the applicant is
the inventor only of an improvement in the basic
invention disclosed, a patent issued upon the
improvement claim [sic] in such last named
application is not a bar to a patent upon the other
application....
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