Appeal No. 2000-1646
Application 08/467,425
The public should … be able to act on the assumption that upon the expiration of
the patent it will be free to use not only the invention claimed in the patent but
also the modifications or variants which would have been obvious to those of
ordinary skill in the art at the time the invention was made, taking into account
the skill of the art and prior art other than the invention claimed in the issued
patent (Emphasis in Original).
In re Longi, 759 F.2d 887, 892-893, 225 USPQ 645, 648 (Fed. Cir. 1985), citing In re
Zickendraht, 319 F.2d 225, 232, 138 USPQ 23, 27 (CCPA 1963) (Rich, J. concurring).
We decline the Appellants’ inherent invitation to substitute a restriction
requirement standard for this rationale. Claims may be independent and distinct and
yet remain not patentably distinct. The proper analysis is an obviousness analysis,
which the Examiner has put forth and which remains unrebutted. Our independent
review of Claim 1 of Christensen shows the susceptor for alleviating tension in a
thermoplastic weld, the susceptor encased in a thermoplastic resin, with fiber
reinforcement along the top and bottom of the susceptor sandwiching the suceptor.
(Christensen, column 13, lines 44-62). We, therefore, agree that this renders the
instantly rejected claims suitably rejected under an obviousness-type double-patenting
rejection.
The Appellants’ additional argument that the issued patent and the pending
application will expire simultaneously is without merit. Patent terms may be adjusted for
various reasons, e.g. pursuant to 35 U.S.C. § 154 (b). Further, the Examiner has
correctly noted that an additional consideration is avoidance of the potential for
harassment of an accused infringer by multiple parties with patents covering the same
patentable invention. (Examiner’s Answer, page 6, lines 9-15). We agree with the
Examiner. See also In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982).
We therefore affirm the obviousness-type double-patenting rejection.
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