Appeal No. 2000-1941
Application 08/567,128
rejection was set forth as an obviousness-type double patenting
rejection based on the claims in the Kato patent. In the
examiner’s answer, this rejection was again set forth as a non-
statutory double patenting rejection based on Schneller.
Appellants’ only response to this [these] rejection[s] is that
the examiner has failed to show the obviousness of the appealed
claims over the claims of the Kato patent [brief, page 13].
In our view, regardless of whether the rejection is
considered to be a conventional double patenting rejection based
on obviousness-type double patenting or a double patenting
rejection of the non-statutory type based on Schneller, the
examiner has failed to set forth a prima facie case of double
patenting. The examiner has simply asserted that there would be
improper double patenting here, but the examiner has failed to
provide any analysis in support of this assertion. In a double
patenting rejection, the examiner has the same burden to
establish a prima facie case of unpatentability as with any other
rejection. The examiner cannot satisfy this burden by simply
noting that the conditions for double patenting are met without a
comparative analysis of the claims on appeal with the claims of
the corresponding patent or application. Since the examiner has
failed to provide us with an appropriate comparative analysis of
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