Appeal No. 2001-2353
Application No. 09/411,370
would have been obvious to one of ordinary skill in the art at
the time of appellants' invention. Instead, it appears that the
examiner has merely asserted that claim 1 of the present
application is not patentably distinct from claims 1 through 3 of
the co-pending application, contending (final rejection, page 4)
that
the broad limitations in the instant claims encompass
the specific limitations of the same structure in the
copending application, while the specific limitations
in the copending claims anticipate the broad
limitations of the same structure in the instant
claims. If claim 1 of either application were
allowable prior to allowance of the other claim 1, it
would extend the right to exclude on both elements A
and B identified above due to the overlap in scope.
Since the examiner has clearly not established a prima facie case
of obviousness-type double patenting, we are constrained to
reverse the examiner's rejection of claim 1 on that basis.
However, given that the examiner's comments above appear to
relate to a nonstatutory double patenting rejection of the type
made in In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968),
we REMAND for the examiner to consider the guidelines set forth
in MPEP § 804 (pages 800-26 to 800-28) regarding that type of
rejection, and particularly to obtain proper authorization from
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