Appeal No. 2001-2361
Application No. 09/411,369
extend the right to exclude on both elements A and B
identified above due to the overlap in scope (final
rejection, page 3).
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 claims 1 and 2 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
the Technology Center (TC) Director if such a rejection were to
be made in the present application. As an alternative, if the
examiner is of the view that the original election requirement
was, at least in-part, improper, then the examiner might wish to
consider following the guidance in MPEP § 822 and, if
appropriate, withdraw the requirement and require the conflicting
applications to be joined. If a double patenting rejection is
made or reimposed in the present application, the examiner should
provide a detailed explanation of why the protections afforded
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