Appeal No. 1997-1632 Page 13
Application No. 08/138,555
obtain the claimed invention. Therefore, we affirm the rejection of claim 80 as
unpatentable over claims 1 and 2 of Larson in view of Tolson.
II. Obviousness-Type Double Patenting Rejection of Claim 54
The examiner asserts, "[t]he subject matter claimed in the instant application is
fully disclosed in the [Henderson] Patent and would be covered by any patent granted
on that copending application since the referenced copending application and the
instant application are claiming common subject matter." (Paper No. 46 at 6.) The
appellants argue, "claim 54 of this application and claim 1 of the '536 patent are
independent and distinct." (Paper No. 47 at 30.)
The examiner's rejection is based on In re Schneller, 397 F.2d 350, 158 USPQ
210 (CCPA 1968). “Schneller does not set forth another test for determining
‘obviousness-type’ double patenting.” Ex parte Davis, 56 USPQ2d 1434, 1436
(Bd.Pat.App. & Int. 2000).2 “While the court in Schneller did use a ‘cover’ test in making
the determination that the invention claimed in the patent was not independent and
distinct from the invention of the appealed claims, we are of the view that the term
‘cover’ was used by the court as synonymous with not patentably distinct. Thus, under
2 “Schneller did not establish a rule of general application and thus is limited to
the particular set of facts set forth in that decision.” Davis, 56 USPQ2d at 1436.
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