Appeal No. 1999-0675 Page 5
Application No. 08/379,803
the pending and patented claims and (2) determine whether the differences render the claims
patentably distinct. Eli Lilly and Co. v. Barr Labs. Inc., 251 F.3d 955, 968, 58 USPQ2d 1869,
1878 (Fed. Cir. 2001). Claims are not patentably distinct, and thus properly rejected for
obviousness-type double patenting, when the subject matter of those claims is obvious over, or
anticipated by, the subject matter of the patented claim. Id.
In the present case, there is a key difference between the subject matter of the pending
and patented claims which is not addressed in the rejection. Neither patented claims 15 and 21,
nor the claims they depend from, recite the inclusion of MRC or MFC in the particles of the
composition. The Examiner has failed to address this difference. The rejection lacks the
necessary findings of fact to establish that the claims are not patentably distinct. Therefore, the
Examiner failed to establish a prima facie case of obviousness-type double patenting.
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