Appeal No. 1999-2347
Application 08/892,560
Appellants' claims. 37 CFR § 1.131. An invention A is the same
patentable invention as an invention B if invention A is the same
as or is obvious in view of invention B assuming invention B to
be prior art. 37 CFR § 1.601(n). In other words, Appellants'
claimed invention must anticipate or render obvious Woo's claimed
invention for there to be the same invention. (That is, the
analysis is the same as an obviousness-type double patenting
analysis.) In this way, the U.S. Patent and Trademark Office
assures itself that it will not issue two patents to the same
patentable invention. If Woo is not claiming "the same
patentable invention" as Appellants, applying the § 1.601(n)
analysis, Appellants are entitled to antedate the Woo patent
using § 1.131.
Appellants argue that the Examiner has not indicated that
any of Appellants' claims are allowable to the same patentable
invention and, on this point alone, an interference proceeding is
inappropriate (Br9).
Appellants are correct that an interference proceeding is
inappropriate until allowable subject matter is indicated. The
provision of § 1.131 which bars the use of a § 1.131 declaration
contemplates that the priority determination will be conducted
inter partes rather than ex parte. However, Appellants are
prevented from having an interference with Woo because, as we
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