Appeal No. 2001-1786
Application 08/420,796
includes the recitation of electric power
generation means including a rotor, etc.,
which recitation has not been included in
claim 28. Thus the deletion of this
limitation, with the corresponding loss of
function, would have been obvious to those of
ordinary skill in the art in light of the
above decision. [answer, page 4].
Thus, the rejection has considered only a single claim of the
application (claim 28) and has addressed only the obviousness of
eliminating a feature and its corresponding function.
Ordinarily, this rejection would not constitute a prima
facie case of obviousness-type double patenting because it does
not consider each of the claims on appeal and does not provide a
claim by claim comparison of the claims on appeal and the claims
of the patent. The examiner has the same burden of providing a
prima facie case of unpatentability in support of an obviousness-
type double patenting rejection as the examiner has in supporting
an obviousness rejection under 35 U.S.C. § 103. However, since
appellant has provided a detailed argument in response to this
rejection which has forced the examiner to explain in more detail
the rationale behind this rejection, we will consider this
rejection on the merits.
Appellant has provided a detailed analysis of why the
claims of this application are not obvious over the claims of the
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