Appeal No. 2002-0679 8
Application No. 08/684,351
892-93, 225 USPQ 645, 648 (Fed. Cir. 1985); In re Braithwaite, 379 F.2d 594,
600 n.4, 154 USPQ 29, 34 n.4 (CCPA 1967). When considering whether the claimed
subject matter is an obvious variation of the invention defined in the claims of the Mitchell
patent, the disclosure of the patent may not be used as prior art. The specification
however can always be used as a dictionary to learn the meaning of a term in the patent
claim. In re Boylan, 392 F.2d 1017, 1018 n.1, 157 USPQ 370, 371 n.1 (CCPA
1968).
It is appellants' position that the claims of Mitchell fail to give rise to obviousness
type double patenting as the Mitchell claims do not disclose or suggest contact at the
temperatures required by the claimed subject matter. We disagree.
Claim 1 of Mitchell requires a membrane comprising two layers wherein one layer is
a thermoplastic polyurethane and the second layer is a copolymer of ethylene and vinyl
alcohol. Furthermore, claim 1 of Mitchell specifically requires that the reactive contact
“consists essentially of hydrogen bonding.” In contrast, the claimed subject matter likewise
requires the same components and that the contact is one which “consists essentially of
hydrogen bonding.” The claims further contain a product by process limitation of
“laminating said first and second layers together at a temperature of between about 300o
to about 465o F.” It is well settled however, that when appellants’ product and that of
the prior art appear to be identical or substantially identical, the burden shifts to the
appellant to provide evidence that the prior art product does not necessarily or inherently
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