Appeal No. 2003-0190
Application No. 08/515,964
It is clear, however, that, in order to support a rejection
under 35 U.S.C. § 102(g), evidence must be provided that the
claimed subject matter was actually reduced to practice by
another before an applicants’ invention. We find the record
before us to be totally devoid of any such evidence. Clearly,
the Takano reference relied on by the Examiner, which has a
filing date nearly four years later than the filing date of
Appellants’ application, provides no evidence of the required
reduction to practice, let alone conception, to support a
rejection under 35 U.S.C. § 102(g).
We next consider the Examiner’s rejection of appealed claims
1-11 based on the judicially created doctrine of obviousness-type
double patenting as being unpatentable over claims 1 and 6–9 of
U.S. Patent No. 6,148,787 (Takano). While we do not disagree
with the Examiner that the rejected claims in the present
application are arguably obvious variations of the claims 1, 6,
8, and 9 of the Takano patent, it is our opinion that, under the
factual situation in the case before us, the Examiner must also
show, and which the Examiner has not done, that Takano’s patent
claims are obvious variations over the rejected claims in the
application (i.e., two-way obviousness test). See In re Braat,
937 F.2d 589, 593, 19 USPQ2d 1289, 1293 (Fed. Cir. 1991). The
-6–6
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