Appeal No. 2003-0914 5
Application No. 09/192,713
Our analysis of the examiner's rejection of claim 47 under the doctrine of judicially
created double patenting parallels that for a Section 103 rejection. While the double
patenting rejection is analogous to a failure to meet the non-obviousness requirement of
35 U.S.C. § 103, that section is not itself involved in double patenting rejections because
the patent principally underlying the rejection is not usually prior art. In re Braat, 937
F.2d 589, 592-93, 19 USPQ2d 1289, 1291-92 (Fed. Cir. 1991); In re Longi, 759
F.2d 887, 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
5,837,705 patent, the disclosure of the patent may not be used as prior art.
Our analysis of the claims before us necessarily requires a comparison of the
claimed subject matter, claim 47, and claim1of the ‘705 patent. We find that claim 1 is
directed to six species of the generic compound of claim 47, which species are excluded
from the scope of claim 47 by a proviso specifically excluding them. The examiner has
found and the appellants do not dispute that the “subject matter differs only in size of alkyl
chain at 2-position where instant ‘n’ can vary from 0-2 from that particularly covered by
the ‘705 patent.” See Answer, page 4. We further find that each of the compounds in
the ‘705 patent has a 7-chloro position designated in claim 47 as R1. In contrast, claim
47 permits R1 to be halo which is inclusive of chloro, bromo, fluoro and iodo.
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