Appeal No. 2003-1106
Application No. 09/825,896
C. Our Analysis
In determining “same invention” type double patenting,
courts ask, for each claim at issue, whether the claim in one
patent or application could be literally infringed without
literally infringing the claim in the other patent or
application. See, e.g., In re Hallman, 655 F.2d 212, 216, 210
USPQ 609, 612 (CCPA 1981); In re Avery, 518 F.2d 1228, 1232, 186
USPQ 161, 164 (CCPA 1975); In re Vogel, 422 F.2d 438, 441, 164
USPQ 619, 622 (CCPA 1970). The PTO applies a similar test. See
M.P.E.P. 804 (citing In re Vogel, 422 F.2d at 440, 164 USPQ at
621). This test can be characterized as a general “infringement
test” since an infringement analysis of each of the respective
sets of claims is conducted. This “literal infringement” test
to determine “same invention” type double patenting may be
characterized as a “two-way” test: the claims of the patent are
compared to the claims of the other patent or application, and
vice versa, to determine whether either set of claims can be
literally infringed without literally infringing the other.
According to our claim construction set forth in
section I of this decision, a comparison of claim 22 (as
rewritten above) with instant claim 25, and vice versa,
reveals that claim 22 of Steiner would be literally
infringed, as would claim 25 be literally infringed, in
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