Appeal No. 2003-1169
Application 09/879,888
With regard to the provisional rejection under the doctrine
of obviousness-type double patenting, the examiner states that
the instant claims read on claims 5, 6, and 8 of Application
Serial No. 09/784,174 (Appeal No. 2003-1102) “when J and K in
‘174 form a heterocyclic ring”. Answer, pages 4-6.
In response, appellants argue that “[o]verlap itself,
however, cannot establish a prima facie case of nonstatutory
double patenting.” Brief, page 5.
We note that the determination of obviousness-type double
patenting essentially involves the determination of obviousness
under 35 U.S.C. § 103, except that the first patent disclosure is
not applicable as “prior art.” See, e.g., Chisum, § 9.03[3]. In
In re Longi, the Federal Circuit discussed the similarity between
rejections under § 103 and “obviousness-type” double patenting:
We note that the Board did not make the instant
rejection under § 103. However, a double patenting of
the obviousness type rejection is “analogous to [a
failure to meet] the non-obviousness requirement of 35
U.S.C. § 103” except that the patent principally
underlying the double patenting rejection is not
considered prior art. In re Braithwaite, 379 F.2d 594,
600, n.4, 54 C.C.P.A. 1589, 1597, n.4, 154 USPQ 29, 34
(1967). Therefore, our analysis concerning the
correctness of the Board’s decision in the instant case
parallels our previous guidelines for a § 103
rejection. See, e.g., In re De Blauwe, 736 F.2d 699,
222 USPQ 191 (Fed. Cir. 1984).
In re Longi, 759 F.2d at 892 n.4, 225 USPQ at 648 n.4.
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