Appeal No. 2003-1169
Application 09/879,888
Because the analysis regarding obviousness-type double
patenting essentially involves the determination of obviousness
under 35 U.S.C. § 103, we note that obviousness under Section 103
is a legal conclusion based upon facts revealing the scope and
content of the prior art, the differences between the prior art
and the claims at issue, the level of ordinary skill in the art,
and objective evidence of nonobviousness. Graham v. John Deere
Co., 86 S.Ct. 684, 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Upon return of the application, the examiner is therefore to
reweigh the entire merits of the obviousness-type double
patenting rejection according to the criteria set forth in Graham
v. John Deere Co.
Furthermore, in the case of In re Lee, 277 F.3d 1338, 1445,
61 USPQ2d 1430, 1435 (Fed. Cir. 2002), the Court stressed the
import of articulating and making of record knowledge negating
patentability. The examiner is therefore also to reweigh the
entire merits of the rejection and make of record any facts
supporting her position negating patentability.
In specific response to appellants’ statement that
“[o]verlap itself, however, cannot establish a prima facie case
of nonstatutory double patenting”, the examiner is to reweigh the
entire merits of the obviousness-type double patenting rejection
in light of In re Kaplan, 789 F.2d 1574, 1577-1581, 229 USPQ 678,
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