Appeal No. 1999-0310 2
Application No. 08/225,267
under the judicially created doctrine of obviousness-type double patenting as being
unpatentable over claim 1 of U. S. Patent 5,487,845.
Appellants request rehearing as the Board has denied consideration of appellants’
declaration under 37 CFR § 1.132. In support of this conclusion, the Board stated that:
in a rejection on the grounds of obviousness-type double patenting an
affidavit under 37 CFR § 1.132 is ineffective to overcome the rejection
except in the instance wherein, the prior art effect of the first patent may be
avoided by a showing under 37 CFR § 1.132 that any unclaimed invention
disclosed in the first patent was derived from the inventor of the application
before the examiner in which the 35 U.S.C. §§102(e)/103(a) rejection
was made. In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982). Such
in not the case on the record before us. [Decision, pp. 6-7.]
Upon careful reconsideration, we find that our reviewing court in at least one
instance has reviewed and considered a Declaration purporting to show unexpected results
to overcome a rejection on the grounds of obviousness-type double patenting. Our
reviewing court considered the Declaration and found that it failed to provide the
unexpected results necessary to rebut the prima facie case of obviousness. See In re
Longi, 759 F.2d 887, 896-97, 225 USPQ 645, 651-52 (Fed. Cir. 1985).
Accordingly, we hold that under appropriate circumstances a declaration under 37 CFR §
1.132 submitted as a rebuttal to a sustainable rejection on the grounds of obviousness-
type double patenting must be considered.
In rebuttal to our conclusion that the claimed subject matter was an obvious
variation of the invention defined in the claims of the 5,487,845 patent and accordingly,
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