Appeal No. 2003-1614 Page 5
Application No. 09/817,692
that 'a first web page in a list of web pages'." (Id.) The appellant argues, "[c]laim 1 of
U.S. Patent No. 6,226,060 calls for an 'initial web page that is a first web page in a list of
web pages.' Claims 1-5 of the instant application do not include such a limitation. "
(Appeal Br. at 5.)
"A double patenting rejection precludes one person from obtaining more than one
valid patent for either (a) the 'same invention,' or (b) an 'obvious' modification of the
same invention." In re Longi, 759 F.2d 887, 892, 225 USPQ 645, 648 (Fed. Cir.1985).
"[T]he term 'same invention,' in this context means an invention drawn to identical
subject matter." Id., 225 USPQ at 648 (citing In re Vogel, 422 F.2d 438, 164 USPQ
619 (CCPA 1970)). "A good test, and probably the only objective test, for 'same
invention,' is whether one of the claims could be literally infringed without literally
infringing the other. If it could be, the claims do not define identically the same
invention." Vogel, 422 F.2d at 441, 164 USPQ at 622.
Here, independent claim 1 of Roth recites in pertinent part the following
limitations: "automatically selecting said initial web page from a list of web pages during
initialization of said web browser . . . wherein said initial web page is a first web page in
said list of web pages. . . ." Independent claims 2 and 5 of the patent recite similar
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