Appeal No. 2004-0786
Application No. 08/935,116 Page 30
As a general principle, we agree with the examiner that the
elimination of an element along with its corresponding function
may be considered to have been obvious to an artisan. However,
we do not find that situation to be before us as asserted by the
examiner. Even though the result is that a unique customer
number results, there is a big difference between a customer
entering a unique customer number, and a system generating a
unique customer code at a terminal. We agree with appellants
that the terminal of claim 1 of the '560 patent performs a
different function than the terminal of claim 17. As the
examiner has failed to establish the obviousness of modifying the
system of claims 1 and 3 of the '560 patent to arrive at the
invention of claims 17-32, we find that the examiner has failed
to establish a prima facie case of obviousness-type double
patenting of claims 17-32. Accordingly, the rejection of claims
17-32 under the judicially created doctrine of obviousness-type
double patenting is reversed.
NEW GROUND OF REJECTION UNDER 37 CFR §1.196(b).
We enter the following new ground of rejection under 37 CFR
§1.196(b). Claim 33 is rejected under 35 U.S.C. § 102(b) as
being anticipated by Creekmore. Creekmore discloses a computer
implemented (general purpose digital computer functioning as
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