Appeal No. 2004-0912
Application No. 09/942,061
In the present case, the Examiner has failed to address differences between the
claimed subject matter of the pending and patented claims with the claimed subject
matter of the present application. For example, in the rejection over the U.S. Patent
6,453,779 the Examiner does not provide a discussion of the specific claims with the
conflicting subject matter. The Examiner refers to the disclosure of the patent and the
figures as the basis to support the rejection. (Answer, pp. 5-6). The Examiner’s
discussion of these double patenting rejections lacks the necessary findings of fact to
establish that the claims are not patentably distinct. Therefore, the Examiner failed to
establish a prima facie case of obviousness-type double patenting. It must be
remembered that the initial burden of establishing a prima facie case of unpatentability
rests upon the Examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984).
For these reasons, the rejection of claims 21 to 25, 40, 41 and 57 to 59 under the
judicially created doctrine of obviousness-type double patenting over claims 1 to 38 of
U.S. Patent No. 6,282,991 in view of Kress; claims 21 to 25, 40, 41 and 57 to 59 under
the judicially created doctrine of obviousness-type double patenting over claims 1 to
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