Appeal No. 2004-1228
Application No. 09/813,088
particulars of the data that might support his conclusion.
Accordingly, we uphold the examiner’s rejection on this
ground.
IV. Double Patenting: Claims 1-7, 18-32, & 40-46
The judicially-created doctrine of obviousness-type double
patenting prohibits a party from obtaining an extension of the
right to exclude granted through claims in a later patent that
are not patentably distinct from claims in a commonly-owned
earlier patent. Ely Lilly & Co. v. Barr Laboratories, Inc. , 251
F.3d 955, 967, 58 USPQ2d 1869, 1877-78 (Fed. Cir. 2001)(citing In
re Longi, 759 F.2d 887, 892, 225 USPQ 645, 648 (Fed. Cir. 1985)).
According to our reviewing court, “a double patenting rejection
of the obviousness type rejection is ‘analogous to a [failure to
meet] the nonobviousness requirement of 35 U.S.C. § 103,’ except
that the patent document underlying the double patenting
rejection is not considered prior art.” In re Longi, 759 F.2d at
892 n.4, 225 USPQ at 648 n.4.
Instead of filing a terminal disclaimer or arguing the
merits of the examiner’s rejection to overcome the rejection, the
appellant urges (substitute appeal brief, page 20):
Undersigned observes that had the Examiner given
patentable weight to the claim limitations of the
instant application while those claims were in the
parent case, applicant would not have been faced with
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