Appeal No. 2004-1264
Application 09/909,168
As noted in In re Berg, 140 F.3d 1428, 1432, 46 USPQ2d 1226,
1229 (Fed. Cir. 1998), obviousness-type double patenting is a
judge-made doctrine that prevents an extension of the patent
rights beyond the statutory limit and requires rejection of an
application claim when the claimed subject matter is not
patentably distinct from the subject matter claimed in a commonly
owned patent. Its purpose is to prevent an unjustified extension
of the term of the right to exclude granted by a patent by
allowing a second patent claiming an obvious variant of the same
invention to issue to the same owner later. In the present case,
it is the examiner’s view that the shoe cleat defined in
application claims 28 through 30 and 34 is obvious in view of the
shoe cleat which is an element of combination claim 1 of
appellant’s ‘774 patent.
In the context of a combination/sub-combination as framed by
appellant, we note that as early as 1951 the Court of Customs and
Patent Appeals (CCPA) recognized the possibility of obviousness-
type double patenting being an issue where the patent claims are
directed to a combination and the later filed application
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