Appeal No. 2004-1383
Application No. 09/658,389
right to exclude granted through claims in a later patent that
are not patentably distinct from claims in a commonly-owned
earlier patent. Eli 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.
The claims of copending application 09/658,509 do not
disclose the clamp members having at least one offset fastener
receiving passageway as recited in the appealed claims. To
account for this difference, the examiner relies on Cheng.
(Final Office action, pages 4-5.) According to the examiner
(id. at page 5), “[i]t would have been obvious to a person of
ordinary skill in the art . . . to modify the clamping device of
. . . copending Application No. 09/658,509 with the pair clamp
device of Cheng in order to provide a tighter and more versatile
clamping device so that the operation of the bicycle is not
compromised.”
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