Appeal No. 2004-2028
Application No. 09/423,746
OPINION
We have carefully reviewed the claims, specification and prior
art, including all of the evidence and the arguments advanced by
both the examiner and the appellants in support of their respective
positions. This review has led us to conclude that the examiner’s
obviousness-type double patenting and Section 103 rejections are
well founded. Accordingly, we affirm the examiner’s decision
rejecting all of the claims on appeal for the factual findings and
conclusions set forth in the Answer and below.
Obviousness-Type Double Patenting4
To prevent unjustified extension of a patent right beyond
statutory limit, the doctrine of obviousness-type double patenting
requires rejection of application claims to subject matter
different, but not patentably distinct from the subject matter
claimed in a commonly owned prior patent. In re Braat, 937 F.2d
589, 592, 19 USPQ2d 1289, 1291-92 (Fed. Cir. 1991). The
3(...continued)
English translation of record.
4 At pages 5 and 6 of the Supplemental Brief, appellants state that “[c]laim 13 is
separately patentable from the remaining claims...” However, the appellants do not separately
argue the limitation of claim 13 in the context of an obviousness-type double patenting rejection
in the Brief. See pages 15-16. Therefore, we select claim 1 from the claims on appeal and
determine the propriety of the examiner’s obviousness-type double patenting rejection based on
this claim alone consistent with 37 CFR § 41.37(c)(vii) (2004). See also In re McDaniel, 293
F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002).
4
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