Appeal No. 2005-1278 Page 6 Application No. 10/145,226 establish that the claims of the application would extend the rights granted to the patentee. With regard to rejections under the doctrine of obviousness-type double patenting, the examiner is instructed by Section 804 of the Manual of Patent Examining Procedure (MPEP) as follows (emphasis added): Since the analysis employed in an obviousness-type double patenting determination parallels the guidelines for a 35 U.S.C. § 103(a) rejection, the factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. § 103 are employed when making an obvious-type double patenting analysis. These factual inquiries are summarized as follows: (A) Determine the scope and content of a patent claim and the prior art relative to a claim in the application at issue; (B) Determine the differences between the scope and content of the patent claim and the prior art as determined in (A) and the claim in the application at issue; (C) Determine the level of ordinary skill in the pertinent art; and (D) Evaluate any objective indicia of nonobviousness. The conclusion of obviousness-type double patenting is made in light of these factual determinations. Any obviousness-type double patenting rejection should make clear: (A) The differences between the inventions defined in the conflicting claims – a claim in the patent compared to a claim in the application; and (B) The reasons why a person of ordinary skill in the art would conclude that the invention defined in the claim inPage: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007