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 in
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