Appeal No. 2005-1278 Page 7
Application No. 10/145,226
issue is an obvious variation of the invention defined in a
claim in the patent.
The examiner therefore is required to establish that each application claim being
rejected under the theory of obviousness-type double patenting is not patentably distinct
from a claim in the applied patent or patent application in the case of a provisional
rejection.
However, the examiner has not acted in accordance with this guidance in the
present case. In the statement of the rejection the examiner has merely grouped
together a number of claims in the application, pointed out some common features in
the application claims that are present in the claims of the applied patents or patent
application, and then declared that the application claims were unpatentable. It is our
view that the examiner therefore has failed to establish a prima facie case of
obviousness-type double patenting with regard to claims 12 to 31.
Additionally, the examiner failed to apply a "two-way" test between the design
patent and the claims under appeal. The Federal Circuit stated in In re Dembiczak, 175
F.3d 994, 1002, 50 USPQ2d 1614, 1619 (Fed. Cir. 1999) that:
The law provides that, in some very rare cases, obvious-type double
patenting may be found between design and utility patents. See Carman Indus.,
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007