Appeal No. 2005-2289 Page 8
Application No. 10/064,508
whether a claim sought in the application is patentably distinct from the claims in an
inventor's earlier patent a variety of tests have been utilized. In Berg, 140 F.3d at 1433-
34, 46 USPQ2d at 1230-31 and In re Emert, 124 F.3d 1458, 1461-62, 44 USPQ2d
1149, 1152 (Fed. Cir. 1997), a "one-way" test was applied. Under this "one-way" test,
the examiner asks whether the application claims are obvious over the patent claims. In
Goodman, 11 F.3d at 1052-53, 29 USPQ2d at 2015-16 and In re Van Ornum, 686 F.2d
937, 942-43, 214 USPQ 761, 766-67 (CCPA 1982), a test similar to the "one-way" test
was applied. Under this test, the examiner asks whether the application claims are
generic to any species set forth in the patent claims. In In re Dembiczak, 175 F.3d 994,
1002, 50 USPQ2d 1614, 1619-20 (Fed. Cir. 1999) and Braat, 937 F.2d at 593-94, 19
USPQ2d at 1292-93, a "two-way" test was applied. Under this "two-way" test, the
examiner asks whether the application claims are obvious over the patent claims and
also asks whether the patent claims are obvious over the application claims.
In our view, the examiner properly decided to apply the "one-way" test.
Accordingly, the question then before us is whether application claim 11 is patentably
distinct from claim 10 of Isoda. The appellants above-noted argument does not
particularly point out why application claim 11 is patentably distinct from claim 10 of
Isoda. In any event, our review of application claim 11 and claim 10 of Isoda leads us to
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007