Appeal No. 2005-2463
Application No. 10/235,443
double patenting. Specifically, claims 13-20 and 38-47 stand
rejected under the obviousness-type double patenting doctrine as
being unpatentable over claims 1-19 of the Bennett patent.
We have carefully reviewed the entire record in this case in
light of the respective positions taken by the appellants and the
examiner on appeal. Having done so, we are compelled to reverse
the rejection at issue.
We agree with the appellants that a rejection based upon
obviousness-type double patenting doctrine is improper under the
circumstances of this case. In this regard, we note that the
instant application and the Bennett patent have entirely different
inventive entities associated with them. Moreover, according to
the record, the instant application was originally assigned solely
to the UNC1, and is now co-owned by both UNC and Du Pont2. On the
other hand, the Bennett patent is assigned solely to Du Pont.
Where different inventive entities are involved, an
obviousness-type double patenting rejection is appropriate only if
the patent and application in question are commonly owned. The
fundamental issue before us is whether the Bennett patent and the
1
1 University of North Carolina
2
2 E.I. du Pont de Nemours and Company
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007