Appeal 2007-0499
Application 10/515,345
representative claim 1 essentially abuts the 10 weight percent upper end
point of the range of weight percent for the anionic surface-active additive
recited in claim 1 of the copending application. Given the adjacency of the
here-claimed range and that in the copending application claim 1, the
Examiner asserts that representative claim 1 is prima facie obvious over the
claims of the copending application.
Therefore, the issue before us with respect to this rejection is:
Whether Appellants have identified reversible error in the Examiner’s
provisional obviousness-type double patenting rejection? We answer that
question in the negative and we affirm the Examiner’s obviousness- type
double patenting rejection, on this record.
In obviousness-type double patenting rejections, the analysis and
issues involved correspond to those encountered in § 103(a) obviousness
determinations, albeit the applied claims of the copending application or
patent involved, are not required to be prior art to the rejected claims. See
In re Longi, 759 F.2d 887, 892 n.4, 225 USPQ 645, 648 n.4 (Fed. Cir.1985).
In this regard, it is our view that the use of a slightly higher amount of
anionic surface-active additive than expressly disclosed and embraced by
claim l of the copending application would have been well within the
ordinary skill of an artisan seeking to determine the result effectiveness and
workability of employing differing amounts of this component in the
pigment formulation.3 When the difference between the claimed invention
3 Appellants refer to the proviso of appealed claim 1 as a difference that is
not suggested (Br. 6 and 7). However, the claim 1 proviso is not operational
when some surface active additive is present in the preparation, as in claim 1
of the copending application. Appellants do not argue the other
compositional requirements of component B of appealed claim 1 as
7
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