Appeal 2007-0906
Application 10/445,238
Obviousness-Type Double Patenting Rejection
Concerning the obviousness-type double patenting new ground of
rejection over the claims of Clarke in view of Harvey presented in the
Answer, Appellants argue independent claims 1 and 4 separately (Reply Br.
9-12). Dependent claim 6 is the only dependent claim argued separately
(Reply Br. 12-14). Thus, we select claim 1 as the representative claim for
rejected claims 1-3 and we select claim 4 as the representative claim for
claims 4, 5, and 7-13. We affirm.
In an obviousness-type double patenting rejection, the analysis
employed parallels the analysis of a § 103(a) obviousness determination.
See In re Longi, 759 F.2d 887, 892-93, 225 USPQ 645, 648 (Fed. Cir. 1985).
Appellants contend, however, that the Examiner bases the rejection
on the disclosure of Clarke rather than the claims of Clarke as a common
asserted deficiency in the obviousness-type double patenting rejection of
representative claims 1 and 4, and separately argued claim 6 (Reply Br.
9-14).
We agree with Appellants that the focus in determining the propriety
of the Examiner’s obviousness-type double patenting rejection must be on
the obviousness of the here claimed subject matter over the claims in Clarke
in light of the other relied upon prior art, including the prior art admissions
of record. Thus, the Examiner has erred to the extent that the Examiner has
referenced the non-claimed disclosure of Clarke in supporting the rejection.
However, we do not find this argument presents a reversible error in the
Examiner’s obviousness-type double patenting rejection because the
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