Appeal 2007-2848
Application 10/765,106
Obviousness-type Double Patenting
Claims 1-15 stand rejected under to doctrine of obviousness-type
double patenting over claims 1-5 of U.S. Patent No. 6,723,001.
The Examiner contends:
Although the conflicting claims are not identical, they are not
patentably distinct from each other because claims 1-5 of U.S.
Patent No. 6,723,001 have the ratio of the width to the length
and a club being a putter as the only differences. The ratio is the
feature which made claims 1-5 of U.S. Patent No. 6,723,001
allowable. As such it would be obvious to remove this element
of structure since all ovals with [sic] have a ratio of width to
length and now the claims do not require it. Claims 1-2 of this
application contain all the elements of structure which where
[sic] claimed in claims 1, and 4-5 of patent 6,723,001.
(Answer 4-5.)
Appellant contends that all of the pending claims include an alignment
system limitation with a distinct shape over that claimed in U.S. Patent No.
6,723,001 ('001). (Br. 7.) The Examiner rebuts this argument, stating that
the alignment system of claim 5 of the '001 patent comprises cross hairs with
a first line bisecting the forward and rearward edges with a second line
perpendicular to the first line. (Answer 22-23.)
“A later . . . claim is not patentably distinct from an earlier patent
claim if the later claim is obvious over, or anticipated by, the earlier claim.”
See Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968, 58 USPQ2d 1869,
1878 (Fed. Cir. 2001) See also In re Goodman, 11 F.3d 1046, 1053, 29
USPQ2d 2010, 2016 (Fed. Cir. 1993) (“[The application claims] are generic
to the species of invention covered by claim 3 of the patent. Thus, the
generic invention is ‘anticipated’ by the species of the patented invention.
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