Appeal 2007-1992
Application 09/318,447
patent and the claim in the later patent and determines the differences.’
Georgia-Pacific Corp. v. United States Gypsum Co., 195 F.3d 1322, 1326,
52 USPQ2d 1590, 1593 (Fed. Cir. 1999). Second, the court determines
whether the differences in subject matter between the two claims render the
claims patentably distinct. Id. at 1327, 52 USPQ2d at 1595. A later claim
that is not patentably distinct from an earlier claim in a commonly owned
patent is invalid for obvious-type double patenting.” Eli Lilly & Co. v. Barr
Labs., Inc., 251 F.3d 955, 968, 58 USPQ2d 1869, 1878 (Fed. Cir. 2001).
D. Analysis
The first step in the obviousness-type double patenting determination
is to construe a claim on appeal and a Hartman patent claim and determine
differences between them. The Examiner did not make a limitation-by-
limitation comparison of a claim on appeal and a Hartman claim and
therefore an analysis including a construction of a claim on appeal and a
Hartman claim, with a determination of the differences between them, is
absent from the record. FF 3. It was left to us to determine which earlier
claim in the commonly owned Hartman patent the Examiner determined
rendered a claim on appeal invalid for obviousness-type double patenting.
Our review of the Hartman claims (FF 2) leads us to the conclusion that,
given claim 108 on appeal as representative of the claims rejected, Hartman
patent claim 13 is the earlier claim whose subject matter most closely
matches the subject matter of claim 108 on appeal. We have also determined
the differences in subject matter between the two (FF 4).
We now proceed to the second step in the obviousness-type double
patenting determination.
13
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