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In re Kaplan - 789 F.2d 1574 (Fed. Cir. 1986)

Rule:

All proper double patenting rejections, of either same invention- and obviousness-type, rest on the fact that a patent has been issued and later issuance of a second patent will continue protection, beyond the date of expiration of the first patent, of the very same invention claimed therein (same invention type double patenting) or of a mere variation of that invention which would have been obvious to those of ordinary skill in the relevant art (obviousness-type double patenting). In the latter case, there must be some clear evidence to establish why the variation would have been obvious which can properly qualify as "prior art." Even if obviousness of the variation is predicated on the level of skill in the art, prior art evidence is needed to show what that level of skill was.

Facts:

Appellants filed a single claim patent application for a process or method that improved the catalytic process of certain substances; the catalytic process was patented by one appellant. The "new" process was not claimed in the catalytic process patent, but it was disclosed in the patent specification, because it was part of the "best mode" of practicing the catalytic process. The United States Patent and Trademark Office Board of Patent Appeals and Interferences (PTO) ultimately rejected, under 37 C.F.R. § 1.196(b), the single claim of appellants' application on grounds of double patenting. 

Issue:

Did the PTO err in rejecting the single claim of appellants' application on grounds of double patenting?

Answer:

Yes

Conclusion:

The Court held that because the same invention held by one appellant was not being claimed, and because there was no proper evidence to show that the claim was for a mere obvious variation of what was claimed in appellant's patent relied upon to support the rejection, double patenting was not present.

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