Appeal No. 96-1741
Application 08/160,111
The MPEP does not relieve an applicant of the burden of
arguing the merits of the rejection. In fact, section 804
specifically states that the merits of a provisional double
patenting rejection can be addressed by the examiner and
applicant without waiting for a patent to issue [page 800-15,
section B]. Thus, the merits of the obviousness-type double
patenting rejection can be considered even though there are
other rejections pending against the claims.
Since the examiner has pointed out the difference
between the claims of this application and the claims of
copending application Serial No. 08/160,298 and the
obviousness of this difference, and since appellants have
provided no substantive response to this rejection, we are
constrained on this record to sustain the examiner’s
provisional rejection of claims 1-25, 27-64 and 66-93 on the
ground of obviousness-type double patenting.
We now consider the rejection of claims 1, 7-11, 14-
25, 32, 34-40, 46-50, 53-64, 71 and 73-93 under 35 U.S.C. §
103. As a general proposition in an appeal involving a
rejection under 35 U.S.C. § 103, an examiner is under a burden
to make out a prima facie case of obviousness. If that burden
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