Appeal No. 97-1057 Application 08/160,298 examiner as to what to do when an application is otherwise ready for allowance except for the double patenting rejection. 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. 08/160,111 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 1-27, 29-68 and 70-97 on the ground of obviousness-type double patenting. We now consider the rejection of claims 1-3, 9-13, 16- 27, 34, 36-44, 50-54, 57-68, 75 and 77-97 under 35 U.S.C. § 103. As a general proposition in an appeal involving a 7Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007