Appeal No. 2000-2008
Application No. 09/227,903
of the patent to which that claim most closely corresponds;
(2) determine the differences between that application claim
and the patent claim; and (3) in light of those differences,
determine whether the application claim is an obvious
variation of the patent claim, and if so, explain why. See
MPEP § 804, part II B.
We note that on page 8 of the brief appellant requests a
decision "as to . . . which claims would require a terminal
disclaimer." However, a terminal disclaimer under 37 CFR
§ 1.321(a), second sentence, does not apply to individual
claims, but rather to all claims in any patent to be issued.
See MPEP
§§ 804.02 and 1490.
Conclusion
The examiner's decision to reject claims 1 to 11 under
35 U.S.C. § 102(b) is reversed as to claims 1 to 5, and
affirmed as to claims 6 to 11. The application is remanded to
the examiner with regard to the double patenting rejection.
Since this decision includes a remand, it shall not be
considered a final decision. See 37 CFR § 1.196(e) and MPEP
§§ 1211 and 1213.
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