Appeal No. 2002-0218
Application No. 09/332,415
According to the appellant (Reply Brief, page 1),
it is impossible to have a provisional final
obviousness-type double patenting rejection which
relies on a co-pending patent application which has not
yet issued . . . . 3
We do not agree. Our reviewing courts have sanctioned and
reviewed provisional double patenting rejections based upon
claims in a copending application. See, e.g., In re Longi,
759 F.2d 887, 892, 225 USPQ 645, 648 (Fed. Cir. 1985) (double
patenting rejection over claims of three copending applications
affirmed on the merits); In re Mott, 539 F.2d 1291, 1296, 190
USPQ 536, 541 (CCPA 1976)(double patenting rejection under 37 CFR
§ 101 over claims in a copending application was held correct on
the merits but reversed because rejection was made final rather
than provisional); In re Wetterau, 356 F.2d 556, 558, 148 USPQ
499, 501 (CCPA 1966)(affirming provisional double patenting
rejection over claims in a copending application on the merits).
Therefore, it is our determination that the final provisional
obviousness-type double patenting rejections in question are
properly before us. However, the appellant has not disputed the
factual findings and conclusions set forth by the examiner.
3 We note that a decision affirming-in-part and reversing-
in-part the examiner’s rejections of the claims in copending
Application Serial No. 09/321,390 was mailed in May, 2003.
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