Appeal No. 2002-0798 Page 8
Application No. 09/107,688
In the Appeal Brief received June 4, 2001 (Paper No. 15), applicants do not
identify the extant double patenting rejection as presenting an issue for review (id.,
section VI). Applicants simply do not argue this rejection in their Appeal Brief; nor does
the examiner repeat or refer to the double patenting rejection in the Examiner's Answer
(Paper No. 16). It is as though applicants and the examiner lost sight of this rejection,
which "evaporated" from the face of the file wrapper.
On return of this application to the Examining Corps, we recommend that the
examiner revisit the issue of obviousness-type double patenting. In Paper No. 9,
received October 11, 2000, applicants argued that the provisions of 35 U.S.C. § 121
preclude obviousness-type double patenting here in view of a restriction requirement
entered during prosecution of the '241 patent (id. at page 12). That argument fell short,
however, of showing the line or lines of demarcation in the restriction requirement. Nor
did applicants establish that the instantly claimed methods correspond to an invention
non-elected during prosecution of the '241 patent. Nor does it appear that the examiner
found applicants' argument persuasive, because the obviousness-type double patenting
rejection was repeated in Paper No. 11 at page 25.
On the contrary, it would appear that the subject matter of the instant claims
bears close relationship to the subject matter of the '241 patent claims. This can be
seen by comparing claim 13 on appeal with claims 1 and 2 of U.S. Patent 5,780,241:
Claim 13 on appeal * Claims 1 and 2 of the '241 Patent
*
13. A method for preparing a chemical library comprising:* 1. A method for preparing a chemical library
*comprising:
reacting a mixture of at least four chemical*
reactive compounds with at least one scaffold moiety to*reacting a mixture of at least four chemical reactive
provide a mixture of reaction products; *compounds with a scaffold moiety to provide a mixture of
*reaction products; and
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