Ex parte GUTTAG et al. - Page 6

          Appeal No. 96-1741                                                          
          Application 08/160,111                                                      

          32, 34-36, 38, 39, 53-64, 71, 73-75, 77 and 78.  Accordingly,               
          we affirm.                                                                  
          We consider first the provisional rejection of claims                       
          1-25, 27-64 and 66-93 on the judicially created doctrine of                 
          obviousness-type double patenting as being unpatentable over                
          claims 1-97 of copending application Serial No. 08/160,298.                 
          According to the examiner, the only difference between the                  
          claims of this application and the claims of the copending                  
          application is the recitation of a shifter in the claims of                 
          the copending application in place of the barrel rotator                    
          recited in the claims in this application.  The examiner                    
          provides a reason as to why it would have been obvious to the               
          artisan to use a barrel rotator in place of the claimed                     
          shifter of the copending application [answer, pages 3-4].                   
          Appellants’ only response to this rejection is to                           
          indicate that the rejection should be held in abeyance until                
          all other issues have been resolved in accordance with the                  
          procedure of MPEP  804 [brief, page 4].  The section of the                
          MPEP referred to by appellants merely provides guidance to the              
          examiner as to what to do when an application is otherwise                  
          ready for allowance except for the double patenting rejection.              

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