Ex parte GUTTAG et al. - Page 7




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


          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. 08/160,298 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 1-25, 27-64 and 66-93 on the                
          ground of obviousness-type double patenting.                                
          We now consider the rejection of claims 1, 7-11, 14-                        
          25, 32, 34-40, 46-50, 53-64, 71 and 73-93 under 35 U.S.C.                  
          103.  As a general proposition in an appeal involving a                     
          rejection under 35 U.S.C.  103, an examiner is under a burden              
          to make out a prima facie case of obviousness.  If that burden              
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