Appeal No. 96-3494
Application 08/160,299
to the artisan as argued by appellants. Therefore, we do not
sustain this rejection of claims 1-33.
We now consider the provisional rejection of claims 1-
33 under 35 U.S.C. § 101 as claiming the same invention as
claims 1-9, 40-48 and 79-93 of copending application Serial
No. 08/160,111.
Appellants refer to this rejection as a “provisional
obviousness type double patenting rejection,” and 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. 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 double patenting rejection can be
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