Appeal No. 95-4633
Application 07/135,067
applications and that their actions were dictated by the PTO.
First, we must point out that the part of our decision referred to above was not intended to point
to any impropriety in the prosecution of the applications by counsel for appellants. The remarks were
intended to merely point out that counsel was controlling the rate of prosecution of the applications in the
PTO in view of the fact that alternative courses of action were open to counsel and that counsel voluntarily
elected a particular course of action such as abandoning application K/D Application I rather than
appealing the examiner’s final rejection and/or petitioning for supervisory review of the examiner’s
requirement under 37 CFR § 1.78(c). These actions were in no way controlled by any action taken by5
the PTO.
Second, while we agree that a double patenting rejection had not been made until the first Office
action in this application (Paper No. 8, ¶¶ 16 and 17), the double patenting issue has been present since
the first Office actions in the first K/D and K/M applications by virtue of the facts that both applications
were commonly owned and that the examiner made requirements under 37 CFR § 1.78(c). At that time,
the examiner made a determination that the claims of both applications were directed to a “single inventive
concept.” Under PTO practice and procedure, any requirement under 37 CFR § 1.78(c) involving
We note that the examiner made a similar requirement under 37 CFR § 1.78(c) in the first Office action in K/M5
Application I noting the claims in that application were in conflict with the claims in K/D Application I. However, the
examiner dropped the requirement in the second Office action of K/M Application I while at the same time maintaining
the requirement in the second Office action of K/D Application I. It would appear from these facts that grounds existed
for a petition for supervisory review since it appears to be inconsistent for the examiner to assert that the claims in K/D
Application I are in conflict with the claims in K/M Application I while at the same time not asserting that the claims in
K/M Application I are in conflict with the claims in K/D Application I.
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