Appeal No. 96-2179 Page 24
Application 07/613,466
been obvious to a person having ordinary skill in the art.
Consequently, we reverse the double-patenting rejection of
claims 25-37 and 49-61 on the merits.
E. Double-patenting - Callaghan '497
12. Appellants have chosen a prosecution strategy that
places virtually identical disclosures on separate prosecution
tracks. Cf. Berg, ___ F.3d at ___, 46 USPQ2d at 1233. They
have also chosen a claim format in both the present
application and in their patent that forces us to correlate
the claims to nearly identical disclosures. We see no
principled basis by which we can ignore the fact that
separately claimed functions are both programmed into an
identically disclosed means. Consequently, we must affirm the
rejection of claims 25-37 under the obviousness-type double-
patenting doctrine.11
11 Since a terminal disclaimer filed to overcome this
rejection would apply to the entire resulting patent and not
simply these claims, we will not enter a new ground of
rejection pursuant to 37 CFR § 1.196(b) for the method claims.
Given our affirmance of the indefiniteness rejection for
claims 1-24, we will not reach those claims either. We
caution the examiner, however, to ensure that a terminal
disclaimer is required in any related applications (e.g.,
applicant-initiated divisionals) with substantially similar
claims. We remind Appellants that our findings in this
opinion would be material to the prosecution of any related
applications. 37 CFR § 1.56(b).
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