Appeal No. 96-2673
Application No. 07/851,887
in the related applications and a determination of obviousness-
type double patenting may then be made from that measurement, or
consideration. Moreover, to the extent that our previous
decision was specific as to any particular rejection which might
be made under obviousness-type double patenting, there are now
different claims before us and the examiner has not specified how
even a single claim might be held to be obvious over any
particular claim of the related applications.
The burden is clearly on the examiner to establish
unpatentability and we must agree with appellant, at page 8 of
the principal brief, that the examiner “utterly failed to provide
any kind of reasonable explanation with respect to how each and
every one of Applicant’s various pending claims is obvious over
the claims in the three. . . patents.” Accordingly, we will not
sustain the rejection of claims 15 through 43 under obviousness-
type double patenting.
It appears that the examiner has treated this Board’s
rejections under 37 CFR 1.196(b) in the previous decision as
being written in stone and handed down from Mount Sinai, refusing
to budge one iota from, or to offer the examiner’s own reasoning
in addition to, that decision. The examiner must understand that
a rejection made under 37 CFR 1.196(b) affords an appellant an
opportunity to elect to have further prosecution before the
examiner in response to the new ground by way of amendment or a
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