Appeal No. 97-0454
Application No. 08/089,375
The rejection of independent claim 6 also will not be
sustained, based upon the same reasoning.
We note in passing that in view of the reasoning set forth
above, we need not address the examiner’s allegation that the
claims contain product-by-process limitations, which add no
patentable distinction to the claims.
The Double Patenting Rejection
The presence of this rejection in the Examiner’s Answer is a
mystery to us. It was made in the first office action (Paper No.
5), to which the appellant responded by filing a terminal
disclaimer (Paper No. 6). This was duly noted on the face of the
file wrapper, and the examiner stated in the final rejection
(Paper No. 15) that the terminal disclaimer overcame the double
patenting rejection. However, the rejection was repeated in the
very paper in which its success was acknowledged, as well as in
the Examiner’s Answer, and thus its status is not absolutely
clear.
It would appear that the appellant believes this rejection
has been overcome. However, to insure that the matter is
settled, we shall take the initiative of not sustaining the
double patenting rejection, based upon the record before us.
6
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