Appeal No. 97-1442
Application 08/353,631
later filed the instant application whose only claims are claims which are directed to the subject
matter recited in claims 11-13 of application 08/172,253. The instant obvious-type double
patenting rejection was subsequently made.
The appellant asserts that the restriction requirement made by the examiner in application
Serial No. 08/172,253 was never withdrawn as to claims 11-13 and as such a double patenting
rejection in this application is improper. The appellant has submitted (Paper No. 11) an affidavit
of Jack A. Kanz, the attorney responsible for the prosecution of the 08/172,253 application. Mr.
Kanz states:
On May 24, 1994, I received a telephone call from Examiner Ren Yan regarding
Application Serial No. 08/172,253. . . . Examiner Yen stated that he would
withdraw the restriction requirement as to Claims 19, 26 and 27 and allow claims
1-10 and 14-27. I requested that the restriction requirement be withdrawn as to all
claims. Examiner Yan refused and stated that claims 8-13 and 28-29 could only be
prosecuted in divisional applications. We agreed that claims 8-13 and 28-29 could
be cancelled by the Examiner but would be the proper subject of divisional
applications. [Affidavit of Jack A. Kanz at page 1]
The statement in the Kanz affidavit concerning the conversations between the examiner
and appellant’s attorney has not been refuted by the examiner. In view of the examiner’s verbal
refusal to withdraw the restriction requirement, we can not sustain this rejection.
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