Appeal No. 1996-2042
Application No. 08/086,602
attributed to the claimed compound of necessity must be
considered with respect to the issue of obviousness.
We also observe that the examiner imposed a new ground of
rejection of appealed claim 12 under the judicially created
doctrine of obviousness-type double patenting over claims 1-3
of U. S. Patent No. 5,281,725 issued to Andres et al.
(Andres) on January 25, 1994. See the answer at page 4. In
his supplemental answer at page 2, the examiner indicated that
“[T]he issue of US patent 5,281,725 is moot”. However, as
acknowledged by appellants, since the herein claimed compound
falls within the two-compound subgenus of patented claim 3 of
Andres and the six-compound genus of patented claim 1 of
Andres, it was appellants’ intention to take various actions
including the filing of a terminal disclaimer relative to
Andres. See pages 1 and 2 of the second supplemental brief
on appeal filed March 31, 1995. Since appellants have failed
to file the appropriate terminal disclaimer, we reimpose the
obviousness-type double patenting rejection of claim 12 over
claims 1 and 3 of Andres pursuant to our authority under 37
CFR § 1.196(b).
In summary, the examiner’s rejection under 35 U.S.C.
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