Appeal No. 96-3189
Application 08/396,079
42 USPQ2d 1706, 1708-10 (D. Nev. 1997). The patent law has
now been amended so that abuses of continuation practice will
not occur in cases filed after June 8, 1995, because the term
will run 20 years from the filing date of the earliest
application relied on under 35 U.S.C. § 120. Pub. L. 103-465,
sec. 534, Dec. 8, 1994. This application was filed before the
effective date of the law. In my opinion, given the
problematic nature of a laches rejection, it would have been
far better if the examiner had again noted that the claims
were allowable, which would have forced appellants either to
allow the case to issue or to file a continuation under the 20
year term. The rejection has just caused further delay to
appellants' benefit. Nevertheless, the rejection was made,
and I concur with the majority that the circumstances in this
case are special and warrant a rejection under the doctrine of
laches.
Laches requires an unreasonable and inequitable delay and
the delay must cause prejudice. Claims 1-5 and 7-23 remained
unchanged since the notice of allowance on August 26, 1993,
and, therefore, there has been unreasonable delay.
Appellants' justification that they were engaged in the
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