Appeal No. 96-3189
Application 08/396,079
the harm we rely on in this case is the delay in extending the
beginning (and expiration) of the patent term and, hence, the
delay in the public's right to ultimate free use of the
invention.
In my opinion, the rejection of all pending claims should
be sustained. Appellants state that "[a]s will be seen from
Appendix I [to the Reply Brief], all of the independent claims
entered in the last continuation application are broader than
all of the allowed independent claims" (Reply Brief, page 5).
Thus, the new claims are broader than the claims the examiner
has allowed many times. In my opinion, these claims do not
appear to be a bona fide attempt to advance the case to final
action as required by 37 CFR § 1.111(b) (1998), but are merely
another gambit to delay the issuance of the patent. Assuming
the laches rejection of claims 1-5 and 7-23 is sustained in
any judicial review, appellants will suffer little harm since
they will still have the broader claims 24-59. Presumably,
however, estoppel principles would prevent appellants from
amending the claims to return to claims that are the same as,
or not patentably distinct from rejected claims 1-5 and 7-23.
Lastly, it may be that a more appropriate action in this
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