Appeal No. 96-3618
Application 08/004,598
claims of the application is fully disclosed and covered by a
claim in the patent (i.e., there has been no improvement or
modification invented after filing and the application claim
reads on subject matter which has been protected by a patent
claim); and (2) there is no reason why appellant was prevented
from presenting the same claims for examination in the issued
patent (i.e., there is no justification for extending the
protection, such as the existence of a restriction
requirement). Obviousness-type double patenting rejections
can usually be overcome with a terminal disclaimer.
Appellant only argues that the "Examiner has utterly
failed to provide clear prima facie evidence in support of his
rejections" (3dRBr15). Merely denying that a prima facie case
has been made is a non-helpful and nonpersuasive style of
argument because it does not address the merits by pointing
out the errors in the Examiner's position. In an
obviousness-type double patenting rejection, Appellant is in
the best position to distinguish the claims of the application
from the claims of the patent. Although we could technically
sustain the rejection based on a lack of argument by
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