Appeal No. 97-0939
Application 08/127,319
paragraph, since appellant has failed to point out any error in this rejection.
Rejections (c) & (d)
The Provisional Double Patenting Rejections
Each of the examiner’s provisional double patenting rejections is based on appellant’s
application Serial No. 08/602,913. With respect to provisional rejection (f), appellant states that “[he]
is prepared to submit a terminal disclaimer in accordance with current practice upon an
indication that any of the claims of the instant application or Application 08/602,913 are allowable”
(reply brief, page 5). No separate response is made with respect to rejection (g). 5
It has always been the policy of this Board to summarily affirm rejections that are not argued by
appellant. However, a review of the Patent Office records reveals that Serial No. 08/602,913 is now
abandoned. Therefore, the basis for the standing provisional double patenting rejections no longer
exists. Accordingly, we will not sustain these newly entered provisional double patenting rejections,
notwithstanding appellant’s failure to traverse them in the reply brief.
In the event Serial No. 08/602,913 is revived, the examiner should consider whether a new
provisional double patenting rejection based thereon would be appropriate.
5Appellant is apparently of the view that the filing of a terminal disclaimer would overcome
rejection (g) as well. However, in that provisional rejection (g) is based on 35 U.S.C. § 101, a terminal
disclaimer would not be effective to overcome this rejection in the event the application upon which it is
based were to issue as a patent.
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007