Appeal No. 1995-5082
Application No. 07/803,935
Appellants do not contest the examiner's rejection of the
appealed claims under 35 U.S.C. § 101, double patenting.
Appellants state at page 28 of the principal brief that they
"will file a terminal disclaimer at the appropriate time, in
order to overcome the obviousness-type double patenting
rejection." However, the examiner's rejection is under
35 U.S.C. § 101 and not under the judicially created doctrine
of obviousness-type double patenting. Consequently, a
terminal disclaimer cannot obviate such a rejection under
35 U.S.C. § 101. However, the examiner's statement at page 13
of the Answer that "the double patenting rejection is
maintained until the terminal disclaimer is filed and
approved" lends confusion as to the actual nature of the
examiner's rejection. Accordingly, due to the uncertainty
regarding the basis for the double patenting rejection, this
application is remanded to the examiner for the purpose of
resolving this issue.
The examiner's rejections under 35 U.S.C. § 112, first
paragraph, and 35 U.S.C. § 101 (claim 27) are reversed. The
application is remanded to the examiner for the reasons stated
above.
-4-
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007