Appeal No. 1996-0328
Application 08/060,891
12.” The examiner relies upon the Machon patent to describe terpolymers that have molecular weight
distributions within the scope of the claims. The rejection of claims 18 and 19 is reversed for the reasons
stated above regarding claim 22.
C. Obviousness type double patenting
1. The examiner’s and applicants’ position
On May 12, 1993, the applicants filed two applications, 08/060,783 and 08/060,891, both
claiming the subject matter directed to biaxially stretched films. In the first office action, paper no. 3, the
examiner rejected claims 1-36, all the claims in the application, over the claims 1-36 and 62 of copending
application 08/060,783 under the judicially created doctrine of obviousness type double patenting.
Applicants do not contest the merits of the rejection but contends that the rejection is not ripe for
review. Applicants’ position may be understood from the following excerpt from the Brief:
Issue I [the obviousness type double patenting rejection] is not ripe for review inasmuch
as the rejection is a provisional rejection because the allegedly conflicting claims have not yet
been patented. It is noted that a terminal disclaimer may obviate this type of rejection, however,
because no application has been allowed and the conflicting claims are also on appeal, it would
be premature for the applicant to file such disclaimer. [Bracketed material added.]64
The provisional obviousness-type double patenting rejection is affirmed.
Applicants’ argument that the provisional double patenting rejection is not ripe for review is simply
wrong. This board and its reviewing courts have sanctioned and reviewed provisional double patenting
rejections based upon claims in a copending application. E.g., In re Longi, 759 F.2d 887, 892, 225
USPQ 645, 648 (Fed. Cir. 1985) (double patenting rejection over claims of three copending applications
affirmed on the merits); In re Mott, 539 F.2d 1291, 1296, 190 USPQ 536, 541 (CCPA 1976) (double
patenting rejection under 37 CFR § 101 over claims in a copending application was held correct on the
merits but reversed because rejection was made final rather than provisional); In re Wetterau, 356 F.2d
64Appeal brief, page 6, second paragraph.
24
Page: Previous 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 Next
Last modified: November 3, 2007