Appeal No. 1997-1416
Application 08/277,386
of the patent granted on the copending application.
Appellants do not contest the merits of the rejection, per se,
but appellants argue instead that there is no authority for
such a provisional rejection.
As noted above, the copending application upon which the
provisional rejection was based has now issued as a patent.
Therefore, the provisional aspects of the rejection are
removed. We have considered the claims of the issued patent
and agree with the examiner that, to a great extent, the
appealed claims are merely the apparatus claims of the patent
redrafted as corresponding method claims. The similarity
between the device claims of the patent and the computer
implemented method of the appealed claims is sufficient to
establish a prima facie case of improper double patenting.
Since a prima facie case has been established, and since
appellants have not responded to the rejection on the merits,
we sustain the examiner’s rejection of all the appealed claims
on double patenting. As noted by the examiner, a terminal
disclaimer would overcome this rejection.
In conclusion, the rejection of the appealed claims under
35 U.S.C. § 101 is reversed, the rejection under 35 U.S.C. §
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