Ex parte MAZZOLA - Page 6




          Appeal No. 1997-3350                                                        
          Application No. 08/522,164                                                  


          examiner's answer, as permitted under 37 CFR                               
          1.193(b)(1)(1997), with a view toward placing this application              
          in a condition appropriate for a decision on appeal.                        
               Second, with regard to the rejection based upon the                    
          combination of Mazzola and Pepe, we note that both the instant              
          application and the Mazzola reference appear to have the same               
          inventive entity; that is to say Louis R. Mazzola is the sole               
          inventor in both instances.  Under these circumstances, the                 
          Mazzola reference does not appear to qualify as "prior art"                 
          under any of the provisions of 35 USC  102 and, therefore,                 
          does not constitute a proper basis for rejection under 35 USC               
           103.  However, the claims of the reference may, in                        
          combination with  the Pepe reference, constitute a basis for                
          rejection under the judicially-created doctrine of                          
          obviousness-type double patenting.                                          
               Accordingly, the Mazzola-Pepe rejection is reversed to                 
          the extent that it is based upon 35 USC  103, and we remand                
          the application to the examiner to consider whether an                      
          obviousness-type double patenting rejection would be                        
          appropriate in this case.                                                   


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