Appeal No. 1997-3358 Page 5
Application No. 08/477,742
• obviousness of claims 21-40.
Obviousness-Type Double Patenting of Claims 21-23 and 25-34
The appellant argues, “there can be no double patenting
until there is a patent for 08/224,407.” (Reply Br. at 7.)
The examiner replies, “a provisional rejection can be used for
obvious-type double patenting rejection against ... claims in
a copending application ....” (Examiner’s Answer at 21.) We
agree with the examiner.
Claims may be provisionally rejected for obviousness-type
double patenting over claims in a commonly assigned, copending
patent application. In re Wetterau, 356 F.2d 556, 557-58, 148
USPQ 499, 501 (CCPA 1966). This is true even if the claims in
the copending application stand rejected. Ex parte Karol, 8
USPQ2d 1771, 1773 (Bd. Pat. App. & Int. 1988).
Here, the provisional rejection over claims 1-20 of U.S.
Patent Application No. 08/224,407 does not fail merely because
the claims are not yet patented. In addition, the appellant
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