Appeal No. 1997-3358 Page 6
Application No. 08/477,742
states his intent to file a terminal disclaimer, if claims 1-
20 are allowed, to obviate the obviousness-type double
patenting rejection. (Appeal Br. at 14.)2
For the foregoing reasons, we are not persuaded that the
examiner erred in provisionally rejecting claims 21-23 and 25-
34 under the judicially created doctrine of obviousness-type
double patenting as being unpatentable over claims 1-20 of
U.S. Patent Application No. 08/224,407. Therefore, we affirm
pro forma the provisional rejection of claims 21-23 and 25-34
under the judicially created doctrine of obviousness-type
double patenting. Our affirmance is based only on the
arguments made in the briefs. Arguments not made therein are
not before us, are not at issue, and are thus considered
waived. Next, we address the obviousness of claims 21-40.
Obviousness of Claims 21-40
2A patentee or applicant may disclaim or dedicate to the
public the entire term, or any terminal part of the term of a
patent under 35 U.S.C. § 253. “The statute does not provide
for a terminal disclaimer of only a specified claim or claims.
The terminal disclaimer must operate with respect to all
claims in the patent.” M.P.E.P. § 804.02.
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