Appeal No. 1997-3951
Application 08/238,987
appellants’ “intent to file a terminal disclaimer.” See also appellants’ submission on
August 9, 1995 (Paper No. 15), page 7 “Applicants are willing to file a terminal
disclaimer in accordance with 37 CFR § 1.321(b) . . . .” From the Advisory Action,
it appears the examiner withdrew the enablement rejection in regard to claims 6
and 12 on the basis of the proferred terminal disclaimer. For reasons not apparent
from this record, the examiner did not repeat and maintain the obviousness-type
double patenting rejection in the Examiner’s Answer. We do not find any indication
in the record that the examiner intended to withdraw the rejection with the thought
that appellants need not file a terminal disclaimer.
In making this new ground of rejection, we are only restoring the record to the
state in which it was prior to this appeal, i.e., all the claims stand rejected on
obviousness-type double patenting grounds on the basis of the claims of the `638
patent. As noted, appellants have acquiesced in this rejection.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37 CFR
§ 1.196(b)(amended effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg.
53,131, 53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122
(Oct. 21, 1997)). 37 CFR § 1.196(b) provides that, “A new ground of rejection shall
not be considered final for purposes of judicial review.”
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