Appeal No. 1998-2204
Application No. 08/470,432
A timely filed terminal disclaimer in compliance with 37 CFR § 1.321(c) may be used
to overcome an actual or provisional rejection based on an obviousness type double patenting
ground provided the conflicting patent is shown to be commonly owned with this application.
See 37 CFR § 1.130(b).
CONCLUSION
To summarize, the decision of the examiner to reject claim 26 under 35 U.S.C.
§ 102(b) and claims 16-18 and 27 under 35 U.S.C. § 103 is reversed. New rejections of
claims 16-18 and 27 are entered pursuant to 37 CFR § 1.196(b).
This decision contains new grounds of rejection pursuant to 37 CFR
§ 1.196(b)(amended effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53131, 53197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. 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."
37 CFR § 1.196(b) also provides that the appellants, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two options with respect
to the new grounds of rejection to avoid termination of proceedings (§ 1.197(c)) as to the
rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a
showing of facts relating to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the application will be remanded
to the examiner. . . .
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