Ex parte AKIBA et al. - Page 9




              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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