Ex parte WILLIAMS et al. - Page 7




          Appeal No. 1998-0671                                                        
          Application 08/285,328                                                      

          case of obviousness-type double patenting involving a patent, the           
          patent claims are fixed and are readily available from the patent.          
          However, in the case of provisional obviousness-type double patenting       
          involving the claims of an application, the application claims are          
          subject to amendment at any time.  Thus, unless the Examiner provides       
          a copy of the claims in the applications over which the present             
          claims are rejected, someone would have to track down the application       
          files and determine the state of the claims in those applications at        
          the time of the rejection.  It is the Examiner's responsibility to          
          provide the evidence for the rejection.  Nevertheless, since the            
          examiner's answer in this case was entered April 14, 1997, which is         
          after the March 4, 1997, issue date of the '821 patent, we use the          
          claims of the '821 patent for comparison, i.e., the provisional             
          rejection becomes a regular rejection.  Similarly, the examiner's           
          answer in this case was entered after the January 24, 1997, date of         
          the appeal brief in the '324 application and we use the appealed            
          claims of the '324 application, which was decided by this panel.            
          That is, we assume the Examiner maintained the obviousness-type             
          double patenting rejection in the examiner's answer over the latest         
          sets of claims in the '324 application and the '326 application ('821       
          patent).                                                                    

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