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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