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). - 7 -Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007