Appeal No. 1998-2224
Application No. 08/624,147
D. The Rejection for Obviousness-type Double Patenting
The examiner finds that the claims on appeal differ only
from the claims present in co-pending application no.
08/419,317 (the parent application of this application) by the
recitation of a cooling fluid in the claims here on appeal
(Answer, page 5). The examiner finds that Dexheimer teaches
the use of biphenyl oxide as a coolant medium (id.). From
these findings, the examiner concludes, under the judicially
created doctrine of obviousness-type double patenting, that
the claims on appeal are not patentably distinct from those5
pending in application no. 08/419,317 since use of a cooling
fluid would have been obvious to control the reaction
temperature (id.).6
5Although appellants state that the claims should be
grouped into two groupings (Brief, page 8), no specific,
substantive reasons have been presented for the separate
patentability of any individual claim in this ground of
rejection (Brief, page 20). Accordingly, pursuant to the
provisions of 37 CFR § 1.192(c)(7)(1995), we select claim 1
from this grouping and decide this ground of rejection on the
basis of this claim alone.
6The examiner notes that this is a provisional rejection
since the conflicting claims have not in fact been patented.
See the Answer, page 6; In re Wetterau, 356 F.2d 556, 557-58,
148 USPQ 499, 501 (CCPA 1966); and Ex parte Karol, 8 USPQ2d
1771, 1773-74 (Bd. Pat. App. & Int. 1988).
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