Appeal No. 1999-1430
Application No. 08/441,893
GROUNDS OF REJECTION3
Claims 16 and 23-25 stand rejected under the judicially created doctrine
of obviousness-type double patenting as being unpatentable over claims 1 and 2
of Sims.
Claims 16, and 23-25 are rejected under 35 U.S.C. § 112, first paragraph,
as based on a non-enabling disclosure.
We affirm the rejection under the judicially created doctrine of
obviousness-type double patenting. We vacate4 the rejection under 35 U.S.C.
§ 112, first paragraph.
DISCUSSION
Obviousness-type double patenting:
In response to this rejection appellants state (Brief5, page 13):
Appellants filed a terminal disclaimer on January 7, 1997.
The fee set forth in 37 C.F.R. § 1.20(d) was not paid at the
time the [sic]. A copy of the terminal disclaimer and the
appropriate fee will be filed upon notice that the Board has
reversed the [e]xaminer’s rejection of the pending claims
under 35 U.S.C. § 112, first paragraph.
3 We note as does the examiner (Answer, page 3) that the requirements of 37
CFR §§ 1.821-1.825 represent petitionable rather than appealable subject
matter. Accordingly, the Board of Patent Appeals and Interferences has no
jurisdiction to review appellants’ compliance with the rules regarding sequence
disclosures. In re Hengehold, 440 F.2d 1395, 1403-1404, 169 USPQ 473, 479-
480 (CCPA 1971).
4 Lest there be any misunderstanding, the term “vacate” in this context means to
set aside or to void. When the Board vacates an examiner’s rejection, the
rejection is set aside and no longer exists.
5 Paper No. 15, received December 18, 1997.
3
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