Appeal No. 2000-2176
Application No. 08/436,526
application to the examiner for reconsideration of the double patenting rejection in view
of a paper filed by appellants on August 28, 2002.
DISCUSSION
Appellants appear to question the propriety of appellate review of a provisional
double patenting rejection, citing In re Wetterau, 356 F.2d 556, 148 USPQ 499 (CCPA
1966). However, in Wetterau the United States Court of Customs and Patent Appeals
determined that the Patent Office practice with respect to “provisional” double patenting
rejections (i.e., double patenting rejections over claims in copending patent
applications) benefits both an applicant and the Office, by identifying possibility of
double patenting at an early date and by hastening prosecution. See id. at 558 n.2, 148
USPQ at 501 n.2. The court reviewed the merits of the provisional double patenting
rejection before it, while acknowledging that the underlying rejection “might be obviated
by future events,” such as the reference application failing to issue as a patent. Id. at
558, 148 USPQ at 501.
The Board has long heard appeals of provisional double patenting rejections
where, as here, the claims of the reference application were also rejected over prior art.
See Ex parte Karol, 8 USPQ2d 1771, 1773 (Bd. Pat. App. & Int. 1988) (“In our view, the
policy reasons enunciated in Wetterau apply equally to the instant case.”).
We are thus unpersuaded that we erred in ruling on the provisional double
patenting rejection that was before us. We further note that appellants recognized the
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