Appeal No. 2000-2176
Application No. 08/436,526
hearing and issue a new Decision noting that the provisional obviousness type double
patenting rejection has been rendered moot by the Terminal disclaimer and reversing
the Examiner’s final rejection of the claim.” However, the purpose of a request for
rehearing is to inform the Board of perceived errors in fact or law in the original
decision. See 37 CFR § 1.197(b) (the request for rehearing must “state with
particularity the points believed to have been misapprehended or overlooked in
rendering the decision and also state all other grounds upon which rehearing is
sought.”); see also Manual of Patent Examining Procedure (MPEP) § 1214.03 (Eighth
ed. Aug. 2001) (the rule limits requests to the points of law or fact which appellant feels
were overlooked or misapprehended by the Board). Needless to say, we could not
have erred in failing to consider the presence of a terminal disclaimer that had not been
filed at the time of our original decision.
Nor do we see any reason to issue a new decision which reverses the
provisional double patenting rejection. We rule on the record that is before us; our
decisions apply accordingly. Later circumstances may result in patenting of claims that
had been earlier rejected and the rejection sustained on appeal; e.g., when an
examiner finds later-submitted evidence to be persuasive in rebutting a case of prima
facie obviousness under 35 U.S.C. § 103. Appellants have identified no authority
requiring that the Board revisit an earlier decision for the sole reason that an applicant
alleges that the earlier decision would not be sustainable in view of a later, and
different, record.
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