Appeal No. 2001-0119
Application No. 09/281,870
We affirm this rejection based on the examiner’s cogent and
well-reasoned analysis.
The appellants concede that the examiner’s double patenting
rejection has substantive merit. (Appeal brief filed Feb. 16,
2000, paper 7, page 10.) The appellants further admit that no
terminal disclaimer, much less a terminal disclaimer in
compliance with 37 CFR § 1.321 (1996), has been filed in the
present application.
Under these circumstances, we must uphold the examiner’s
rejection because the appellants (1) failed to rebut the
examiner’s prima facie case of obviousness-type double patenting
with any argument and/or evidence in support of nonobviousness
and (2) failed to file any terminal disclaimer.
The appellants’ posture in this appeal is that only a
limited terminal disclaimer (i.e., a terminal disclaimer that
does not include a disclaimer of any portion of the term of any
patent issuing from the present application) should be necessary
to obviate the examiner’s obviousness-type double patenting
rejection because, under 35 U.S.C. § 154(a)(2)(2002), any patent
issuing from the present application will necessarily expire on
the same day as the Wheeler patent. (Appeal brief, pages 10-15.)
We decline, however, to issue an advisory opinion based on
hypothetical facts not properly before us. As we discussed
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