Appeal No. 2001-1712
Application No. 09/456,968
39 on appeal stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nichols in view of Newell. (Id. at page 3.)
Additionally, claim 40 on appeal stands rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nichols in view of Newell and
Kresse. (Id. at page 4.)
We affirm the double patenting rejection but reverse the 35
U.S.C. § 103(a) rejections.2
We first address the double patenting rejection. The
appellants do not contest the examiner’s double patenting
rejection of the appealed claims over the claims of the Holt
patent with any substantive argument on the merits. Rather, the
appellants’ position is that “[o]nce patentable subject matter
has been identified in the present case, [the] [a]ppellants will
file a terminal disclaimer to obviate this rejection.” (Appeal
brief, page 3.) The appellants, however, do not cite any legal
authority for the proposition that the mere offer to file a
terminal disclaimer overcomes a non-statutory double patenting
rejection. We therefore uphold the examiner’s holding (answer,
pages 2 and 4) that the mere offer to file a terminal disclaimer
does not obviate the rejection.
2 The appellants submit that “[c]laims 30-40 stand or fall
together.” (Appeal brief filed Nov. 29, 2000, paper 9, p. 3.)
37 CFR § 1.192(c)(7)(1997).
3
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007