Appeal No. 1998-1077 Page 4
Application No. 08/458,999
created doctrine of obviousness-type double patenting as being
unpatentable over claims 13-19 of application No. 08/445,402.
Rather than reiterating the conflicting viewpoints
advanced by the examiner and appellants regarding the above-
noted rejections, we make reference to the examiner’s answer
and to appellants’ brief filed December 23, 1996 for a
complete exposition thereof.
DECISION
We shall not sustain any of the examiner’s rejections.
Our reasoning follows.
Rejection under § 112, first paragraph
At the outset, we observe that from our reading of the
answer, including the rebuttal arguments therein, we determine
that the examiner’s rejection of the appealed claims under
35 U.S.C. § 112, first paragraph is premised on the written
description requirement thereof. 2
On this record, however, the examiner has not met the
burden of establishing a prima facie case under the written
description portion of that section of the statute.
2We note that the examiner refers to this rejection as a
“new matter” rejection at page 7 of the answer.
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