Appeal No. 1999-1206 Page 11
Application No. 08/394,608
ADDITIONAL MATTERS
In the first office action (October 2, 1995, paper no. 5), the examiner rejected
claims 18 through 38 under the judicially-created doctrine of obvious-type double
patenting, as unpatentable over Aclaims 1-13 of copending application Serial No.
08/457,876. Appellants pointed out in their response to the first office action (paper no.
6, January 2, 1996), that Athe serial number [was] unknown@ to them, and its citation
was apparently a clerical error. Evidently, the examiner agreed, and no further mention
was made of the rejection. Nevertheless, we believe appellants and the examiner
should revisit this matter to determine whether the present claims and the claims of
parent application serial no. 07/512,188 (now patent no. 5,210,022) are patentably
distinct. At least some of the claims in each appear to be directed to very similar
methods. We note that there was a restriction requirement in the parent application
between methods, compounds and compositions, but that would not seem to preclude
an obviousness type double patenting rejection between the methods of the present
application and those of the patent.
Finally, we wish to express our dismay at the seemingly indifferent examination
of this application. It is axiomatic that broader claims are more vulnerable to prior art
than narrower claims, but it is not apparent from the record that the examiner
appreciated the breadth of certain of the claims (claim 36 leaps to mind) during the
prosecution of this case.
Moreover, we are troubled by the complete lack of a meaningful response to
appellants= arguments. Throughout the prosecution of this case, appellants have
maintained, among other things, that none of the references cited by the examiner
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