Appeal No. 2001-1786
Application 08/420,796
indicate that it applies to any continuation applications filed
with respect to the parent application [answer, page 8].
We agree with the examiner on this point. As noted by
the examiner, this question is covered in section 1490 of the
Manual of Patent Examining Procedure (MPEP). Although
appellant’s argument would be correct under current practice
involving continued prosecution applications (CPAs) or requests
for continued examination (RCEs), the current practice does not
apply to file wrapper continuations filed under 37 CFR § 1.62.
Since a file wrapper continuation is given a new application
number, it is considered to be a different application from its
parent application for purposes of a terminal disclaimer.
Therefore, since appellant’s terminal disclaimer does not
indicate that it applies to any continuations filed, it is not
effective with respect to this file wrapper continuation.
Thus, we consider the double patenting rejection on the
merits. The examiner’s rejection states the following:
Although the conflicting claims are not
identical, they are not patentably distinct
from each other because deletion of a
feature, with a corresponding loss of
function has been held to be obvious. Note
In re Porter, 20 USPQ 298. For example,
claim 1 of the patent is substantially
similar to claim 28 of the instant
application yet patented claim 1 further
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