Appeal No. 2002-0846
Application 09/503,452
Appellants submit that the appealed claims do not stand or
fall together and that claims 17, 22, 23, and 24 should be
considered separately. Hence, we consider each of these claims
in this appeal. 37 CFR § 1.192(c)(7)(8)(2000).
For the reasons set forth below, we will reverse the
rejection involving Hamano in view of Doleman. We will sustain
the provisional rejection under the judicially created doctrine
of obviousness-type double patenting.
OPINION
I. The rejection involving Hamano in view of Doleman
Appellants indicate that the claims as drafted use the
transitional language “consisting essentially of”, which limits
their process to the steps recited, and excludes process steps
that would have a material affect on the process as claimed.
Appellants state that in this respect the claims would at least
exclude the supporting rods required in Figures 1-7 of Hamano.
On pages 9-10 of the answer, the examiner disagrees and
states that the rods in Hamano are only used to maintain the loop
in their upstanding position, and states that nowhere does Hamano
suggests that the rods support the upstanding stem after a loop
is cut. The examiner concludes that Hamano does not use the rods
in any manner that would materially affect the reshaping of the
tips of the upstanding projections provided by the cutting step.
Our comments on this issue are set forth below.
We note that the language “consisting essentially of,”
renders a method claim open only to inclusion of steps that do
not materially affect the basic and novel characteristics of the
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