Appeal No. 2005-0393
Application 09/536,728
The examiner argues that Stähle discloses a 2-(substituted phenylimino)
imidazolidines which are structurally similar to the claimed compounds. Answer, p. 6.
Here, we find the examiner’s rejection to be less than a model of clarity. Thus, we
remand Rejection III to the examiner to provide a more lucid explanation of his position.
IV.
We find that the appellants do not contest the examiner’s provisional, obvious-
type double patenting rejection. Brief, pp. 3-4. Rather, the appellants state that should
U.S. Application No. 09/976,917 issue as a patent and, should said patent contain any
of the provisionally-rejected claims at the time of issue, a terminal disclaimer will be
filed. We point out that said application issued as U.S. Patent No. 6,602,897 on August
5, 2003. We further point out the claims in said patent are directed to a method of using
the compounds disclosed therein. Since the compound claims 15-21 and 27-29 of
Application No. 09/976,917 are not present in U.S. Patent No. 6,602,897, we remand
the provisional double-patenting rejection to the examiner to consider whether it should
be reinstated as non-provisional, double-patenting rejection.
Accordingly, we remand Rejection IV to the examiner.
This decision contains a new ground of rejection pursuant to 37 CFR § 41.50(b)
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