Appeal No. 2005-0499
Application No. 09/812,733
Claims 29-38 were rejected in the Final Rejection, claims 29-32 and 34-38 under
35 U.S.C. § 101 (double patenting) and claim 33 for obviousness-type double patenting.
The rejection of claims 29, 34, 35, 37, and 38 under 35 U.S.C. § 101 has been
withdrawn (Answer at 4).2 We infer that the rejection of claim 33 has also been
withdrawn, because claims 29, 33, and 35 are indicated as being allowed (id.). We
infer, further, that the examiner considers claim 35 to represent allowable subject
matter, but is not now allowed, as it depends from rejected claim 34.
The status of claims 30-32 and 36 is unclear. The examiner states (Answer at 5)
that the claims are “withdrawn from consideration,” and no rejection of the claims is
referenced or set forth in the Answer. In any event, in view of the Brief (with Appendix
of Claims), appellants are not maintaining the appeal with respect to the final rejection
of claims 30-32 and 36.
The sole rejection that is the subject of this appeal is thus that applied against
claims 34, 37, and 38, under 35 U.S.C. § 103 as being unpatentable over Emer.
OPINION
At the outset, we emphasize that the claims on appeal are claims 34, 37, and 38
as they stand, which is as they stood at the time of the final rejection (i.e., the
2 The Answer states that the rejection is withdrawn “in view of the Terminal Disclaimer.” As noted,
correctly, in the Final Rejection, a terminal disclaimer cannot overcome a double patenting rejection under
35 U.S.C. § 101. We consider the withdrawal of the rejection as indication that the examiner found
appellants’ position in the Brief to be persuasive.
-3-
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007