Appeal No. 2005-0638
Application No. 10/087,301
coating (id.). The examiner recognizes that Application No.
09/757,955 has now become U.S. Patent No. 6,737,113
(Leonard)(Answer, page 7). However, the examiner has not changed
the “provisional” rejection status (see footnote 2 above).
Appellant is unsure whether appellate jurisdiction applies
to a “provisional” rejection (Brief, page 13). It is well
settled that “provisional” rejections may be made by the examiner
during ex parte prosecution, with resulting appellate
jurisdiction residing with this Board. See Ex parte Karol, 8
USPQ2d 1771, 1773 (Bd. Pat. App. & Int. 1988).
As correctly argued by appellant (Brief, page 14; Reply
Brief, page 4), claims 63-65, 67 and 68 are no longer pending in
Application No. 09/757,955, now U. S. Patent No. 6,737,113 (see
Leonard, where claims 1-62 are directed to a method for improving
the uniformity of a wet coating on a substrate). Furthermore, in
a proper rejection for obviousness-type double patenting, the
examiner must rely on the claims of the conflicting application
as the basis for the obviousness conclusion, resorting to the
disclosure only for an explanation or meaning of terminology.
See Eli Lilly & Co. v. Barr Laboratories Inc., 251 F.3d 955, 968,
58 USPQ2d 1869, 1878 (Fed. Cir. 2001)(en banc); In re Goodman, 11
F.3d 1046, 1052, 29 USPQ2d 2010, 2015 (Fed. Cir. 1993). From the
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