Appeal No. 2005-1195
Application No. 09/906,984
including the argument that, “[s]ince the examiner has held that
the claims of the instant application are not patentably distinct
from the claims of the 6,274,291 patent, and these claims have
been held allowable, the claims in the instant application are
allowable” (reply brief, page 1). In rebutting the aforequoted
argument, we stated that “[w]hether similar claims have been
allowed in U.S. Patent No. 6,274,291 is immaterial to the
patentability issue before us,” (decision, pages 5-6) citing In
re Giolito, 530 F.2d 397, 400, 188 USPQ 645, 648 (CCPA 1976). In
these respects, see the paragraph bridging pages 5 and 6 of our
decision. The subject request relates only to the above quoted
argument and our rebuttal thereof. In essence, it is the
appellants’ position in this request that we erred in determining
this argument to be unpersuasive and in relying on Giolito, id.
as support for this determination.
In this latter regard, the appellants attempt to distinguish
their factual circumstance from that of Giolito. For example,
the appellants stress that the claims of Giolito were merely
similar to those in a patent to another. However, even when the
involved claims are the same, it is simply immaterial in ex parte
prosecution that such claims have been previously allowed. See
In re Wertheim, 541 F.2d 257, 264, 191 USPQ 90, 97 (CCPA 1976).
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