Appeal No. 2005-2667
Application 08/943,125
The examiner provisionally rejected appealed claims 43 through 576 under the judicially
created doctrine of obviousness type double patenting as being unpatentable over claims
72 through 86 of then copending application 08/943,123 (answer, pages 5-60). This application
has since matured into United States Patent 6,734,147 (‘147 patent), issued May 11, 2004.
Appellant filed a terminal disclaimer along with the reply brief on December 8, 2003, “to
overcome the double patenting rejection” (reply brief, page 9). The examiner acknowledged that
the terminal disclaimer “is proper and has been entered into the file,” but did not state the status
of the ground of rejection in view thereof in the communication mailed February 27, 2004.
Accordingly, the examiner is required to take appropriate action consistent with current
examining practice and procedure to determine whether the terminal disclaimer overcomes the
ground of rejection, and if not, to state the ground of rejection based on the appealed claims
vis-à-vis the claims of the ‘147 patent, setting forth the status of appealed claim 58 in this
respect, with a view toward placing this application in condition for decision on appeal with
respect to the issues presented.
This remand is made for the purpose of directing the examiner to further consider the
ground of rejection. Accordingly, if the examiner submits a supplemental answer to the Board in
response to this remand, “appellant must within two months from the date of the supplemental
examiner’s answer exercise one of” the two options set forth in 37 CFR §1.41.50(a)(2) (2005),
“in order to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for
which the Board has remanded the proceeding,” as provided in this rule.
We hereby remand this application to the examiner, via the Office of a Director of the
Technology Center, for appropriate action in view of the above comments.
6 The examiner did not include appealed claim 58 in this ground of rejection (answer, page 5;
Office action mailed May 24, 2002, page 7; Office action mailed December 18, 2003, page 3),
and thus this claim stands unrejected on appeal.
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