Appeal No. 2006-0881
Application No. 09/928,139
The examiner’s obviousness position with respect to the obviousness-type double
patenting rejection parallels her obviousness position with respect to the § 103 rejections. Thus,
the former rejection is deficient for reasons previously explained with respect to the latter
rejections. We also cannot sustain, therefore, the obviousness-type double patenting rejection of
claims 1-8 as being unpatentable over claim 1 of Zavareh ‘453 in view of the Miller Chemical
Abstracts, the Barry Chemical Abstracts or Miller ‘261 in view of Harris.
In conclusion, we have not sustained any of the rejections advanced on this appeal
because the examiner has failed to carry her initial burden of establishing a prima facie case of
unpatentability with respect to each of these rejections. See In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
ADDITIONAL MATTER
On page 6 of the supplemental brief, the appellants request “acknowledgement of
Appellants’ claim to foreign priority for both the GB 9602174.6 and GB 9618836.2 British
applications under 35 U.S.C. § 119 in the subject ‘139 application.”
The issue of foreign priority benefits is not relevant to any of the rejections before us in
this appeal.4 Therefore, the issue raised by the appellants’ afore-quoted request is petitionable
rather than appealable. See MPEP § 1201.
Under these circumstances, it would not be appropriate for this panel of the Board to
entertain on the merits the request under consideration.
4 For example, each of the references relied upon by the examiner in her rejections of the independent claim on
appeal would be available as prior art regardless of whether the appellants’ foreign priority claim is acknowledged
or perfected.
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