Appeal 2006-2492
Application 09/916,247
invention. See In re Kahn, 441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336
(Fed. Cir. 2006). Since the Examiner has failed to provide a proper analysis
of independent claim 26 under § 103 we vacate the Examiner's rejection of
claims 29, 30, and 32 and return the application to the Examiner to provide a
proper analysis of the rejected claims over the Smith and/or Del Vecchio
references. The Examiner should also consider whether Smith and/or Del
Vecchio affect the patentability of the other claims on appeal under § 103.
Double Patenting Rejections
IV. Claims 26-29, 31, and 33 are provisionally rejected for a statutory
double patenting over the copending claims 1-6 of application 11/106,681.
V. Claims 26-36 are provisionally rejected for obviousness-type
double patenting over the copending claims 7-29 of application number
11/106,681.
Appellants do not dispute that the appealed claims are patentably
indistinct from the claims of the copending application 11/106,681. Rather,
Appellants contend that the double patenting rejections are provisional and
should be withdrawn in the present application and converted into the non-
provisional rejections in the 11/106,681 application (Br. 4). Appellants
citation to the Manual of Patenting Examining Procedure (MPEP) § 804,
part IB, does not provide a basis for withdrawing the rejections in the
present application, because these are not the sole rejections remaining in the
present case. Appellants have not substantively challenged the merits of the
stated rejections. We therefore uphold with the Examiner’s rejections.
ORDER
The rejection of claims 26-36 under 35 U.S.C. §102(b) as anticipated
by Smith is reversed.
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