Appeal 2007-2205
Application 10/396,013
In this regard, Appellant affirmatively stated that the provisional
obviousness-type double patenting grounds of rejection is presented for
review on appeal in the “Grounds of Rejection to be Reviewed on Appeal”
section of the Amended Appeal Brief. Yet, at the same time, Appellant
stated in the Argument Section of the Brief that the obviousness-type double
patenting rejection was not being appealed. The Amended Brief is clearly
internally inconsistent with regard to this matter and it is not clear how the
Examiner accepted the Amended Brief as an acceptable reply to the
Notification of Non-Compliant Appeal Brief (Notification) mailed October
13, 2006, which identified a failure to argue the provisional obviousness
type double patenting rejection in a previously presented Brief as a defect
requiring correction.
In addition, the Examiner’s Answer does not clarify the record by
indicating that the obviousness-type double patenting rejection “is only
supplied to establish continuity” without presenting such a rejection for
review in the Answer and without explaining how the Amended Brief was
considered to be an acceptable reply to the October 13, 2006 Notification
(Answer 3). In further regard to this matter, we note that PTO records
reflect that U.S. Application No. 10/670,587, the subject of the provisional
obviousness type-double patenting rejection set forth in the Final Office
Action, issued as U.S. Patent No. 7,241,725 on July 10, 2007.
37 C.F.R. § 41.37(c)(1)(vi) and (vii) (2006) provide that the Appeal
Brief must set forth a “statement of each ground of rejection presented for
review” and “[t]he contentions of appellant with respect to each ground of
rejection presented for review in paragraph (c)(1)(vi) of this section,”
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