Ex parte Strolle et al.

Board of Patent Appeals and Interferences

Jan 27, 2000

07787690 (B.P.A.I. Jan. 27, 2000)

Application for patent filed November 4, 1991. 1
According to applicants, this application is a continuation-
in-part of Application 07/635,029, filed December 28, 1990,
now Patent No. 5,037,361, issued August 6, 1991; which is a
continuation-in-part of Application 07/569,029, filed August
17, 1990, now Patent No. 5,113,262, issued May 12, 1992.
1
Paper No. 46
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte CHRISTOPHER H. STROLLE,
CHANDRAKANT B. PATEL,
WERNER F. WEDAM, JUNG WAN KO,
RAYMOND SCHNITZLER and
JONH KYUNG YUN
______________
Appeal No. 1995-3702
Application 07/787,6901
_______________
ON BRIEF
_______________
Before THOMAS, RUGGIERO and GROSS, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.

ON REQUEST FOR REHEARING
Appeal No. 1995-3702
Application 07/787,690
2
This is a decision on rehearing of our original decision
in this appeal dated November 22, 1999, listed as Paper No. 43
in the file. On December 22, 1999, appellants filed a request
for reconsideration of our earlier decision. We consider this
request for reconsideration as a request for rehearing within
37 CFR
§ 1.197.
Without belaboring the point, our earlier decision
reversed the rejection of certain claims under the first
paragraph of
35 U.S.C. § 112 as well as different rejections of various
claims under 35 U.S.C. § 103. We did, however, sustain a
rejection of claims 1 through 92 and 119 through 154, which
amounted to all claims on appeal, under the judicially created
doctrine of obviousness-type double patenting as being
unpatentable over claims 8, 9, 10, 18, 20 and 21 of
appellants' prior U.S. Patent No. 5,113,262 to Strolle. Page
4 of our original opinion indicated that in accordance with
the statements made in the various briefs, appellants did not
contest the rejection. We also noted there that appellants
Appeal No. 1995-3702
Application 07/787,690
3
expressed a willingness to file a terminal disclaimer to
obviate the rejection. As of the date of our decision, no
terminal disclaimer had been filed in the present application.
Rule § 1.197(b) governs the consideration of request for
rehearing. Inasmuch as appellants do not assert that there is
any error in or are any points that we misapprehended or
overlooked in rendering our original decision, we find no
present reason to change our original decision affirming the
rejection of all claims on appeal based upon the obviousness-
type double patenting rejection. Appellants also have
presented no reason why the terminal disclaimer was not
presented before our original decision date, especially since
appellants had basically indicated in all the various briefs
filed that they acceded to the rejection. On the other hand,
since the terminal disclaimer filed on the same date as the
request for reconsideration presents matters properly decided
by the examiner, we therefore remand the application to the
examiner for consideration of the merits of, entry and proper
processing of the terminal disclaimer.
Appeal No. 1995-3702
Application 07/787,690
4
In view of the foregoing, appellants' request for
rehearing is granted to the extent that we have in fact
reviewed our findings but is denied as to making any change
therein. This application is also remanded to the examiner
for consideration of the merits of, entry and proper
processing of the terminal disclaimer.
This application, by virtue of its “special” status,
requires an immediate action. Manual of Patent Examining
Procedure (MPEP) § 708.01(d)(7th ed., July 1998).
Appeal No. 1995-3702
Application 07/787,690
5
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
DENIED and REMANDED
James D. Thomas )
Administrative Patent Judge )
)
)
)
Joseph F. Ruggiero ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Anita Pellman Gross )
Administrative Patent Judge )
JDT/cam
Appeal No. 1995-3702
Application 07/787,690
6
Robert E. Bushnell
1522 K Street, N.W., Suite 300
Washington, DC 20005-1202