In re Ornum

I cannot agree with the majority position that 37 CFR 1.321(b) (Rule 321(b)) is valid. I am of the conviction that the regulation is invalid and unenforceable and that appellants’ terminal disclaimer is effective to overcome the obviousness-type double patenting rejections of claims 1-3, 6, and 7 *949(assuming such rejections are justified). Thus I would reverse the double patenting rejections and, by necessity, reach the 35 U.S.C. § 102(c) rejection which I would reverse for the reasons set forth below.

Appellants challenge the validity of Rule 321(b) arguing that it is contrary to law in that it…