Appeal No. 97-2610
Application 08/236,809
Accord In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA
1982). The offending situation in Schneller involved a
patent and a subsequent continuing application filed
voluntarily instead of in response to a restriction
requirement. The patent and the application contained common
disclosures and claims which all could have been included in
the patent. The claims in the application, if allowed, would
afford patent protection on an invention fully disclosed in
and covered by the claims in the patent. Under these
circumstances, the court found that the application claims, if
allowed without the filing of a terminal disclaimer, would
provide an unjustified timewise extension of the right to
exclude granted by the patent. Given the absence of a
terminal disclaimer, the court affirmed the double patenting
rejection entered against the application claims.
As indicated above, Applications 08/236,809, 08/236,835,
08/236,838 and 08/236,069 contain essentially identical
disclosures. These applications are commonly assigned and
were voluntarily filed as separate applications even though
there is no apparent reason why the claims contained in each
could not have been included in a single application. Also,
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