Appeal No. 2001-0914 Page 3
Application No. 08/869,381
patenting and neither rationale applies to the facts of this case. First, appellants argue
that any patent issuing from this application will "expire on the same day, twenty years
from the filing date of the '991 patent. See 35 U.S.C. § 154 (a) (2)." Appeal Brief, page
3. The second rationale is stated to be designed to "prevent a division of ownership of
two patents directed to the same invention." Id. Appellants argue that since ownership
is not split between the '991 patent and the present application, the second policy
rationale carries less weight. Appeal Brief, page 5.
Upon initial consideration of this appeal, a merits panel remanded the case to
the Office of the Deputy Commissioner of Patent Examination Policy for further
consideration. As a result, the examiner issued a first Supplemental Examiner's
Answer (Paper No. 26, August 30, 2001), setting forth in more detail the facts and
reasons why it is appropriate for appellants to file a Terminal Disclaimer to overcome
the obviousness-type double patenting rejection.
In response to the first Supplemental Examiner's Answer, appellants filed a
Supplemental Appeal Brief (Paper No. 27, February 20, 2002). The case was
remanded again to the examiner to consider the Supplemental Appeal Brief. The
examiner issued a second Supplemental Examiner's Answer on January 21, 2003
(Paper No. 29). Accordingly, the case is before the Board for a decision on the merits.
Discussion
Upon review of the briefing in this appeal, we find ourselves in complete
agreement with the position set forth in the Supplemental Examiner's Answer. In view
of the complete and thorough explanation as to why it is appropriate for appellants to
file a Terminal Disclaimer to overcome the pending obviousness-type double patenting
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