Appeal No. 2004-0912
Application No. 09/942,061
position is that “Applicant agrees to file a terminal disclaimer in this application
relating to U.S. Patent No. 6,282,992.” (Brief, p. 11). However, Appellant does not
cite any legal authority for the proposition that the mere offer to file a terminal
disclaimer overcomes a rejection based on the judicially created doctrine of
obviousness-type double patenting. We therefore uphold with the Examiner’s
rejection.
We now turn to the remaining double patenting rejections. As identified above,
the Examiner also rejected claims 21 to 25, 40, 41 and 57 to 59 under the judicially-
created doctrine of obviousness-type double patenting over other patents and
copending applications.4 An obviousness-type double patenting analysis entails two
steps: (1) determine the differences between the subject matter of the pending and
patented claims and (2) determine whether the differences render the claims patentably
distinct. Eli Lilly and Co. v. Barr Labs. Inc., 251 F.3d 955, 968, 58 USPQ2d 1869,
1878 (Fed. Cir. 2001). Claims are not patentably distinct, and thus properly rejected
for obviousness-type double patenting, when the subject matter of those claims is
obvious over, or anticipated by, the subject matter of the patented claim. Id.
4 Our discussion also applies to the provisional obviousness-type double patenting rejections that have
been applied in the present record.
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