Appeal No. 97-3703 Page 12
Application No. 08/110,349
commonly owned patent when the issuance of a second patent
would provide an unjustified extension of the term of the
right to exclude granted by the patent. In order to overcome
an "obviousness-type" double patenting rejection, an applicant
may file a "terminal disclaimer" foregoing that portion of the
term of the second patent that extends beyond the term of the
first. See In re Berg, 140 F.3d 1428, 1432, 46 USPQ2d 1226,
1229 (Fed. Cir. 1998). The examiner contends that the claims
on appeal are obvious
variants of claims 1 and 15 of the Armington patent and that,
accordingly, issuance of a patent on the claimed subject
matter, without a terminal disclaimer, would provide an
unjustified extension of the term of the right to exclude
already granted by the Armington patent.
Claims 1 and 15 of the Armington patent recite, in
summary, a cushioning dunnage conversion machine comprising a
frame, a forming assembly, a stock supply assembly, a
pulling/connecting assembly, and a cutting assembly and the
subcombination of a cutting assembly for the cushioning
dunnage machine, respectively. Both of these patent claims
differ from the claims on appeal in that, inter alia, neither
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