Appeal No. 99-0633 Page 4
Application No. 08/880,247
19, if allowed in this application without a proper terminal
disclaimer, would improperly extend the protection afforded by
appellant's earlier patent (Steeley '403) or the examiner's
position that claims 1, 3 through 5, 15 and 16, if allowed in
this application without a proper terminal disclaimer, would
improperly extend the protection afforded by appellant's
earlier design patent (Steeley '600). Rather, the appellant
has filed two terminal disclaimers on August 5, 1998 and
August 10, 1998 and argues, in effect, that the filing of
these terminal disclaimers is sufficient to overcome the
double patenting rejections (brief, pages 5 through 7). The
examiner has stated that these terminal disclaimers are not
acceptable and has given reasons in support thereof (answer,
page 6). Since the terminal disclaimers were determined to be
unacceptable, and appellants have not otherwise contested the
merits of the rejection, we are constrained to summarily
sustain rejections (1) and (2).2
A copy of a proper format for a terminal disclaimer to obviate a2
double patenting rejection over a prior patent may be found on page 1400-62 of
the Manual of Patent Examining Procedure (MPEP § 1490 (7th ed., July 1988)).
We encourage the examiner and appellant to work together to get proper
terminal disclaimers filed and entered in this application to overcome the
standing double patenting rejections.
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