Appeal No. 1998-0425 Page 14
Application No. 08/272,527
applicant may file a "terminal disclaimer," foregoing that
portion of the term of the second patent that extends beyond
the term of the first. Berg, 140 F.3d at 1431-32, 46 USPQ2d
at 1229.
Thus, if a claim sought in the application is not
identical to yet not patentably distinct from a claim in an
inventor's earlier patent, then the claim must be rejected
under "obviousness-type" double patenting rejection. See
Berg, 140 F.3d at 1431, 46 USPQ2d at 1229; In re Braat, 937
F.2d 589, 592, 19 USPQ2d 1289, 1291-92 (Fed. Cir. 1991);
Goodman, 11 F.3d at 1052, 29 USPQ2d at 2015; Vogel, 422 F.2d
at 441, 164 USPQ at 622. In determining whether a claim
sought in the application is patentably distinct from the
claims in an inventor's earlier patent a variety of tests have
been utilized. In Berg, 140 F.3d at 1433-34, 46 USPQ2d at
1230-31 and In re Emert, 124 F.3d 1458, 1461-62, 44 USPQ2d
1149, 1152 (Fed. Cir. 1997), a "one-way" test was applied.
Under this "one-way" test, the examiner asks whether the
application claims are obvious over the patent claims. In
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