Appeal No. 1998-2877
Application No. 08/567,680
OPINION
The only argument made by the appellant (Brief, pages 61
and 7) is that:
In the present application, if claims 12-16 are
allowed, the patent will expire 20 years from the
filing date of the original parent application,
which is no later than the expiration date if the
same claims had issued in the most recent parent
application. Therefore, there can be no
“unjustified timewise extension of the right to
exclude granted by a patent”.
Appellant’s argument to the contrary notwithstanding, the
examiner correctly concluded that a terminal disclaimer is
needed because of “the public policy requirement in 37 CFR
1.321 that the patent granted on this application and the
Hynecek patent ‘438 be commonly owned” (Answer, page 4). As
stated by the court in In re Van Ornum, 686 F.2d 937, 948, 214
USPQ 761, 770 (CCPA 1982), “we consider it desirable to tie
both the termination and the ownership of the two patents
together, as is required by § 1.321 . . . , and, seeing no
substantial obstacle to doing so, hold it to be a valid
regulation.” Appellant’s reliance on an expiration date based
1Appellant did not present any arguments concerning
patentable distinction of the application claims over those in
Hynecek.
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