Appeal No. 1999-2186
Application No. 08/857,571
II. Double Patenting Rejection
Appellants’ only argument as to this rejection is, in
effect, that it is unjustified because, by their calculation,
the term of any patent issued on the present application will
expire (in October 2012) prior to expiration of the term of
the Rudduck patent (in June 2013), and thus there can be no
extension of the monopoly represented by the latter. They
assert that in view of the relative expiration dates, "the
terminal disclaimer requested in the present case is moot"
(brief, page 22).
This argument is not considered to be well taken,
essentially for the reasons given in MPEP § 804.02, Part IV,
pp. 800-26 and 27 (July 1998). Basically, there are two
reasons for requiring a terminal disclaimer in this situation:
(a) Under 35 U.S.C. § 154(b)(2), the term of a patent issued
on the present application might be extended beyond the term
of the Rudduck patent, if no terminal disclaimer is filed.
(b) The inclusion in the terminal disclaimer of a provision,
as required by 37 CFR § 1.321(c)(3), that the patent to be
granted on the present application will be enforceable only as
long as it and the Rudduck patent are commonly owned, avoids
11
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007