Interference No. 103,950
patenting). Tsuruta bases its double patenting position on
claims 1-3, 5 and 9 of Nardella's U.S. Patent 5,665,085,
issued 9 September 1997, containing claims 1-29. On 30 April
1998, Nardella's assignee (Medical Scientific, Inc.)
disclaimed claims 1-3, 5 and 9 of the patent. 35 U.S.C.
§ 253. Likewise, Nardella's involved application contains a
"terminal disclaimer" which provides that any patent issued on
the application will expire on the date Nardella's '085 patent
would have expired had a disclaimer not been filed.
Our review of arguably relevant precedent of our
appellate reviewing court leaves us with some doubt as to
whether that precedent is applicable, and if so, whether it is
conflicting. Accordingly, we undertake a respectful analysis
of the case law with the view to sorting out what law we think
we should apply in this case recognizing that there is a
possibility that our appellate reviewing court reasonably
could reach a different conclusion. Also relevant is a
provision in the Manual of Patent Examining Procedure (MPEP).
For the reasons hereinafter given, we have determined that the
appellate court precedent is not controlling and that a
provision of the MPEP should be adopted as the law to be
applied in this case.
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