Appeal No. 1998-0346
Application No. 08/718,653
Specifically, the appellants point out that the Heung patent will
expire prior to the expiration date of any patent which may issue
from the subject application. According to the appellants,
therefore, the monopoly of the Heung patent would not be extended
by issuing a patent on their application. Further in this
regard, the appellants emphasize that a terminal disclaimer,
which the examiner would accept as obviating her obviousness-type
double patenting rejection, would not affect the expiration date
of a patent issuing from this application since this date is
prior to the Heung patent expiration date as earlier mentioned.
The appellants’ position is implicitly built upon the
proposition that the only basis for an obviousness-type double
patenting rejection and a corresponding terminal disclaimer
requirement constitutes extension of monopoly. This is
incorrect. An additional basis constitutes the potential of
harassment by multiple assignees. In re Van Ornum, 686 F.2d 937,
944-48, 214 USPQ 761, 767-70 (CCPA 1982). Also see Manual of
Patent Examining Procedure (MPEP) section 804.02 IV (July 1998).
This is why an acceptable terminal disclaimer must include a
common ownership provision pursuant to 37 CFR § 1.321(c)(3). In
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