overcome rejections made between the Sarles and Herzog
applications. Indeed, a terminal disclaimer does not overcome
a 35 U.S.C. § 103(c) rejection . A terminal disclaimer has no2
effect for a rejection available under 35 U.S.C. § 103(c),
since the basis for refusing more than one patent is priority
of invention and not an undue extension of patent term.
This interference was declared to resolve the question of
priority. At the time the Sarles application was filed, the
application was assigned to WRD Corporation. At the time the
Herzog application was filed, the application was assigned to
Kaps-All. Now, the involved Sarles and Herzog applications
are said to be commonly assigned to Kaps-All. That evidence
makes a prima facie demonstration that the inventions were not
owned by the same entity at the time either the Herzog or
Sarles invention was made.
Herzog now submits that the settlement agreement between
Sarles and Herzog establishes that Sarles was obligated to
assign its involved application to Kaps-All Packaging Systems
2 35 U.S.C. 103(c) provides:
Subject matter developed by another person, which
qualifies as prior art only under subsection (f) or (g) of
section 102 of this title, shall not preclude patentability
under this section where the subject matter and the claimed
invention were, at the time the invention was made, owned by
the same person or subject to an obligation of assignment to
the same person.
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