Appeal No. 2002-0405
Application No. 07/325,269
30 of copending application Serial No. 08/960,582.20
Independent claim 21 of the copending application recites a
superconducting mixed-metal oxide manufactured using the same
method steps recited in claim 1, i.e., the method of preparing
the superconducting mixed-metal oxide of claim 3. Claim 21
includes two additional process limitations. Claims 22-30 of the
copending application depend from claim 21 and recite the same
limitations as, and, in fact, are essentially identical to,
claims 19/5 - 19/9 and 19/15 - 19/18. Whether the claims are
properly rejected on the grounds of statutory or non-statutory
double-patenting should be considered in light of In re Thorpe
and In re Best, discussed supra pp. 9-10.
19(...continued)
. . . .
. . . It is well-established that a common assignee is entitled
to proceed with a terminal disclaimer to overcome a rejection based on
double patenting of the obviousness type. . . . Since the second
patent would expire simultaneously with the first, this use of a
terminal disclaimer is consistent with the policy that the public
should be free to use the invention
as well as any obvious modifications at the end of the patent's term."
In re Longi, 759 F.2d 887, 892-94, 225 USPQ 645, 648-49 (Fed. Cir.
1985) (citations omitted).
20The prohibition against a double patenting rejection does not
apply where an applicant voluntarily files a divisional application
without a requirement for restriction by the examiner. 35 U.S.C. §
121.
20
Page: Previous 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Next
Last modified: November 3, 2007