Appeal No. 2003-1402
Application No. 09/034,969
The paper filed via facsimile on April 18, 2002 purports to be a terminal
disclaimer to obviate a provisional double patenting rejection over a pending second
application. The first full paragraph of the paper, after listing the patents relied upon in
the double patenting rejection, contains the sentence fragment, “Applicant has provided
a separate terminal”. Although the extraneous words are clearly an error, we agree with
appellant that the informality does not render the paper insufficient as a terminal
disclaimer. In particular, the examiner has not identified any authority (e.g., statute,
regulation, or Manual of Patent Examining Procedure (MPEP) section) in support of the
position that the “incomplete” sentence renders the paper ineffective. The informality
should be corrected; however, the sentence fragment appears to be merely extraneous
material, not related to the minimum requirements for a terminal disclaimer.1
We therefore do not sustain the examiner’s rejection, for the foregoing reasons.
We find, however, the paper filed April 18, 2002 to be defective for another reason.
Since our reasoning is different from the examiner’s, we designate the obviousness-
type double patenting rejection as a new ground, set forth infra.
1 Although the procedure was apparently not followed in the instant case, the paralegal of the
Office of the Special Program Examiner of the Technology Center having responsibility for the application
normally reviews, in the first instance, any paper submitted as a terminal disclaimer, and records it if
acceptable. See MPEP § 1409 (8th ed., Feb. 2003), under the heading “TERMINAL DISCLAIMER IN
PENDING APPLICATION PRACTICE.”
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