Appeal No. 2003-1402
Application No. 09/034,969
in MPEP § 1490. However, although the paper lists the patents cited in the rejection,
the format relates to obviating a provisional double patenting rejection over “a pending
second application,” rather than “a prior patent.” The paper thus states a disclaimer
with respect “to the grant of any patent granted on U.S. Patent Nos. 5,798,931;
6,073,840 [and others].” Patents are not granted on U.S. patents, of course, but on
applications.
Perhaps more important, the paper states that any patent granted on the instant
application shall be enforceable so long as “any patent granted on the second
application are commonly owned.”
37 CFR § 1.321 provides, in pertinent part:
(c) A terminal disclaimer, when filed to obviate a judicially created double
patenting rejection in a patent application or in a reexamination proceeding,
must: ...
(3) Include a provision that any patent granted on that application
or any patent subject to the reexamination proceeding shall be enforceable only
for and during such period that said patent is commonly owned with the
application or patent which formed the basis for the rejection.
Because the paper fails to state that any patent granted on the instant
application shall be enforceable only for and during such period that said patent is
commonly owned with the patents which formed the basis for the rejection, we hold that
the requirements for a terminal disclaimer to overcome the double patenting rejection
have not been met. Further, the ambiguity related to the “grant of any patent granted
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