Appeal No. 2004-0746 Page 5
Application No. 09/163,588
harassment is not a sufficient ground to uphold a double patenting rejection citing to In
re Jentoft, 392 F.2d 633, 157 USPQ 363 (CCPA 1968).
In our view, the rejections based on the judicially created doctrine of double
patenting are justified for the present application even if any patent issued from the
present application would have a term that will not exceed any of the terms of the
applied patents. In that regard, the amendment to 37 CFR § 1.321, effective April 30,
1971, provided that:
A terminal disclaimer, when filed in an application to obviate a double
patenting rejection, must include a provision that any patent granted on that
application 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.
This alienation restriction clause4 was upheld by the court in In re Van Ornum, 686 F.2d
937, 214 USPQ 761 (CCPA 1982) effectively overruling the aspect of Jentoft the
appellant relies upon to overcome the six rejections based on the judicially created
doctrine of double patenting.
For the reasons set forth above, the six decisions of the examiner to reject claims
1 to 11, 13, 14, 16 to 23, 27 to 32, 35 to 39 and 41 to 55 under the judicially created
doctrine of double patenting are affirmed.
4 The alienation restriction clause is presently set forth in 37 CFR § 1.321(c)(3).
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