Appeal No. 2005-2463
Application No. 10/235,443
instant application are currently “commonly owned” for purposes of
applying an obviousness-type double patenting rejection.
Appellants assert that common ownership should be defined in
accordance with MPEP § 706.02(l)(2) (Eighth Edition, Rev. 2, May
2004) which states that:
The term “commonly owned” is intended to mean that
the subject matter which would otherwise be prior art to
the claimed invention and the claimed invention are
entirely or wholly owned by the same person(s) or
organization(s)/business entity(ies) at the time the
claimed invention was made. If the person(s) or
organization(s) owned less than 100 percent of the
subject matter which would otherwise be prior art to the
claimed invention, or less than 100 percent of the
claimed invention, then common ownership would not exist.
Common ownership requires that the person(s) or
organization(s)/business entity(ies) own 100 percent of
the subject matter and 100 percent of the claimed
invention.
In other words, where co-owners are involved, common ownership
requires that each co-owner have an interest in both the patent
which would otherwise be prior art and the application at issue.
While the cited definition of “commonly owned” appears in a
section of the MPEP that relates to an assertion of common
ownership to disqualify a reference as prior art under 35 U.S.C.
§ 103(c), appellants assert that the meaning of the term should be
consistent, whether being used in the context of 35 U.S.C. § 103(c)
or in determining whether a double patenting rejection is
appropriate. By “consistent”, appellants presumably mean
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