Appeal No. 2005-2463
Application No. 10/235,443
consistent with regard to the required interest of each co-owner,
and not necessarily consistent in terms of the time frame in which
ownership is considered.
We agree with the appellants. Indeed, MPEP § 1490, which
relates to the filing of a terminal disclaimer for the purpose of
obviating a double patenting rejection of the obviousness type3,
explicity links the meaning of common ownership in a double
patenting context to the definition in MPEP § 706.02(l)(2). In our
opinion, this is dispositive of the issue before us.
Accordingly, the double patenting rejection at issue is
inappropriate because the Bennett patent and appellants’
application are not “commonly owned” as defined in MPEP
§ 706.02(l)(2). Certainly, the examiner has cited no
countervailing authority mandating that a different definition
should apply.
Since we have found that an obviousness-type double patenting
rejection is inappropriate in this case, the associated question of
obviousness becomes moot. Nevertheless, we shall consider the
3
3 In accordance with 37 CFR § 1.321(c), terminal
disclaimers are ordinarily filed for the purpose of obviating
obviousness-type double patenting rejections, and must include a
provision conditioning enforceabililty on maintenance of common
ownership.
6
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