Appeal 2007-0393
Reexamination Control 90/006,786
Patent 6,497,843
1 Issue
2 The Examiner contends that the terminal disclaimer is ineffective to
3 overcome a double patenting rejection based upon the 620 patent because
4 the 620 and 843 patents are not “commonly owned.”
5 Patentee contends that “common ownership” requires only that there
6 be “an owner in common or a subset of the owners of an earlier patent to be
7 owners on the disclaimed patent.” Appeal Br. 10
8 The issue before us is whether the terminal disclaimer of record in the
9 843 patent is sufficient for purposes of overcoming a double patenting
10 rejection. The specific dispositive issue is whether the 620 and 843 patents
11 are “commonly owned” as that phrase is used in § 1.321(c).
12 Precedent
13 Section 253 of 35 U.S.C. provides in relevant part:
14 A patentee, whether of the whole or any sectional
15 interest therein, may, on payment of the fee required by
16 law, make disclaimer of any complete claim, stating
17 therein the extent of his interest in such patent. Such
18 disclaimer shall be in writing, and recorded in the Patent
19 and Trademark Office; and it shall thereafter be
20 considered as part of the original patent to the extent of
21 the interest possessed by the disclaimant and by those
22 claiming under him.
23 In like manner any patentee or applicant may
24 disclaim or dedicate to the public the entire term, or any
25 terminal part of the term, of the patent granted or to be
26 granted.
27 PTO’s regulations require that a terminal disclaimer filed to overcome an
28 obviousness-type double patenting rejection must include a provision that
29 “any patent granted on that application or any patent subject to the
30 reexamination proceeding shall be enforceable only for and during such
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