Ex Parte Hu (Board of Patent Appeals and Interferences, 2004) (unpublished).
In this case, Hu appealed a final rejection by an Examiner of his application for a patent on a reversible socket wrench. Hu did not dispute that some of the appealed claims were “patentably indistinct” from claims in one of his prior patents. However, Hu agreed to “file a terminal disclaimer.”
The BPAI, however, refused to allow a terminal disclaimer.
Appellant does not cite any legal authority for the proposition that the mere offer to file a terminal disclaimer overcomes a rejection based on the judicially created doctrine of obviousness-type double patenting. We therefore uphold with the Examiner’s rejection.
This holding seems to be directly contrary to MPEP 1504.06.
Nonstatutory categories of double patenting rejections which are not the “same invention” type may be overcome by the submission of a terminal disclaimer.
Comment: One way to reconcile these two views is that Hu did not actually file a terminal disclaimer, but made a “mere offer to file” the disclaimer. Thus, if he had actually filed the terminal disclaimer then perhaps the Board would have ruled in his favor. Ultimately, this decision does not change any rules because it is “not written for publication and is not binding precedent of the Board.”