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Author Topic: Using a Terminal Disclaimer to respond to a 103 rejection?  (Read 402 times)

walterware

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I have a post-AIA application being rejected as obvious under 35 USC 103, over a combination of patent "A" and published application "B".  The present application and patent "A" are commonly owned, but the inventorship of the present application is a subset of the inventors of patent "A".  There is no double patenting rejection.  Would a terminal disclaimer to disclaim over patent "A" be effective in overcoming the obviousness rejection of the present application under 103? 
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still_learnin

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Re: Using a Terminal Disclaimer to respond to a 103 rejection?
« Reply #1 on: 08-08-17 at 03:36 pm »

In a word, No. Terminal Disclaimers are only effective against Double Patenting rejections.
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The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.

snapshot

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Re: Using a Terminal Disclaimer to respond to a 103 rejection?
« Reply #2 on: 08-09-17 at 09:27 am »

In a word, No. Terminal Disclaimers are only effective against Double Patenting rejections.

This is correct.  There are other ways to potentially disqualify patent A if its publication date is within a year of the effective filing date of the AIA app, but a terminal disclaimer is not one of them.
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