What is the role of terminal disclaimers in overcoming rejections under MPEP 715.05?
MPEP 715.05 discusses the use of terminal disclaimers in conjunction with affidavits or declarations to overcome certain rejections. Specifically:
“Where the reference and the application or patent under reexamination are commonly owned, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the reference are not identical but are not patentably distinct, a terminal disclaimer and an affidavit or declaration under 37 CFR 1.131(c) may be used to overcome a rejection under 35 U.S.C. 103.”
This means that in cases of common ownership where the inventions are not identical but are not patentably distinct, a terminal disclaimer can be used along with a declaration to overcome an obviousness rejection. For more details on this process, the MPEP directs readers to MPEP § 718.
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