The Relationship Between Designating Claims As Corresponding To A Count And Double Patenting¹

By Charles L. Gholz² and Lisa M. Mandrusiak ³

INTRODUCTION

In Quad Environmental Technologies Corp. v. Union Sanitary District, 946 F.2d 870, 20 USPQ2d 1392 (Fed. Cir. 1991) (opinion by Circuit Judge Newman for a panel that also consisted of Senior Circuit Judge Miller and Circuit Judge Plager), a panel of the Federal Circuit held that the filing of a terminal disclaimer in order to overcome an obviousness-type double-patenting (hereinafter referred to as “OTDP”) rejection is not an admission that the subject matter defined by the rejected claim would have been obvious in view of the subject matter defined by the reference claim. Since 37 CFR 41.207(b)(2)’s standard⁴ for designating a claim as corresponding to a count is the same as the standard for rejecting a claim for OTDP except that the two cases under consideration are owned by different entities rather than by the same entity,⁵ one might think that the holding in Quad would apply to causing a claim t...