Communication without any prejudice
The Purpose behind Double Patenting is to prevent unjustified extension of exclusive rights.
The Scope of the Second Claimed Invention must be clearly determined by giving the claims the broadest reasonable interpretation consistent with the specification.
- Possibilities: Objections based on Statutory (35 U.S.C. 101) Double Patenting
When a claimed subject matter of a patent application exactly corresponds to a claimed subject matter of another granted patent or a patent application then the claimed subject matter is rejected under 35 U.S.C. 101 on a statutory basis. Statutory double patenting is also referred to as “Same Invention Type Double Patenting” as this is based on 35 U.S.C. 101 that defines that a single patent is granted for an invention.
Our comment:
Perform further analysis to determine whether a rejection on non-statutory double patenting grounds is appropriate. Examined claim and claim of potentially conflicting patent or application DO NOT exactly match in scope – DO NOT make a statutory (35 U.S.C. 101) double patenting rejection.
Remedies:
- Amend the claim(s)
- Cancel the claim(s)
- A terminal disclaimer is NOT sufficient to overcome such a rejection
- Declarations under 37 CFR 1.131 are NOT sufficient to overcome such a rejection.
- Possibilities: Non-Statutory Double Patenting
A non-statutory double patenting rejection is based on a judicially created doctrine specifically proposed to avoid extension of patent term beyond 20 years. This rejection is raised to prevent grant of claims of a patent application that are not patentably distinct from claims of a granted patent or a patent application cited by an examiner. The subject matter of the claims is analyzed based on obviousness or anticipation.
Our comment:
Perform Obviousness Analysis and Anticipation Analysis. Look at the Specification to Construe the Scope of the Claimed Invention. Prepare arguments based on claim terminology and Portions of the disclosure which provide support for the claims in the potentially conflicting application. A Terminal Disclaimer may remove potential harm to public argument.
Remedies:
- Amend the claim(s)
- Cancel the claim(s)
- File a proper terminal disclaimer
- Declarations under 37 CFR 1.131 are NOT sufficient to overcome such a rejection
- Possibilities: Provisional Double Patenting Rejections
A double patenting rejection raised against claims of a patent application being examined based on literally same claims of a copending patent application is known as a provisional double patenting rejection.
More details can be found at: http://www.bitlaw.com/source/mpep/804_02.html
USPTO Statutes: Between Copending Applications—Provisional Rejections
Occasionally, the examiner becomes aware of two copending applications that were filed by the same inventive entity, a different inventive entities having a common inventor, a common applicant, and/or a common owner/assignee, or that claim an invention resulting from activities undertaken within the scope of a joint research agreement as defined in 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and (3), that would raise an issue of double patenting if one of the applications became a patent. Where this issue can be addressed without violating the confidential status of applications (35 U.S.C. 122), the courts have sanctioned the practice of making applicant aware of the potential double patenting problem if one of the applications became a patent by permitting the examiner to make a “provisional” rejection on the ground of double patenting. In re Mott, 539 F.2d 1291, 190 USPQ 536 (CCPA 1976); In re Wetterau, 356 F.2d 556, 148 USPQ 499 (CCPA 1966). The merits of such a provisional rejection can be addressed by both the applicant and the examiner without waiting for the first patent to issue.
The “provisional” double patenting rejection should continue to be made by the examiner in each application as long as there are conflicting claims in more than one application except as noted below.
If a “provisional” nonstatutory double patenting rejection is the only rejection remaining in an application, and that application has an effective U.S. filing date (including any benefit claimed under 35 U.S.C. 120, 121, 365(c), or 386(c)) that is later than, or the same as, the effective U.S. filing date of at least one of the reference application(s), the rejection should be maintained until applicant overcomes the rejection. In accordance with 37 CFR 1.111(b), applicant’s reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. Alternatively, a reply that includes the filing of a compliant terminal disclaimer in the later-filed application under 37 CFR 1.321 will overcome a nonstatutory double patenting rejection and is a sufficient reply pursuant to 37 CFR 1.111(b). Upon the filing of a compliant terminal disclaimer in a pending application, the nonstatutory double patenting rejection will be withdrawn in that application.
