¶ 8.27.fti Different Inventors, Common Assignee, Same Invention, Examined Under Pre-AIA (First to Invent) Provisions
Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. The issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) of this single invention must be resolved.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application having common ownership (see MPEP Chapter 2300). Either the applicant must amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention, or the assignee must state which entity is the prior inventor of the commonly claimed subject matter. A terminal disclaimer has no effect in this situation since the basis for refusing more than one patent is priority of invention under pre-AIA 35 U.S.C. 102(f) or (g) and not an extension of monopoly.
Failure to comply with this requirement will result in a holding of abandonment of this application.
Examiner Note:
1. Form paragraph 7.03.fti must be included in any Office action that contains this paragraph.
2. In bracket 3, insert the U.S. patent number or the copending application number.
3. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of the other, do not use this form paragraph; see form paragraph 8.28.fti.
4. A provisional or actual statutory double patenting rejection should also be made using form paragraph 8.31 or 8.32.
5. If the commonly assigned application or patent has an earlier U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e) may also be made using form paragraph 7.15.01.fti or 7.15.02.fti.