¶ 8.31 Rejection, 35 U.S.C. 101, Double Patenting
Claim [1] is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim [2] of prior U.S. Patent No. [3]. This is a statutory double patenting rejection.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 8.30 and is used only for double patenting rejections of the same invention claimed in an earlier patent; that is, the "scope" of the inventions claimed is identical.
2. If the claims directed to the same invention are in another copending application, do not use this form paragraph. A provisional double patenting rejection should be made using form paragraph 8.32.
3. Do not use this form paragraph for nonstatutory-type double patenting rejections. If nonstatutory type, use appropriate form paragraphs 8.33 to 8.39.
4. This form paragraph may be used where the patent and the application under examination:
a. name the same inventive entity, or
b. name different inventive entities but are commonly assigned, or
c. are not commonly assigned but name at least one joint inventor in common, or
d. are filed by a common applicant (35 U.S.C. 118 ), or
e. claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c) for applications examined under pre-AIA (first to invent) law, or
f. claim patentably indistinct inventions and the claimed invention and the patent were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.
5. In bracket 3, insert the number of the patent.
6. For applications being examined under pre-AIA (first to invent) law: If the patent is to a different inventive entity and is commonly assigned with the application, form paragraph 8.27.fti should additionally be used to require the assignee to name the first inventor.
7. If evidence is of record to indicate that the patent is prior art under either pre-AIA 35 U.S.C. 102(f) or (g), a rejection should also be made using form paragraphs 7.15.fti and/or 7.19.fti, if applicable, in addition to this double patenting rejection.
8. For applications being examined under pre-AIA (first to invent) law: If the patent is to a different inventive entity from the application and the effective U.S. filing date of the patent antedates the effective filing date of the application, a rejection under pre-AIA 35 U.S.C. 102(e) should additionally be made using form paragraph 7.15.02.fti.
9. For applications being examined under the first inventor to file (FITF) provisions of the AIA: If the patent is to a different inventive entity and is commonly assigned with the application, form paragraph 8.27.aia should additionally be used to request that the applicant take action to amend or cancel claims such that the application no longer contains claims directed to the same invention. A rejection under 35 U.S.C. 102(a)(2) should also be made if appropriate.