¶ 8.32 Provisional Rejection, 35 U.S.C. 101, Double Patenting
Claim [1] provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim [2] of copending Application No. [3] (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 another copending application; that is, the scope of the claimed inventions is identical.
2. If the claims directed to the same invention are in an issued patent, do not use this paragraph. See form paragraph 8.31.
3. Do not use this paragraph for nonstatutory-type double patenting rejections. See form paragraphs 8.33 to 8.39.
4. This form paragraph may be used where the reference application 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 reference application 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. Form paragraph 8.28.fti or 8.28.aia, as appropriate, should also be used.
6. In bracket 3, insert the number of the reference application.
7. A provisional double patenting rejection should also be made in the reference application.
8. For applications being examined under pre-AIA (first to invent) law: If the reference application is by a different inventive entity and is commonly assigned, form paragraph 8.27.fti should additionally be used to require the assignee to name the first inventor.
9. If evidence is also of record to show that either application is prior art unto the other under pre-AIA 35 U.S.C. 102(f) or (g), a rejection should also be made in the reference application using form paragraphs 7.15.fti and/or 7.19.fti, if applicable, in addition to this provisional double patenting rejection.
10. For applications being examined under pre-AIA (first to invent) law: If the applications do not have the same inventive entity and effective U.S. filing date, a provisional pre-AIA 35 U.S.C. 102(e) rejection should additionally be made in the later-filed application using form paragraph 7.15.01.fti. If the earlier-filed application has been published, use form paragraph 7.15.02.fti instead.
11. For applications being examined under first inventor to file (FITF) provisions of the AIA: If the reference application is to a different inventive entity and is commonly assigned with the instant 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 applications no longer contain claims directed to the same invention. A rejection under 35 U.S.C. 102(a)(2) should also be made if appropriate.