¶ 8.35 Provisional Rejection, Nonstatutory Double Patenting - No Secondary Reference(s)
Claim [1] provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of copending Application No. [3] (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because [4].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Examiner Note:
1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
2. This form paragraph should be used when the patentably indistinct claims are in another copending application.
3. If the patentably indistinct claims are in a patent, do not use this form paragraph. Use form paragraphs 8.33 and 8.34.
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. If the reference application is currently commonly assigned but the file does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph to resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g).
6. In bracket 3, insert the number of the reference application.
7. A provisional nonstatutory double patenting rejection should also be made in the reference application.
8. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
a. evidence indicates that the reference application is prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
b. the reference application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).
9. For applications being examined under pre-AIA (first to invent) law: If the applications have different inventive entities and different U.S. filing dates, and the disclosure of the earlier-filed application may be used to support a rejection of the later-filed application, use form paragraph 7.21.01.fti to additionally make a rejection under pre-AIA 35 U.S.C. 102(e) /103(a) in the later-filed application. Rejections under pre-AIA 35 U.S.C. 102(e) /103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
10. See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.
11. For applications being examined under the first inventor to file (FITF) provisions of the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
12. In bracket 4, provide appropriate explanation for anticipation or rationale for obviousness of the claims being rejected over the claims of the cited application.