¶ 8.37 Provisional Rejection, Nonstatutory Double Patenting - With 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] in view of [4]. [5]
This is a provisional nonstatutory double patenting rejection.
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 is used for nonstatutory double patenting rejections requiring an obviousness analysis where the primary reference is a copending application.
3. If the patentably indistinct claims are in a patent, do not use this form paragraph, use form paragraph 8.36.
4. This form paragraph may be used where the patentably indistinct claims are in a copending application where the copending 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 primary 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 application under examination and primary reference application are currently commonly assigned but the application under examination 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 also resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g).
6. For applications being examined under first inventor to file (FITF) provisions of the AIA: If the primary reference application is to a different inventive entity and is commonly assigned with the application under examination, form paragraph 8.28.aia should additionally be used if there is no evidence of common ownership as of the effective filing date of the invention claimed in the examined application. A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
7. In bracket 3, insert the number of the primary reference application.
8. In bracket 4, insert the secondary reference.
9. In bracket 5, insert an explanation of the obviousness analysis.
10. A provisional nonstatutory double patenting rejection should also be made in the primary reference application.
11. 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 primary 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 primary 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).
12. For applications being examined under pre-AIA (first to invent) law: If the disclosure of one application may be used to support a rejection of the other and the applications have different inventive entities and different U.S. filing dates, 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 application with the later effective U.S. filing date. Rejections under pre-AIA 35 U.S.C. 102(e) /103(a) should not be made or maintained if the primary reference application 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.
13. 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.