¶ 8.38 Double Patenting - Nonstatutory (Based Solely on Improper Timewise Extension of Patent Rights) With a Patent
Claim [1] rejected on the ground of nonstatutory double patenting over claim [2] of U.S. Patent No. [3] since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: [4]
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
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 only be used where approval from the TC Director to make a nonstatutory double patenting rejection based on In re Schneller has been obtained.
3. Use this form paragraph only when the subject matter of the claim(s) is fully disclosed in, and covered by at least one claim of, an issued U.S. Patent which is commonly owned or where there is at least one joint inventor in common or a common applicant (35 U.S.C. 118 ).
4. In bracket 3, insert the number of the patent.
5. In bracket 4, insert a description of the subject matter being claimed which is covered in the patent.
6. 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 patent is also 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 patent 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).
7. For applications being examined under pre-AIA (first to invent) law: If the patent is to another inventive entity and has an earlier U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e) /103(a) may be made using form paragraph 7.21.02.fti. 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.
8. For applications being examined under 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.