¶ 8.31 Rejection, 35 U.S.C. 101, Double Patenting
Claim [1] 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 reference patent and the pending application are:
(a) by the same inventive entity, or
(b) by a different inventive entity and are commonly assigned even though there is no common inventor, or
(c) not commonly assigned but have at least one common inventor, or
(d) for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c), or
(e) for applications examined under the AIA, 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.
5. In bracket 3, insert the number of the reference patent.
6. For applications being examined under pre-AIA 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 in addition to this double patenting rejection.
8. 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 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) or 35 U.S.C. 103 should also be made if appropriate.