¶ 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]. 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 patentably indistinct claims are in a copending application that is:

(a) by the same inventive entity, or

(b) commonly assigned even though there is no 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. For applications being examined under pre-AIA law: 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 also 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. For applications being examined under pre-AIA law: If evidence shows that either application is prior art unto the other under pre-AIA 35 U.S.C. 102(f) or (g) and the copending application has not been disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection, a rejection should additionally be made in the other application under pre-AIA 35 U.S.C. 102(f) /103(a) or 102(g) )/103(a) using form paragraph 7.21.fti.

9. For applications being examined under pre-AIA 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 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. For applications being examined under pre-AIA law: 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 AIA: 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 when the application is being examined under the AIA for double patenting purposes.

12. For applications being examined under the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

13. In bracket 4, provide appropriate rationale for obviousness of claims being rejected over the claims of the cited application.