¶ 8.36 Rejection, Nonstatutory Double Patenting - With Secondary Reference(s)
Claim [1] rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim [2] of U.S. Patent No. [3] in view of [4]. [5]
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 where the primary reference is a patent that includes claims patentably indistinct from those in the present application.
3. If the nonstatutory double patenting rejection is based on another application, do not use this form paragraph. A provisional nonstatutory double patenting rejection should be made using form paragraphs 8.33 and either 8.35 or 8.37.
4. This form paragraph may be used where the patentably indistinct invention is claimed in a patent which is:
(a) by the same inventive entity, or
(b) by a different inventive entity and is commonly assigned even though there is no common inventor, or
(c) not commonly assigned but has 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
5. In bracket 3, insert the number of the primary reference patent.
6. In bracket 4, insert the secondary reference.
7. In bracket 5, insert an explanation of the obviousness analysis.
8. For applications being examined under pre-AIA law: If evidence shows that the primary reference patent is prior art under pre-AIA 35 U.S.C. 102(f) or (g), a rejection should additionally be made under pre-AIA 35 U.S.C. 102(f) /103(a) or 102(g) )/103(a) using form paragraph 7.21.fti, unless 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.
9. For applications being examined under pre-AIA law: If the primary reference patent issued to a different inventive entity and has an earlier effective 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.
10. 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.