¶ 15.19.04    Provisional 35 U.S.C. 102 (e)/103 (a) rejection - design claimed in an earlier filed design patent application with common inventor and/or assignee

The claim is provisionally rejected under 35 U.S.C. 103 (a) as being obvious over the claim in copending Design Patent Application No. [1] which has a common [2] with the instant application. Based upon the different inventive entity and the earlier effective U.S. filing date of the copending application, it would constitute prior art under 35 U.S.C. 102 (e) if patented. This provisional rejection under 35 U.S.C. 103 (a) is based upon a presumption of future patenting of the conflicting application.

Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.

[3]

Since the design claimed in the present application is not patentably distinct from the design claimed in the [4] application, this provisional rejection may be overcome by merging the two applications into a single continuation-in-part and abandoning the separate parent applications. For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. See MPEP § 706.02(l)(1) and § 706.02(l)(2).

Examiner Note:

1. This form paragraph should be used when the claimed design in the application being examined is obvious over the design claimed in an earlier filed copending application.

2. A provisional obviousness-type double patenting rejection must also be included in the action.

3. In brackets 1 and 4, insert serial number of copending application.

4. In bracket 2, insert inventor or assignee.

5. In bracket 3, provide explanation of obviousness including differences and follow the explanation with form paragraphs 15.70 and 15.67 or 15.68.

6. This form paragraph must be preceded by form paragraph 15.19.02.