¶ 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 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 conflicting claims 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 conflicting 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) made as a result of activities undertaken within the scope of a joint research agreement.
5. In bracket 3, insert the number of the conflicting patent.
6. If the patent is to a different inventive entity and is commonly assigned with the application, form paragraph 8.27 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 35 U.S.C. 102(f) or (g), a rejection should also be made using form paragraphs 7.15 and/or 7.19 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 35 U.S.C. 102(e) should additionally be made using form paragraph 7.15.02.