¶ 8.35 Provisional Rejection, Obviousness Type Double Patenting - No Secondary Reference(s)
Claim [1] provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim [2] of copending Application No. [3]. Although the conflicting claims are not identical, they are not patentably distinct from each other because [4].
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Examiner Note:
1. This form paragraph should be used when the conflicting claims are in another copending application.
2. If the conflicting claims are in a patent, do not use this form paragraph. Use form paragraphs 8.33 and 8.34.
3. This form paragraph may be used where the conflicting 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
(c) not commonly assigned but has at least one common inventor, or
(d) made as a result of activities undertaken within the scope of a joint research agreement.
4. 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.
5. If the conflicting application is currently commonly assigned but the file does not establish that the conflicting inventions were commonly owned at the time the later invention was made, form paragraph 8.28 may be used in addition to this form paragraph to also resolve any issues relating to priority under 102(f) and/or (g).
6. In bracket 3, insert the number of the conflicting application.
7. A provisional obviousness-type double patenting rejection should also be made in the conflicting application.
8. If evidence shows that either application is prior art unto the other under 35 U.S.C. 102(f) or (g) and the copending application has not been disqualified under 35 U.S.C. 103(c) as prior art in a 103(a) rejection, a rejection should additionally be made in the other application under 35 U.S.C. 102(f) /103(a) or 102(g) /103(a) using form paragraph 7.21.
9. 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 to additionally make a rejection under 35 U.S.C. 102(e) /103(a) in the later filed application. For applications pending on or after December 10, 2004, rejections under 35 U.S.C. 102(e) /103(a) should not be made or maintained if the patent is disqualified under 35 U.S.C. 103(c) as prior art in a 35 U.S.C. 103(a) rejection.
10. In bracket 4, provide appropriate rationale for obviousness of claims being rejected over the claims of the cited application.