¶ 8.36    Rejection, Obviousness Type 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. This form paragraph is used for obviousness-type double patenting rejections where the primary reference is a conflicting patent.

2. If the obviousness double patenting rejection is based on another application, do not use this form paragraph. A provisional obviousness-type double patenting rejection should be made using form paragraphs 8.33 and either 8.35 or 8.37.

3. This form paragraph may be used where the prior 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) 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. In bracket 3, insert the number of the conflicting patent.

6. In bracket 4, insert the secondary reference.

7. In bracket 5, insert an explanation of the obviousness-type rejection.

8. If evidence shows that the conflicting patent is prior art under 35 U.S.C. 102(f)  or (g), a rejection should additionally be made under 35 U.S.C. 102(f) /103(a)  or 102(g) /103(a)  using form paragraph 7.21, unless the patent is disqualified under 35 U.S.C. 103(c)  as prior art in a 35 U.S.C. 103(a)  rejection.

9. If the patent issued to a different inventive entity and has an earlier effective U.S. filing date, a rejection under 35 U.S.C. 102(e)  /103(a)  may be made using form paragraph 7.21.02. 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.