¶ 8.38    Double Patenting - Nonstatutory (Based Solely on Improper Timewise Extension of Patent Rights) With a Patent

Claim [1] rejected on the ground of nonstatutory double patenting over claim [2] of U.S. Patent No. [3] since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.

The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: [4]

Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.

Examiner Note:

1. This form paragraph should only be used where approval from the TC Director to make a nonstatutory double patenting rejection based on In re Schneller has been obtained.

2. Use this form paragraph only when the subject matter of the claim(s) is fully disclosed in, and covered by at least one claim of, an issued U.S. Patent which is commonly owned or where there is common inventorship (one or more inventors in common).

3. In bracket 3, insert the number of the patent.

4. In bracket 4, insert a description of the subject matter being claimed which is covered in the patent.

5. 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.

6. If evidence indicates 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.

7. If the patent is to another inventive entity and has an earlier 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.