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MPEP 804: Definition of Double Patenting

This is the Ninth Edition of the MPEP, published in March 2014

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MPEP Chapter Index
Chapter 800: Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting

804    Definition of Double Patenting [R-08.2012]

35 U.S.C. 101   Inventions Patentable.

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

35 U.S.C. 121   Divisional Applications.

If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. If a divisional application is directed solely to subject matter described and claimed in the original application as filed, the Director may dispense with signing and execution by the inventor. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.

The doctrine of double patenting seeks to prevent the unjustified extension of patent exclusivity beyond the term of a patent. The public policy behind this doctrine is that:

The public should . . . be able to act on the assumption that upon the expiration of the patent it will be free to use not only the invention claimed in the patent but also modifications or variants which would have been obvious to those of ordinary skill in the art at the time the invention was made, taking into account the skill in the art and prior art other than the invention claimed in the issued patent.

In re Zickendraht, 319 F.2d 225, 232, 138 USPQ 22, 27 (CCPA 1963) (Rich, J., concurring). Double patenting results when the right to exclude granted by a first patent is unjustly extended by the grant of a later issued patent or patents. In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982).

Before consideration can be given to the issue of double patenting, two or more patents or applications must have at least one common inventor and/or be either commonly assigned/owned or non-commonly assigned/owned but subject to a joint research agreement as set forth in 35 U.S.C. 103(c)(2) and (3) pursuant to the CREATE Act (Pub. L. 108-453, 118 Stat. 3596 (2004)). Congress recognized that the amendment to 35 U.S.C. 103(c) would result in situations in which there would be double patenting rejections between applications not owned by the same party (see H.R. Rep. No. 108-425, at 5-6 (2003)). For purposes of a double patenting analysis, the application or patent and the subject matter disqualified under 35 U.S.C. 103(c) as amended by the CREATE Act will be treated as if commonly owned. See also MPEP § 804.03. Since the doctrine of double patenting seeks to avoid unjustly extending patent rights at the expense of the public, the focus of any double patenting analysis necessarily is on the claims in the multiple patents or patent applications involved in the analysis.

There are generally two types of double patenting rejections. One is the “same invention” type double patenting rejection based on 35 U.S.C. 101 which states in the singular that an inventor “may obtain a patent.” The second is the “nonstatutory-type” double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinguishing from claims in a first patent. Nonstatutory double patenting includes rejections based on either a one-way determination of obviousness or a two-way determination of obviousness. Nonstatutory double patenting could include a rejection which is not the usual “obviousness-type” double patenting rejection. This type of double patenting rejection is rare and is limited to the particular facts of the case. In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968).

Refer to Charts I-A, I-B, II-A, and II-B for an overview of the treatment of applications having conflicting claims (e.g., where a claim in an application is not patentably distinct from a claim in a patent or another application). See MPEP § 2258 for information pertaining to double patenting rejections in reexamination proceedings.

Chart I-A. Conflicting Claims Between: Two Applications
Chart I-B. Conflicting Claims Between: Two Applications
Chart II-A. Conflicting Claims Between: Application and a Patent
Chart II-B. Conflicting Claims Between: Application and a Patent

I.   INSTANCES WHERE DOUBLE PATENTING ISSUE CAN BE RAISED

A double patenting issue may arise between two or more pending applications, or between one or more pending applications and a patent. A double patenting issue may likewise arise in a reexamination proceeding between the patent claims being reexamined and the claims of one or more applications and/or patents. Double patenting does not relate to international applications which have not yet entered the national stage in the United States.

A.   Between Issued Patent and One or More Applications

Double patenting may exist between an issued patent and an application filed by the same inventive entity, or by a different inventive entity having a common inventor, and/or by a common assignee/owner. Double patenting may also exist where the inventions claimed in a patent and an application were made as a result of activities undertaken within the scope of a joint research agreement as defined in 35 U.S.C. 103(c)(2) and (3). Since the inventor/patent owner has already secured the issuance of a first patent, the examiner must determine whether the grant of a second patent would give rise to an unjustified extension of the rights granted in the first patent.

B.   Between Copending Applications—Provisional Rejections

Occasionally, the examiner becomes aware of two copending applications that were filed by the same inventive entity, or by different inventive entities having a common inventor, and/or by a common assignee, or that claim an invention resulting from activities undertaken within the scope of a joint research agreement as defined in 35 U.S.C. 103(c)(2) and (3), that would raise an issue of double patenting if one of the applications became a patent. Where this issue can be addressed without violating the confidential status of applications (35 U.S.C. 122), the courts have sanctioned the practice of making applicant aware of the potential double patenting problem if one of the applications became a patent by permitting the examiner to make a “provisional” rejection on the ground of double patenting. In re Mott, 539 F.2d 1291, 190 USPQ 536 (CCPA 1976); In re Wetterau, 356 F.2d 556, 148 USPQ 499 (CCPA 1966). The merits of such a provisional rejection can be addressed by both the applicant and the examiner without waiting for the first patent to issue.

The “provisional” double patenting rejection should continue to be made by the examiner in each application as long as there are conflicting claims in more than one application unless that “provisional” double patenting rejection is the only rejection remaining in at least one of the applications.

1.    Nonstatutory Double Patenting Rejections

If a “provisional” nonstatutory obviousness-type double patenting (ODP) rejection is the only rejection remaining in the earlier filed of the two pending applications, while the later-filed application is rejectable on other grounds, the examiner should withdraw that rejection and permit the earlier-filed application to issue as a patent without a terminal disclaimer. If the ODP rejection is the only rejection remaining in the later-filed application, while the earlier-filed application is rejectable on other grounds, a terminal disclaimer must be required in the later-filed application before the rejection can be withdrawn.

If “provisional” ODP rejections in two applications are the only rejections remaining in those applications, the examiner should withdraw the ODP rejection in the earlier filed application thereby permitting that application to issue without need of a terminal disclaimer. A terminal disclaimer must be required in the later-filed application before the ODP rejection can be withdrawn and the application permitted to issue. If both applications are filed on the same day, the examiner should determine which application claims the base invention and which application claims the improvement (added limitations). The ODP rejection in the base application can be withdrawn without a terminal disclaimer, while the ODP rejection in the improvement application cannot be withdrawn without a terminal disclaimer.

Where there are three applications containing claims that conflict such that an ODP rejection is made in each application based upon the other two, it is not sufficient to file a terminal disclaimer in only one of the applications addressing the other two applications. Rather, an appropriate terminal disclaimer must be filed in at least two of the applications to link all three together. This is because a terminal disclaimer filed to obviate a double patenting rejection is effective only with respect to the application in which the terminal disclaimer is filed; it is not effective to link the other two applications to each other.

2.   Statutory Double Patenting Rejections (35 U.S.C. 101)

A terminal disclaimer cannot be filed to obviate a statutory double patenting rejection.

If a “provisional” statutory double patenting rejection is the only rejection remaining in one of the applications (but not both), the examiner should withdraw the rejection in that application and permit that application to issue as a patent, thereby converting the “provisional” double patenting rejection in the other application into a double patenting rejection when the application issues as a patent.

If a “provisional” statutory double patenting rejection is the only rejection remaining in both applications, the examiner should withdraw that rejection in the application with the earlier filing date and permit that application to issue as a patent. If both applications were filed on the same day, the applicant should be given an opportunity to elect which of the two should be allowed. In either situation, the examiner should maintain the double patenting rejection in the other application as a “provisional” double patenting rejection, which will be converted into a double patenting rejection when one application issues as a patent.

C.   Between One or More Applications and a Published Application - Provisional Rejections

Double patenting may exist where a published patent application and an application are filed by the same inventive entity, or by different inventive entities having a common inventor, and/or by a common assignee. Double patenting may also exist where a published application and an application claim inventions resulting from activities undertaken within the scope of a joint research agreement as defined in 35 U.S.C. 103(c)(2) and (3). Since the published application has not yet issued as a patent, the examiner is permitted to make a “provisional” rejection on the ground of double patenting when the published application has not been abandoned and claims pending therein conflict with claims of the application being examined. See the discussion regarding “provisional” double patenting rejections in subsection B. above.

D.   Reexamination Proceedings

A double patenting issue may raise a substantial new question of patentability of a claim of a patent, and thus be addressed in a reexamination proceeding. In re Lonardo, 119 F.3d 960, 966, 43 USPQ2d 1262, 1266 (Fed. Cir. 1997) (In giving the Director authority under 35 U.S.C. 303(a) in determining the presence of a substantial new question of patentability, “Congress intended that the phrases ‘patents and publications’ and ‘other patents or publications’ in section 303(a) not be limited to prior art patents or printed publications.” (emphasis added)). Accordingly, if the issue of double patenting was not addressed during original prosecution, it may be considered during reexamination.

Double patenting may exist where a reference patent or application and the patent under reexamination are filed by inventive entities that have at least one inventor in common and/or are filed by a common owner/assignee. Where the patent under reexamination was granted on or after December 10, 2004, double patenting may also exist where the inventions claimed in the reference and reexamination proceeding resulted from activities undertaken within the scope of a joint research agreement pursuant to 35 U.S.C. 103(c)(2) and (3), and if evidence of the joint research agreement has been made of record in the patent being reexamined or in the reexamination proceeding. A double patenting rejection may NOT be made on this basis if the patent under reexamination issued before December 10, 2004. See MPEP § 804.04. The prior art exclusion under 35 U.S.C. 103(c) cannot be used to overcome an obvious double patenting rejection. See MPEP § 706.02(l) for more information on 35 U.S.C. 103(c). See MPEP § 2258 for more information on making double patenting rejections in reexamination proceedings. Subsection II., below, describes situations wherein a double patenting rejection would be appropriate. In particular, see paragraph II.B.1. for the analysis required to determine the propriety of an obviousness-type double patenting rejection.

II.   REQUIREMENTS OF A DOUBLE PATENTING REJECTION (INCLUDING PROVISIONAL REJECTIONS)

When a double patenting rejection is appropriate, it must be based either on statutory grounds or nonstatutory grounds. The ground of rejection employed depends upon the relationship of the inventions being claimed. Generally, a double patenting rejection is not permitted where the claimed subject matter is presented in a divisional application as a result of a restriction requirement made in a parent application under 35 U.S.C. 121.

Where the claims of an application are substantively the same as those of a first patent, they are barred under 35 U.S.C. 101 - the statutory basis for a double patenting rejection. A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process ... may obtain a patent therefor ....” Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). Where the claims of an application are not the “same” as those of a first patent, but the grant of a patent with the claims in the application would unjustly extend the rights granted by the first patent, a double patenting rejection under nonstatutory grounds is proper.

In determining whether a proper basis exists to enter a double patenting rejection, the examiner must determine the following:

  • (A) Whether a double patenting rejection is prohibited by the third sentence of 35 U.S.C. 121 (see MPEP § 804.01; if such a prohibition applies, a double patenting rejection cannot be made);
  • (B) Whether a statutory basis exists; and
  • (C) Whether a nonstatutory basis exists.

Each determination must be made on the basis of all the facts in the application before the examiner. Charts I-A, I-B, II-A, and II-B illustrate the methodology of making such a determination.

Domination and double patenting should not be confused. They are two separate issues. One patent or application “dominates” a second patent or application when the first patent or application has a broad or generic claim which fully encompasses or reads on an invention defined in a narrower or more specific claim in another patent or application. Domination by itself, i.e., in the absence of statutory or nonstatutory double patenting grounds, cannot support a double patenting rejection. In re Kaplan, 789 F.2d 1574, 1577-78, 229 USPQ 678, 681 (Fed. Cir. 1986); and In re Sarrett, 327 F.2d 1005, 1014-15, 140 USPQ 474, 482 (CCPA 1964). However, the presence of domination does not preclude double patenting. See, e.g., In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968).

A.   Statutory Double Patenting — 35 U.S.C. 101

In determining whether a statutory basis for a double patenting rejection exists, the question to be asked is: Is the same invention being claimed twice? 35 U.S.C. 101 prevents two patents from issuing on the same invention. “Same invention” means identical subject matter. Miller v. Eagle Mfg. Co., 151 U.S. 186 (1984); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).

A reliable test for double patenting under 35 U.S.C. 101 is whether a claim in the application could be literally infringed without literally infringing a corresponding claim in the patent. In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970). Is there an embodiment of the invention that falls within the scope of one claim, but not the other? If there is such an embodiment, then identical subject matter is not defined by both claims and statutory double patenting would not exist. For example, the invention defined by a claim reciting a compound having a “halogen” substituent is not identical to or substantively the same as a claim reciting the same compound except having a “chlorine” substituent in place of the halogen because “halogen” is broader than “chlorine.” On the other hand, claims may be differently worded and still define the same invention. Thus, a claim reciting a widget having a length of “36 inches” defines the same invention as a claim reciting the same widget having a length of “3 feet.”

If it is determined that the same invention is being claimed twice, 35 U.S.C. 101 precludes the grant of the second patent regardless of the presence or absence of a terminal disclaimer. Id.

Form paragraphs 8.30 and 8.31 (between an issued patent and one or more applications) or 8.32 (provisional rejections) may be used to make statutory double patenting rejections.

¶ 8.30    35 U.S.C. 101, Statutory Basis for Double Patenting “Heading” Only

A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).

A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.

Examiner Note:

The above form paragraph must be used as a heading for all subsequent double patenting rejections of the statutory (same invention) type using either of form paragraphs 8.31 or 8.32.

¶ 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 statutory 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 claims directed to the same invention 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 reference 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) for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c), or

(e) for applications examined under the AIA, commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention.

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

6. For applications being examined under pre-AIA law: If the patent is to a different inventive entity and is commonly assigned with the application, form paragraph 8.27.fti 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 pre-AIA 35 U.S.C. 102(f) or (g), a rejection should also be made using form paragraphs 7.15.fti and/or 7.19.fti 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 pre-AIA 35 U.S.C. 102(e) should additionally be made using form paragraph 7.15.02.fti.

9. For applications being examined under the AIA: If the patent is to a different inventive entity and is commonly assigned with the application, form paragraph 8.27.aia should additionally be used to request that the applicant take action to amend or cancel claims such that the application no longer contains claims directed to the same invention. A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

¶ 8.32    Provisional Rejection, 35 U.S.C. 101, Double Patenting

Claim [1] provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim [2] of copending Application No. [3]. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.

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 another copending application; that is, the scope of the claimed inventions is identical.

2. If the claims directed to the same invention are from an issued patent, do not use this paragraph. See form paragraph 8.31.

3. Do not use this paragraph for nonstatutory-type double patenting rejections. See form paragraphs 8.33 to 8.39.

4. This form paragraph may be used where the patentably indistinct claims are in a copending application that 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) for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c), or

(e) for applications examined under the AIA, commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention.

5. Form paragraph 8.28.fti or 8.28.aia, as appropriate, should also be used.

6. In bracket 3, insert the number of the reference application.

7. A provisional double patenting rejection should also be made in the reference application.

8. For applications being examined under pre-AIA law: If the copending application is by a different inventive entity and is commonly assigned, form paragraph 8.27.fti should additionally be used to require the assignee to name the first inventor.

9. If evidence is also of record to show that either application is prior art unto the other under pre-AIA 35 U.S.C. 102(f) or (g), a rejection should also be made in the other application using form paragraphs 7.15.fti and/or 7.19.fti in addition to this provisional double patenting rejection.

10. If the applications do not have the same inventive entity and effective U.S. filing date, a provisional pre-AIA 35 U.S.C. 102(e) rejection should additionally be made in the later-filed application using form paragraph 7.15.01.fti.

11. For applications being examined under the AIA: If the patent is to a different inventive entity and is commonly assigned with the application, form paragraph 8.27.aia should additionally be used to request that the applicant take action to amend or cancel claims such that the applications no longer contain claims directed to the same invention. A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

If the “same invention” is not being claimed twice, an analysis must be made to determine whether a nonstatutory basis for double patenting exists.

B.   Nonstatutory Double Patenting

A rejection based on nonstatutory double patenting is based on a judicially created doctrine grounded in public policy so as to prevent the unjustified or improper timewise extension of the right to exclude granted by a patent. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969); In re White, 405 F.2d 904, 160 USPQ 417 (CCPA 1969); In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); In re Sarett, 327 F.2d 1005, 140 USPQ 474 (CCPA 1964).

1.   Obviousness-Type

A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); and In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985). In determining whether a nonstatutory basis exists for a double patenting rejection, the first question to be asked is — does any claim in the application define an invention that is anticipated by, or is merely an obvious variation of, an invention claimed in the patent? If the answer is yes, then an “obviousness-type” nonstatutory double patenting rejection may be appropriate. Obviousness-type double patenting requires rejection of an application claim when the claimed subject matter is not patentably distinct from the subject matter claimed in a commonly owned patent, or a non-commonly owned patent but subject to a joint research agreement as set forth in 35 U.S.C. 103(c)(2) and (3), when the issuance of a second patent would provide unjustified extension of the term of the right to exclude granted by a patent. See Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 58 USPQ2d 1869 (Fed. Cir. 2001); Ex parte Davis, 56 USPQ2d 1434, 1435-36 (Bd. Pat. App. & Inter. 2000).

A double patenting rejection of the obviousness-type, if not based on an anticipation rationale, is “analogous to [a failure to meet] the nonobviousness requirement of 35 U.S.C. 103” except that the patent principally underlying the double patenting rejection is not considered prior art. In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967). Therefore, the analysis employed in an obviousness-type double patenting rejection parallels the guidelines for analysis of a 35 U.S.C. 103 obviousness determination. In re Braat, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir. 1991); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985).

Since the analysis employed in an obviousness-type double patenting determination parallels the guidelines for a 35 U.S.C. 103(a) rejection, the factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are employed when making an obvious-type double patenting analysis. These factual inquiries are summarized as follows:

  • (A) Determine the scope and content of a patent claim relative to a claim in the application at issue;
  • (B) Determine the differences between the scope and content of the patent claim as determined in (A) and the claim in the application at issue;
  • (C) Determine the level of ordinary skill in the pertinent art; and
  • (D) Evaluate any objective indicia of nonobviousness.

The conclusion of obviousness-type double patenting is made in light of these factual determinations.

Any obviousness-type double patenting rejection should make clear:

  • (A) The differences between the inventions defined by the conflicting claims — a claim in the patent compared to a claim in the application; and
  • (B) The reasons why a person of ordinary skill in the art would conclude that the invention defined in the claim at issue is anticipated by, or would have been an obvious variation of, the invention defined in a claim in the patent.

When considering whether the invention defined in a claim of an application would have been an obvious variation of the invention defined in the claim of a patent, the disclosure of the patent may not be used as prior art. General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1279, 23 USPQ2d 1839, 1846 (Fed. Cir. 1992). This does not mean that one is precluded from all use of the patent disclosure.

The specification can be used as a dictionary to learn the meaning of a term in the patent claim. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999)(“[W]ords in patent claims are given their ordinary meaning in the usage of the field of the invention, unless the text of the patent makes clear that a word was used with a special meaning.”); Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998) (“Where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meanings.”). See also MPEP § 2111.01. Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970). The court in Vogel recognized “that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim,” but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent which provides support for the patent claim. According to the court, one must first “determine how much of the patent disclosure pertains to the invention claimed in the patent” because only “[t]his portion of the specification supports the patent claims and may be considered.” The court pointed out that “this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103, since only the disclosure of the invention claimed in the patent may be examined.”

(a)   One-Way Obviousness

If the application at issue is the later filed application or both are filed on the same day, only a one-way determination of obviousness is needed in resolving the issue of double patenting, i.e., whether the invention defined in a claim in the application would have been anticipated by, an obvious variation of, the invention defined in a claim in the patent. See, e.g., In re Berg, 140 F.3d 1438, 46 USPQ2d 1226 (Fed. Cir. 1998) (the court applied a one-way test where both applications were filed the same day). If a claimed invention in the application would have been obvious over a claimed invention in the patent, there would be an unjustified timewise extension of the patent and an obvious-type double patenting rejection is proper. Unless a claimed invention in the application would have been anticipated by, or obvious over a claimed invention in the patent, no double patenting rejection of the obvious-type should be made, but this does not necessarily preclude a rejection based on another type of nonstatutory double patenting (see MPEP § 804, paragraph II.B.2. below).

Similarly, even if the application at issue is the earlier filed application, only a one-way determination of obviousness is needed to support a double patenting rejection in the absence of a finding: (A) of administrative delay on the part of the Office causing delay in prosecution of the earlier filed application; and (B) that applicant could not have filed the conflicting claims in a single (i.e., the earlier filed) application. See MPEP § 804, paragraph II.B.1.(b) below.

Form paragraph 8.33 and the appropriate one of form paragraphs 8.34 - 8.37 may be used to make nonstatutory rejections of the obvious-type.

(b)   Two-Way Obviousness

If the patent is the later filed application, the question of whether the timewise extension of the right to exclude granted by a patent is justified or unjustified must be addressed. A two-way test is to be applied only when the applicant could not have filed the claims in a single application and there is administrative delay. In re Berg, 46 USPQ2d 1226 (Fed. Cir. 1998) (“The two-way exception can only apply when the applicant could not avoid separate filings, and even then, only if the PTO controlled the rates of prosecution to cause the later filed species claims to issue before the claims for a genus in an earlier application . . . In Berg’s case, the two applications could have been filed as one, so it is irrelevant to our disposition who actually controlled the respective rates of prosecution.”). In the absence of administrative delay, a one-way test is appropriate. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993) (applicant’s voluntary decision to obtain early issuance of claims directed to a species and to pursue prosecution of previously rejected genus claims in a continuation is a considered election to postpone by the applicant and not administrative delay). Unless the record clearly shows administrative delay by the Office and that applicant could not have avoided filing separate applications, the examiner may use the one-way obviousness determination and shift the burden to applicant to show why a two-way obviousness determination is required.

When making a two-way obviousness determination where appropriate, it is necessary to apply the Graham obviousness analysis twice, once with the application claims as the claims in issue, and once with the patent claims as the claims in issue. Where a two-way obviousness determination is required, an obvious-type double patenting rejection is appropriate only where each analysis compels a conclusion that the invention defined in the claims in issue is an obvious variation of the invention defined in a claim in the other application/patent. If either analysis does not compel a conclusion of obviousness, no double patenting rejection of the obvious-type is made, but this does not necessarily preclude a nonstatutory double patenting rejection based on the fundamental reason to prevent unjustified timewise extension of the right to exclude granted by a patent. In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968).

Although a delay in the processing of applications before the Office that would cause patents to issue in an order different from the order in which the applications were filed is a factor to be considered in determining whether a one-way or two-way obviousness determination is necessary to support a double patenting rejection, it may be very difficult to assess whether an applicant or the administrative process is primarily responsible for a delay in the issuance of a patent. On the one hand, it is applicant who presents claims for examination and pays the issue fee. On the other hand, the resolution of legitimate differences of opinion that must be resolved in an appeal process or the time spent in an interference proceeding can significantly delay the issuance of a patent. Nevertheless, the reasons for the delay in issuing a patent have been considered in assessing the propriety of a double patenting rejection. Thus, in Pierce v. Allen B. DuMont Laboratories, Inc., 297 F.2d 323, 131 USPQ 340 (3d. Cir. 1961), the court found that administrative delay may justify the extension of patent rights beyond 17 years but “a considered election to postpone acquisition of the broader [patent after the issuance of the later filed application] should not be tolerated.” In Pierce, the patentee elected to participate in an interference proceeding [after all claims in the application had been determined to be patentable] whereby the issuance of the broader patent was delayed by more than 7 years after the issuance of the narrower patent. The court determined that the second issued patent was invalid on the ground of double patenting. Similarly, in In re Emert, 124 F.3d 1458, 44 USPQ2d 1149 (Fed. Cir. 1997), the court found that the one-way test is appropriate where applicants, rather than the Office, had significant control over the rate of prosecution of the application at issue. In support of its finding that the applicants were responsible for delaying prosecution of the application during the critical period, the court noted that the applicants had requested and received numerous time extensions in various filings. More importantly, the court noted, after initially receiving an obviousness rejection of all claims, applicants had waited the maximum period to reply (6 months), then abandoned the application in favor of a substantially identical continuation application, then received another obviousness rejection of all claims, again waited the maximum period to reply, and then again abandoned the application in favor of a second continuation application substantially identical to the original filing. On the other hand, in General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 23 USPQ2d 1839 (Fed. Cir. 1992), the court elected not to hold the patentee accountable for a delay in issuing the first filed application until after the second filed application issued as a patent, even where the patentee had intentionally refiled the first filed application as a continuation-in-part after receiving a Notice of Allowance indicating that all claims presented were patentable. Similarly, where, through no fault of the applicant, the claims in a later filed application issue first, an obvious-type double patenting rejection is improper, in the absence of a two-way obviousness determination, because the applicant does not have complete control over the rate of progress of a patent application through the Office. In re Braat, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir. 1991). While acknowledging that allowance of the claims in the earlier filed application would result in the timewise extension of an invention claimed in the patent, the court was of the view that the extension was justified under the circumstances in this case, indicating that a double patenting rejection would be proper only if the claimed inventions were obvious over each other — a two-way obviousness determination.

Form paragraph 8.33 and the appropriate one of form paragraphs 8.34-8.37 may be used to make nonstatutory rejections of the obvious type.

¶ 8.33    Basis for Nonstatutory Double Patenting, “Heading” Only

The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).

A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).

The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.

Examiner Note:

This form paragraph is to be used as a heading before a nonstatutory double patenting rejection using any of form paragraphs 8.34 - 8.39. Although nonstatutory double patenting is sometimes called obviousness-type double patenting (“ODP”), an obviousness analysis is required only if the examined application claim(s) is not anticipated by the reference claim(s).

¶ 8.34    Rejection, Nonstatutory Double Patenting - No Secondary Reference(s)

Claim [1] rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of U.S. Patent No. [3]. Although the claims at issue are not identical, they are not patentably distinct from each other because [4].

Examiner Note:

1. 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.

2. This form paragraph is used for nonstatutory double patenting rejections based upon a patent.

3. If the nonstatutory double patenting rejection is based upon another application, do not use this form paragraph. A provisional double patenting rejection should be made using form paragraph 8.33 and either form paragraph 8.35 or 8.37.

4. This form paragraph may be used where the patentably indistinct 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 inventor in common, or

(d) for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103, or

(e) for applications examined under the AIA, commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention.

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

6. For applications being examined under pre-AIA law: If evidence indicates that the patent is prior art under pre-AIA 35 U.S.C. 102(f) or (g), a rejection should additionally be made under pre-AIA 35 U.S.C. 102(f)/103(a) or 102(g),/103(a) using form paragraph 7.21.fti, unless the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

7. For applications being examined under pre-AIA law: If the patent is to a different inventive entity and has an earlier effective U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) may be made using form paragraph 7.21.02.fti. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

8. For applications being examined under the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

¶ 8.35    Provisional Rejection, Nonstatutory Double Patenting - No Secondary Reference(s)

Claim [1] provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of copending Application No. [3]. Although the claims at issue are not identical, they are not patentably distinct from each other because [4].

This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.

Examiner Note:

1. 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.

2. This form paragraph should be used when the patentably indistinct claims are in another copending application.

3. If the patentably indistinct claims are in a patent, do not use this form paragraph. Use form paragraphs 8.33 and 8.34.

4. This form paragraph may be used where the patentably indistinct 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) for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c), or

(e) for applications examined under the AIA, commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention.

5. For applications being examined under pre-AIA law: If the reference application is currently commonly assigned but the file does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph to also resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g).

6. In bracket 3, insert the number of the reference application.

7. A provisional nonstatutory double patenting rejection should also be made in the reference application.

8. For applications being examined under pre-AIA law: If evidence shows that either application is prior art unto the other under pre-AIA 35 U.S.C. 102(f) or (g) and the copending application has not been disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection, a rejection should additionally be made in the other application under pre-AIA 35 U.S.C. 102(f)/103(a) or 102(g))/103(a) using form paragraph 7.21.fti.

9. For applications being examined under pre-AIA law: 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.fti to additionally make a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) in the later filed application. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

10. For applications being examined under pre-AIA law: See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.

11. For applications being examined under the AIA: See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application when the application is being examined under the AIA for double patenting purposes.

12. For applications being examined under the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

13. In bracket 4, provide appropriate rationale for obviousness of claims being rejected over the claims of the cited application.

¶ 8.36    Rejection, Nonstatutory 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. 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.

2. This form paragraph is used for nonstatutory double patenting rejections where the primary reference is a patent that includes claims patentably indistinct from those in the present application.

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

4. This form paragraph may be used where the patentably indistinct 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) for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c), or

5. In bracket 3, insert the number of the primary reference patent.

6. In bracket 4, insert the secondary reference.

7. In bracket 5, insert an explanation of the obviousness analysis.

8. For applications being examined under pre-AIA law: If evidence shows that the primary reference patent is prior art under pre-AIA 35 U.S.C. 102(f) or (g), a rejection should additionally be made under pre-AIA 35 U.S.C. 102(f)/103(a) or 102(g))/103(a) using form paragraph 7.21.fti, unless the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

9. For applications being examined under pre-AIA law: If the primary reference patent issued to a different inventive entity and has an earlier effective U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) may be made using form paragraph 7.21.02.fti.Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

10. For applications being examined under the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

¶ 8.37    Provisional Rejection, Nonstatutory Double Patenting - With Secondary Reference(s)

Claim [1] provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of copending Application No. [3] in view of [4]. [5]

This is a provisional nonstatutory double patenting rejection.

Examiner Note:

1. 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.

2. This form paragraph is used for nonstatutory double patenting rejections requiring an obviousness analysis where the primary reference is a copending application.

3. If the patentably indistinct claims are in a patent, do not use this form paragraph, use form paragraph 8.36.

4. This form paragraph may be used where the patentably indistinct 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) for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c), or

5. For applications being examined under pre-AIA law: If the present and reference applications are currently commonly assigned but the file does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph to also resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g).

6. For applications being examined under the AIA: If the copending application is to a different inventive entity and is commonly assigned with the application, form paragraph 8.28.aia should additionally be used if there is no evidence of common ownership as of the effective filing date of the claimed invention. A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

7. In bracket 3, insert the number of the reference copending application.

8. In bracket 4, insert the secondary reference.

9. In bracket 5, insert an explanation of the obviousness analysis.

10. A provisional nonstatutory double patenting rejection should also be made in the copending reference application.

11. For applications being examined under pre-AIA law: If evidence shows that either application is prior art unto the other under pre-AIA 35 U.S.C. 102(f) or (g) and the copending application has not been disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection, a rejection should additionally be made under pre-AIA 35 U.S.C. 102(f)/103(a) or 102(g)/103(a) using form paragraph 7.21.fti.

12. For applications being examined under pre-AIA law: 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.fti to additionally make a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) in the application with the later effective U.S. filing date. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

13. For applications being examined under pre-AIA law: See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.

14. For applications being examined under the AIA: See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application when the application is being examined under the AIA for double patenting purposes.

2.   Another Type of Nonstatutory Double Patenting Rejection

There are some unique circumstances where it has been recognized that another type of nonstatutory double patenting rejection is applicable even where the inventions claimed in two or more applications/patents are considered nonobvious over each other. These circumstances are illustrated by the facts before the court in In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). In affirming the double patenting rejection, the court summed up the situation:

in appellant’s own terms: The combination ABC was old. He made two improvements on it, (1) adding X and (2) adding Y, the result still being a unitary clip of enhanced utility. While his invention can be practiced in the forms ABCX or ABCY, the greatest advantage and best mode of practicing the invention as disclosed is obtained by using both inventions in the combination ABCXY. His first application disclosed ABCXY and other matters. He obtained a patent claiming [a clip comprising] BCX and ABCX, . . . so claiming these combinations as to cover them no matter what other feature is incorporated in them, thus covering effectively ABCXY. He now, many years later, seeks more claims directed to ABCY and ABCXY. Thus, protection he already had would be extended, albeit in somewhat different form, for several years beyond the expiration of his patent, were we to reverse.

397 F.2d at 355-56, 158 USPQ at 216 (emphasis in original).

The court recognized that “there is no double patenting in the sense of claiming the same invention because ABCX and ABCY are, in the technical patent law sense, different inventions. The rule against ‘double patenting,’ however, is not so circumscribed. The fundamental reason for the rule is to prevent unjustified timewise extension of the right to exclude granted by a patent no matter how the extension is brought about. To . . . prevail here, appellant has the burden of establishing that the invention claimed in his patent is ‘independent and distinct’ from the invention of the appealed claims…appellant has clearly not established the independent and distinct character of the inventions of the appealed claims.” 397 F.2d at 354-55, 158 USPQ at 214-15 (emphasis in original). The court observed:

The controlling fact is that patent protection for the clips, fully disclosed in and covered by the claims of the patent, would be extended by allowance of the appealed claims. Under the circumstance of the instant case, wherein we find no valid excuse or mitigating circumstances making it either reasonable or equitable to make an exception, and wherein there is no terminal disclaimer, the rule against “double patenting” must be applied.

397 F.2d at 355, 158 USPQ at 215.

The decision in In re Schneller did not establish a rule of general application and thus is limited to the particular set of facts set forth in that decision. The court in Schneller cautioned “against the tendency to freeze into rules of general application what, at best, are statements applicable to particular fact situations.” Schneller, 397 F.2d at 355, 158 USPQ at 215. Nonstatutory double patenting rejections based on Schneller will be rare. The Technology Center (TC) Director must approve any nonstatutory double patenting rejections based on Schneller. If an examiner determines that a double patenting rejection based on Schneller is appropriate in his or her application, the examiner should first consult with his or her supervisory patent examiner (SPE). If the SPE agrees with the examiner then approval of the TC Director must be obtained before such a nonstatutory double patenting rejection can be made.

A fact situation similar to that in Schneller was presented to a Federal Circuit panel in In re Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986). Kaplan had been issued a patent on a process of making chemicals in the presence of an organic solvent. Among the organic solvents disclosed and claimed as being useful were tetraglyme and sulfolane. One unclaimed example in the patent was specifically directed to a mixture of these two solvents. The claims in the application to Kaplan and Walker, the application before the Office, were directed to essentially the same chemical process, but requiring the use of the solvent mixture of tetraglyme and sulfolane. In reversing the double patenting rejection, the court stated that the mere fact that the broad process claim of the patent requiring an organic solvent reads on or “dominates” the narrower claim directed to basically the same process using a specific solvent mixture does not, per se, justify a double patenting rejection. The court also pointed out that the double patenting rejection improperly used the disclosure of the joint invention (solvent mixture) in the Kaplan patent specification as though it were prior art.

A significant factor in the Kaplan case was that the broad invention was invented by Kaplan, and the narrow invention (i.e., using a specific combination of solvents) was invented by Kaplan and Walker. Since these applications (as the applications in Braat) were filed before the Patent Law Amendments Act of 1984 (Pub. Law 98-622, November 8, 1984) amending 35 U.S.C. 116 to expressly authorize filing a patent application in the names of joint inventors who did not necessarily make a contribution to the invention defined in each claim in the patent, it was necessary to file multiple applications to claim both the broad and narrow inventions. Accordingly, there was a valid reason, driven by statute, why the claims to the specific solvent mixture were not presented for examination in the Kaplan patent application.

Each double patenting situation must be decided on its own facts.

Form paragraph 8.33 and the appropriate one of form paragraphs 8.38 (between an issued patent and one or more applications) and 8.39 (provisional rejections) may be used to make this type of nonstatutory double patenting rejection.

¶ 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. 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.

2. 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.

3. 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).

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

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

6. For applications being examined under pre-AIA law: If evidence indicates that the reference patent is prior art under pre-AIA 35 U.S.C. 102(f) or (g), a rejection should additionally be made under pre-AIA 35 U.S.C. 102(f)/103(a) or 102(g)/103(a) using form paragraph 7.21.fti, unless the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

7. For applications being examined under pre-AIA law: If the patent is to another inventive entity and has an earlier U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) may be made using form paragraph 7.21.02.fti. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

8. For applications being examined under the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

¶ 8.39    Double Patenting - Nonstatutory (Based Solely on Improper Timewise Extension of Patent Rights) With Another Application

Claim [1] provisionally rejected on the ground of nonstatutory double patenting over claim [2] of copending Application No. [3]. This is a provisional double patenting rejection because the patentably indistinct claims have not in fact been patented.

The subject matter claimed in the instant application is fully disclosed in the referenced copending application and would be covered by any patent granted on that copending application since the referenced copending application and the instant application are claiming common subject matter, as follows: [4]

Furthermore, there is no apparent reason why applicant would be prevented from presenting claims corresponding to those of the instant application in the other copending application. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.

Examiner Note:

1. 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.

2. 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.

3. 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, another copending application which is commonly owned or where there is common inventorship (one or more inventors in common).

4. In bracket 3, insert the number of the reference copending application.

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

6. For applications being examined under pre-AIA law: If the copending application is currently commonly assigned but the file does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph to also resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g).

7. For applications being examined under the AIA: If the copending application is to a different inventive entity and is commonly assigned with the application, form paragraph 8.28.aia should additionally be used if there is no evidence of common ownership as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention. A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

8. A provisional double patenting rejection should also be made in the copending application.

9. For applications being examined under pre-AIA law: If evidence shows that either application is prior art unto the other under pre-AIA 35 U.S.C. 102(f) or (g) and the copending application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection based on common ownership, a rejection should additionally be made in the copending application under pre-AIA 35 U.S.C. 102(f)/103(a) or 102(g)/103(a) using form paragraph 7.21.fti, unless the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

10. For applications being examined under pre-AIA law: 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.fti to additionally make a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) in the application with the later effective U.S. filing date. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

11. For applications being examined under the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

12. For applications being examined under pre-AIA law: See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.

13. For applications being examined under the AIA: See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application when the application is being examined under the AIA for double patenting purposes.

3.   Design/Plant — Utility Situations

Double patenting issues may be raised where an applicant has filed both a utility patent application (35 U.S.C. 111) and either an application for a plant patent (35 U.S.C. 161) or an application for a design patent (35 U.S.C. 171). In general, the same double patenting principles and criteria that are applied in utility-utility situations are applied to utility-plant or utility-design situations. Double patenting rejections in utility-plant situations may be made in appropriate circumstances.

Although double patenting is rare in the context of utility versus design patents, a double patenting rejection of a pending design or utility application can be made on the basis of a previously issued utility or design patent, respectively. Carman Indus. Inc. v. Wahl, 724 F.2d 932, 220 USPQ 481 (Fed. Cir. 1983). The rejection is based on the public policy preventing the extension of the term of a patent. Double patenting may be found in a design-utility situation irrespective of whether the claims in the patent relied on in the rejection and the claims in issue involve the same invention, or whether they involve inventions which are obvious variations of one another. In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).

In Carman Indus., the court held that no double patenting existed between a design and utility patent since the claims in the utility patent, drawn to the interior construction of a flow promoter, were not directed to the same invention or an obvious variation of the invention claimed in a design patent directed to the visible external surface configuration of a storage bin flow promoter. The majority opinion in this decision appears to indicate that a two-way obviousness determination is necessary in design-utility cases. 724 F.2d at 940-41, 220 USPQ at 487-88. But see Carman Indus. (J. Nies, concurring).

In Thorington, the court affirmed a double patenting rejection of claims for a fluorescent light bulb in a utility patent application in view of a previously issued design patent for the same bulb. In another case, a double patenting rejection of utility claims for a finger ring was affirmed in view of an earlier issued design patent, where the drawing in both the design patent and the utility application illustrated the same article. In re Phelan, 205 F.2d 183, 98 USPQ 156 (CCPA 1953). A double patenting rejection of a design claim for a flashlight cap and hanger ring was affirmed over an earlier issued utility patent. In re Barber, 81 F.2d 231, 28 USPQ 187 (CCPA 1936). A double patenting rejection of claims in a utility patent application directed to a balloon tire construction was affirmed over an earlier issued design patent. In re Hargraves, 53 F.2d 900, 11 USPQ 240 (CCPA 1931).

III.   CONTRAST BETWEEN DOUBLE PATENTING REJECTION AND REJECTIONS BASED ON PRIOR ART

Rejections over a patent or another copending application based on double patenting or 35 U.S.C. 103(a) are similar in the sense that both require comparison of the claimed subject matter with at least part of the content of another patent or application, and both may require that an obviousness analysis be made. However, there are significant differences between a rejection based on double patenting and one based on 35 U.S.C. 102(e) prior art under 35 U.S.C. 103(a). In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).

One significant difference is that a double patenting rejection must rely on a comparison with the claims in an issued or to be issued patent, whereas an anticipation or obviousness rejection based on the same patent under 35 U.S.C. 102(e)/103(a) relies on a comparison with what is disclosed (whether or not claimed) in the same issued or to be issued patent. In a 35 U.S.C. 102(e)/103(a) rejection over a prior art patent, the reference patent is available for all that it fairly discloses to one of ordinary skill in the art, regardless of what is claimed. In re Bowers, 359 F.2d 886, 149 USPQ 570 (CCPA 1966).

A second significant difference is that a terminal disclaimer cannot be used to obviate a rejection based on 35 U.S.C. 102(e)/103(a) prior art. In re Fong, 378 F.2d 977, 154 USPQ 25 (CCPA 1967). The purpose of a terminal disclaimer is to obviate a double patenting rejection by removing the potential harm to the public by issuing a second patent, and not to remove a patent as prior art.

For applications filed on or after November 29, 1999 and for applications pending on or after December 10, 2004, a commonly assigned/owned patent or application may be disqualified as 35 U.S.C. 102(e) prior art in a 35 U.S.C. 103(a) rejection. See 35 U.S.C. 103(c)(1). As an alternative to invoking the prior art exclusion under 35 U.S.C. 103(c)(1), the assignee can take some preemptive measures to avoid having a commonly assigned/owned copending application become prior art under 35 U.S.C. 102(e). The applications can be filed on the same day, or copending applications can be merged into a single continuation-in-part application and the parent applications abandoned. If these steps are undesirable or the first patent has issued, the prior art effect of the first patent may be avoided by a showing under 37 CFR 1.132 that any unclaimed invention disclosed in the first patent was derived from the inventor of the application before the examiner in which the 35 U.S.C. 102(e)/103(a) rejection was made. In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982). See also MPEP § 716.10. It may also be possible for applicant to respond to a 35 U.S.C. 102(e)/103(a) rejection by showing, under 37 CFR 1.131, that the date of invention of the claimed subject matter was prior to the effective filing date of the reference patent which has been relied upon for its unclaimed disclosure. See MPEP § 715. See also 37 CFR 1.130 and MPEP § 718 for affidavits or declarations to disqualify a commonly owned patent as prior art under 35 U.S.C. 103.

For applications pending on or after December 10, 2004, and for reexamination proceedings in which the patent under reexamination was granted on or after December 10, 2004, a patent or application may be disqualified as 35 U.S.C. 102(e) prior art in a 35 U.S.C. 103(a) rejection if evidence of a joint research agreement pursuant to 35 U.S.C. 103(c)(2) and (3) is made of record in the application (or patent) being examined (or reexamined), and the conflicting claims resulted from a joint research agreement that was in effect on or before the date the later claimed invention was made.

An examiner should make both a 35 U.S.C. 102(e)/103 rejection and a double patenting rejection over the same reference when the facts support both rejections. Note that even if an earlier patent or application to another is disqualified as prior art in a 35 U.S.C. 103(a) rejection based on common ownership or a joint research agreement as discussed above, that patent or application is available as prior art under 35 U.S.C. 102(e) and may form the basis of an anticipation rejection. If the examiner makes only one of these rejections when each is separately applicable, and if the next office action includes the previously omitted rejection, then the next Office action cannot be made final. A prior art reference that anticipates or renders claimed subject matter obvious under 35 U.S.C. 102(e)/103(a) does not create a double patenting situation where that subject matter is not claimed in the reference patent. 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 reference is disqualified under 35 U.S.C. 103(c) as prior art in a 35 U.S.C. 103(a) rejection. See MPEP § 706.02(l)(1) for information regarding when prior art is disqualified under 35 U.S.C. 103(c) based on common ownership or claimed inventions made as a result of activities undertaken within the scope of a joint research agreement.

Until applicant establishes the existence of a joint research agreement, the examiner cannot apply a double patenting rejection based on the possible existence of such an agreement. If in reply to an Office action applying a rejection under 35 U.S.C. 102(e)/103, applicant disqualifies the relied upon reference under the joint research agreement provision of 35 U.S.C. 103(c) and a subsequent double patenting rejection based upon the disqualified reference is applied, the next Office action may be made final even if applicant did not amend the claims (provided the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)). The Office action is properly made final because the new double patenting rejection was necessitated by the applicant’s amendment of the application.