MPEP Section 806.04(i), Generic Claims Presented ** After Issue of Species

Executive summary:

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806.04(i) Generic Claims Presented ** After Issue of Species

**>If a generic claim is< presented ** after the issuance of a **>patent claiming one or more species within the scope of the generic claim<, the Office may reject the generic *>claim< on the grounds of obviousness-type double patenting >when the patent and application have at least once common inventor and/or are either (1) commonly assigned/owned or (2) non-commonly assigned/owned but subject to a joint research agreement as set forth in 35 U.S.C. 103(c)(2) and (3). See MPEP § 804.< Applicant may overcome such a rejection by filing a terminal disclaimer. See >In re Goodman, 11 F.3d 1046, 1053, 29 USPQ2d 2010, 2016 (Fed. Cir. 1993);< In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967).