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

Executive summary:

This document contains Section 806.04(i) ("Generic Claims Presented ** After Issue of Species") of the Manual of Patent Examining Procedure (the "M.P.E.P."), Eighth Edition, Eighth Revision (July 2010). This page was last updated in January 2011. You may return to the section index to find a particular section. Alternatively, you may search the MPEP using the search box that appears on the left side of every page of BitLaw--you may restrict your search to the MPEP on the search results page.

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806.04(i) Generic Claims Presented ** After Issue of Species [R-3]

**>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).