806.04(i) Generic Claims Presented In a Separate Application After Issuance of Species Claims [R-07.2015]
If a generic claim is presented in a separate application 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 nonstatutory double patenting when the patent and application have at least one 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. 102(c) or pre-AIA 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).