8. The MPEP and USPTO rules and procedure provide for ways that a nonstatutory double patenting rejection can be overcome. Which of the following is an effective way to overcome a nonstatutory double patenting rejection?
(A) Filing a 37 CFR 1.131 affidavit to swear behind the patent on which the rejection is based. (B) Filing a terminal disclaimer under 37 CFR 1.321(c). (C) Filing a 37 CFR 1.131 affidavit arguing that the claims are for different inventions that are not patentably distinct. (D) Filing a reply arguing that there is only one common inventor regarding the claims of the application and the claims of the patent. (E) All of the above.
8. ANSWER: Choice (B) is the correct answer. MPEP § 804.02, subpart (II) reads, “A
rejection based on a nonstatutory type of double patenting can be avoided by filing a terminal
disclaimer in the application or proceeding in which the rejection is made.” Choices (A) and (C)
are each incorrect. MPEP § 804.02, reads, “The use of a 37 C.F.R. § 1.131 affidavit in
overcoming a double patenting rejection is inappropriate…37 C.F.R. § 1.131 is inapplicable if
the claims of the application and the patent are ‘directed to substantially the same invention.’ It is
also inapplicable if there is a lack of ‘patentable distinctness’ between the claimed subject
matter.” Choice (C) is further incorrect since a nonstatutory double patenting rejection can be
based on the claims not being patentably distinct. MPEP § 804, subpart (II)(B)(1). Choice (D) is
incorrect because MPEP § 804, subpart (I)(A) reads, “Double patenting may exist between an
issued patent and an application filed by the same inventive entity, or by an inventive entity
having a common inventor with the patent.” Choice (E) is incorrect because choices (A), (C),
and (D) are each incorrect.