Q) Double Patenting (10.02.8a)

by patentbar on August 22, 2008 · 7 comments

in Exam Questions

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.

{ 7 comments… read them below or add one }

1 mdavis68No Gravatar April 13, 2010 at 6:49 am

15. The MPEP and USPTO rules and procedure provide for ways that a statutory double patenting rejection can be overcome. Which of the following is an effective way to overcome a statutory double patenting rejection?

(A) Filing a 37 CFR .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 and arguing that the conflicting claims are coextensive in scope.
(D) Amending the conflicting claims so that they are not coextensive in scope.
(E) All of the above.

15. ANSWER: Choice (D) is the correct answer. MPEP § 804.02, reads, “A rejection based on the statutory type of double patenting can be avoided by amending the conflicting claims so that they are not coextensive in scope.” Choices (A) and (C) are each incorrect because MPEP § 804.02, reads, “The use of a 37 C.F.R. § 1.131 affidavit in overcoming a statutory double patenting rejection is inappropriate.” Choice (C) is further incorrect since the statutory double patenting rejection is based on the conflicting claims being coextensive in scope. Choice (B) is incorrect because MPEP § 804.02, reads, “A terminal disclaimer is not effective in overcoming a statutory double patenting rejection.” Choice (E) is incorrect because choices (A), (B), and (C) are each incorrect.

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2 KforsytheNo Gravatar October 16, 2011 at 9:32 pm

Can someone reconcile the answer in the first question above and the comment from mdavis68?? If 804.02 says that “a terminal discplaimer is not effective in overcoming a statutory double patenting rejection” how can “b” be the correct answer in the sample question above (the first one). That’s the answer I picked too.

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3 KforsytheNo Gravatar October 16, 2011 at 9:37 pm

ahhhhh I see. The difference in the two questions is whether it is a STATUTORY or NONSTATUTORY double patenting situation. Statutory caNOTn be overcome by a terminal disclaimer, whereas nonstatutory can be. Statutory double patenting can be overcome via the coenstive scope option.

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4 maggieNo Gravatar October 16, 2011 at 9:55 pm

To overcome Double Patenting Rejections Two applications having either OR one Common Inventor OR same owner
Two types
(1) Same-Invention Type/Statutory: Not curable, amend claims so not coextensive in scope or Canceling the claims from one of the applications
(2) Obvious-type/Statutory: Filing a terminal disclaimer so that patents expire on the same date ,
Note: Can NOT use a131 affidative to overcome double patenting rejection.

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5 KFNo Gravatar November 2, 2011 at 10:30 am

hmmm..ok so the difference is not the statutory vs. nonstatutory?? What is the difference between these two types? Maggie-I don’t really understand your response. So you can use a terminal disclaimer to overcome a statutory type double patenting situation if it is an obvious type?? What is an obvious type?? A situation where there is the same owner or inventor?? Do you have an MPEP reference? Thanks!

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6 obliviousnessNo Gravatar December 21, 2011 at 12:46 am

maggie’s response should have read (2) obvious/NON-Statutory…

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7 GDBNo Gravatar April 15, 2012 at 4:42 pm

Non-statutory type double patenting = a rejection is made due to obviousness i.e. under 103 (so you would have a 103 rejection based on a piece of 102 prior art).

Statutory type double patenting = a rejection based on 102 prior art only.

You can’t swear behind either a statutory or a non-statutory double patenting rejection.

You CAN use a terminal disclaimer to overcome non-statutory double patenting but not statutory double patenting.

The rationale for this (in my opinion) is because you can’t have 2 patents claiming the same invention as in the case of statutory double patenting. But with non-statutory double patenting, the same invention isn’t claimed. The invention in the second application is an obvious variant of the invention in the first application so they let you keep both applications concurrently. But at the same time, it wouldn’t be fair to third parties to give you a longer patent term than the original application was entitled to because the invention in the second application is after all, obvious over the invention in the first application.

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