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822.01 Copending Before the Examiner - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
822.01 Copending Before the Examiner
37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
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(b) Where two or more applications filed by the same applicant contain conflicting claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.
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37 CFR 1.130 Affidavit or declaration to disqualify commonly owned patent or published application as prior art.
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(b) When an application or a patent under reexamination claims an invention which is not patentably distinct from an invention claimed in a commonly owned patent with the same or a different inventive entity, a double patenting rejection will be made in the application or a patent under reexamination. A judicially created double patenting rejection may be obviated by filing a terminal disclaimer in accordance with § 1.321(c).
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Where claims in one application are un- patentable over claims of another application of the same inventive entity (or different inventive entity with common ownership) because they recite the same invention, a complete examination should be made of the claims of each application and all appropriate rejections should be entered in each application, including rejections based upon prior art. The claims of each application may also be rejected on the grounds of provisional double patenting on the claims of the other application whether or not any claims avoid the prior art. Where appropriate, the same prior art may be relied upon in each of the applications. See also MPEP § 804.01 and § 822.
ONLY PROVISIONAL DOUBLE PATENTING REJECTION REMAINING IN ONE APPLI-CATION
The "provisional" double patenting rejection should continue to be made by the examiner in each application as long as there are conflicting claims in more than one application unless that "provisional" double patenting rejection is the only rejection remaining in one of the applications. If the "provisional" double patenting rejection in one application is the only rejection remaining in that application, the examiner should then withdraw that rejection and permit the application to issue as a patent, thereby converting the "provisional" double patenting rejection in the other application(s) into a double patenting rejection at the time the one application issues as a patent. See also MPEP § 804.01 and § 822.
ONLY PROVISIONAL DOUBLE PATENTING REJECTIONS REMAINING IN BOTH APPLI-CATIONS
If the "provisional" double patenting rejections in both applications are the only rejections remaining in those applications, the examiner should then withdraw that rejection in one of the applications and permit the application to issue as a patent. The examiner should maintain the double patenting rejection in the other application as a "provisional" double patenting rejection which will be converted into a double patenting rejection when the one application issues as a patent.
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