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2315.01 Suspension - Overlapping Applications - 2300 Interference Proceedings
2315.01 Suspension - Overlapping Applications
Where one of several applications of the same inventor or assignee which contain overlapping claims gets into an interference, the prosecution of all the cases not in the interference should be carried as far as possible, by treating as prior art the counts of the interference for the purpose of making provisional rejections and by insisting on proper lines of division or distinction between the applications. In some instances, suspension of action by the Office cannot be avoided. See MPEP § 709.01.
Where an application involved in an interference includes, in addition to the subject matter of the interference, a separate and divisible invention, prosecution of the second invention may be had during the pendency of the interference by filing a divisional application for the second invention or by filing a divisional application for the subject matter of the interference and moving to substitute the latter divisional application for the application originally involved in the interference. However, the application for the second invention may not be passed to issue if it contains claims broad enough to dominate matter claimed in the application involved in the interference.
¶ 23.17 Rejection Based on Count of an Interference
The rejection of claim [1] above based upon count [2] of Interference No. [3], to which applicant is a party, is a provisional rejection for the purpose of resolving all remaining issues in this application. The provisional assumption that the count is prior art under 35 U.S.C. 102(g) against this application may or may not be true, and the prosecution in this case will be suspended pending final determination of priority in the interference if and when no other issues remain.
Examiner Note
1. This paragraph must follow all rejections under 35 U.S.C. 102 or 103 using the count of the interference as prior art.
2. This paragraph is applicable only to an application which is commonly owned by a party in the interference but is not involved in the interference.
¶ 23.18 Suspension of Prosecution Pending Outcome of Interference
The outcome of Interference No. [1] has a material bearing on the patentability of the claims in this application. Prosecution in this application is SUSPENDED pending a final judgment in the interference.
Applicant should call this case up for action upon termination of the interference.
Examiner Note
This paragraph should only be used in an application that is not in the interference but is commonly owned by one of the parties thereto.
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