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(Message started by: MattB on Sep 18th, 2007, 6:26pm)

Title: Deal with a nonstatutory obvious type double patnt
Post by MattB on Sep 18th, 2007, 6:26pm
Hello,

If I get a nonstatutory obviousness-type double patenting rejection,

How do I deal with this as part of an OA that includes at 102 and 103 also.
Must I mention a Terminal Disclaimer in the Response?  Can I ignore it and file a TD later?  Must I also file the TD with the Response?

Thank you,


Title: Re: Deal with a nonstatutory obvious type double p
Post by MattB on Sep 19th, 2007, 12:15pm
To answer the Q,

You need to mention something like...

"Applicant is submitting herewith a terminal disclaimer Form PTO/SB/26 and payment of the appropriate fee required by law to disclaim the terminal part of any patent that may issue upon the present application to the extent such term would extend beyond the term of to U.S. Patent No. ********X and is signed by the attorney of record as required by 37 C.F.R. 1.321(b)(iv)."

You should file the TD with the response, and fee, so as to put the application immediately into the form for allowance.

Check MPEP 804.02.

All the best,

Matt B

Title: Re: Deal with a nonstatutory obvious type double p
Post by Isaac on Sep 19th, 2007, 2:09pm

on 09/19/07 at 12:15:14, MattB wrote:
You should file the TD with the response, and fee, so as to put the application immediately into the form for allowance.


If the client's interests aren't adversely affected, then perhaps it's okay to just file the TD even while the claims are still a moving target, but if the claims are still changing, sometimes the examiner won't insist on getting a TD if you disagree with the DP rejection, but indicate that you'll file one if needed once the claims stop changing.    

However, such a response doesn't completely traverse the DP rejection and there is some risk that such a reply might be considered non-response.   Of course  you can also argue a traversal of the DP rejection.

You cannot simply ignore the DP rejection as that gives an unacceptably high risk of your reply being considered fatally non-responsive such that the examiner won't give you a chance to repair it.

In looking at MPEP 804.02, I see some obsolete or at least deprecated language.   The warning about "insisting on a common issue date" is probably not so meaningful these days days as issue dates are irrelevant for determining patent term for utility patents.


Title: Re: Deal with a nonstatutory obvious type double p
Post by MattB on Sep 19th, 2007, 2:41pm

Quote:
However, such a response doesn't completely traverse the DP rejection and there is some risk that such a reply might be considered non-response.   Of course  you can also argue a traversal of the DP rejection.

You cannot simply ignore the DP rejection as that gives an unacceptably high risk of your reply being considered fatally non-responsive such that the examiner won't give you a chance to repair it.


Hi Isaac,

Thanks for you comments.  I forgot to mention that this is a continuation of an issued patent, the issued patent being cited as the double patenting problem.

Does this mean that I still have to respond to the DP, or will the TD by itself be enough to overcome the DP.

Thanks!

Title: Re: Deal with a nonstatutory obvious type double p
Post by MattB on Sep 19th, 2007, 2:43pm
NOTE: By the way, the whole idea of TD for patents seems obsolete since we now date patent term to the earliest filing date.

I suppose for CIPs it may be damaging as TD's must be directed to the entire application and not just particular claims, but I was surprised to see it in this instance.

Title: Re: Deal with a nonstatutory obvious type double p
Post by Isaac on Sep 19th, 2007, 7:42pm

on 09/19/07 at 14:43:47, MattB wrote:
NOTE: By the way, the whole idea of TD for patents seems obsolete since we now date patent term to the earliest filing date.


Not so. For one thing, DP rejections can be made between applications that don't have a common effective filing date. For another thing the TD also requires that the patents remain commonly owned in addition to making them expire on the same date.


Quote:
I suppose for CIPs it may be damaging as TD's must be directed to the entire application and not just particular claims, but I was surprised to see it in this instance.


I don't know what you are getting at here.

When filing a TD, I normally mention that a TD accompanies the response and request that the rejection be withdrawn in light of filing the TD.  Some times I've indicated that I disagree with the rejection and am filing the TD to expedite prosecution.





Title: Re: Deal with a nonstatutory obvious type double p
Post by JW on Nov 5th, 2007, 4:16pm
There is also the possibility of adversely affecting your Patent Term Adjustment (PTA) by filing a TD.  Thus, the issue of filing a TD is not obsolete.



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