Nonstatutory Double Patenting over parent app in view of other patent?

[mersenne]

This is a new rejection for me, from an examiner I know to be astonishingly meticulous.

Claims are rejected on the ground of nonstatutory double patenting over claims of parent app, in view of another patent.

I'm not sure what to make of this...it looks like a TD will overcome it, but I don't understand what the another patent has to do with things.

Suppose app 1 claims a widget with a novel feature, and it issues as patent 1.  App 2, a continuation, claims a widget with the novel feature, and another feature.  App 2 could be NSDP over patent 1, since the widget claimed in app 2 would infringe patent 1, but why is it necessary to bring in patent X (which presumably teaches another feature)?  App 1 was already patentable over patent X, and app 2 should be as well, although app 2 might be NSDP over app 1/patent 1.

[lazyexaminer]

This is a new rejection for me, from an examiner I know to be astonishingly meticulous.

Claims are rejected on the ground of nonstatutory double patenting over claims of parent app, in view of another patent.

I'm not sure what to make of this...it looks like a TD will overcome it, but I don't understand what the another patent has to do with things.

Suppose app 1 claims a widget with a novel feature, and it issues as patent 1.  App 2, a continuation, claims a widget with the novel feature, and another feature.  App 2 could be NSDP over patent 1, since the widget claimed in app 2 would infringe patent 1, but why is it necessary to bring in patent X (which presumably teaches another feature)?  App 1 was already patentable over patent X, and app 2 should be as well, although app 2 might be NSDP over app 1/patent 1.

Your "another feature" might in fact be "another novel and nonobvious feature" and thus app 2 is patentably distinct from app 1 and deserves its own patent without being tied to app 1. See MPEP 804 II.B.2. Using a secondary reference is routine IMO to show that the "another feature" is merely an obvious variant and thus app 2 is not patentably distinct. There are several form paragraphs around that section using them.

In noting that app 2 infringes app 1 you seem to be talking about domination, mentioned in part II, which doesn't mandate or preclude double patenting.

[mersenne]

Using a secondary reference is routine IMO to show that the "another feature" is merely an obvious variant and thus app 2 is not patentably distinct.

Ah, OK, that makes sense.  I just hadn't seen it before.  Thanks!

[Tobmapsatonmi]

Hey David.  Almost all the obviousness-type double patenting rejections I see nowadays use a piece of secondary art to show why the difference between the child app claims v. parent patent claims are just obvious variants.

I've read quite a few old file histories where an OTDP rejection glosses over the difference and just says it's a well-known variant (and it is indeed, usually), but the attorney reply insists on proof or argues the office is taking official notice without being explicit about it.  So to avoid this, I think most examiners figure it's just quicker to show it with a piece of art to keep the over-zealous attorney from arguing about whether a PF case has been made.

[PatentMe]

Wouldn't the parent and child expire at the same time anyways if the child claims priority to the parent?  Is there a downside to filing a terminal disclaimer in the situation?

[Tobmapsatonmi]

Hi PatentMe - I just responded to your similar questions in your thread.  Let me know if not clear or further questions.

[snapshot]

Hey David.  Almost all the obviousness-type double patenting rejections I see nowadays use a piece of secondary art to show why the difference between the child app claims v. parent patent claims are just obvious variants.

I've read quite a few old file histories where an OTDP rejection glosses over the difference and just says it's a well-known variant (and it is indeed, usually), but the attorney reply insists on proof or argues the office is taking official notice without being explicit about it.  So to avoid this, I think most examiners figure it's just quicker to show it with a piece of art to keep the over-zealous attorney from arguing about whether a PF case has been made.

The PTO is getting pickier with examiners about doing this, too.  It's become a QR focus, for whatever reason, so that could also be why you're seeing more "effort" put into an ODP rejection.

[wildkrazyguy]

Wouldn't the parent and child expire at the same time anyways if the child claims priority to the parent?

Not necessarily. There could be PTA in the child case, in which case it could expire after the parent.

[Tobmapsatonmi]

Wouldn't the parent and child expire at the same time anyways if the child claims priority to the parent?

Not necessarily. There could be PTA in the child case, in which case it could expire after the parent.

This is not correct.  The disclaimed child patent forfeits any of its own PTA which is in excess of the disclaimed-over parent's term plus any PTA awarded to the parent.

[wildkrazyguy]

Wouldn't the parent and child expire at the same time anyways if the child claims priority to the parent?

Not necessarily. There could be PTA in the child case, in which case it could expire after the parent.

This is not correct.  The disclaimed child patent forfeits any of its own PTA which is in excess of the disclaimed-over parent's term plus any PTA awarded to the parent.

Only if he files a TD. He was asking what is the downside of filing a TD, since the child would expire at the same time as the parent in any case.

[Tobmapsatonmi]

Thanks for the explanation/sorry for misunderstanding what you meant in the first place.