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Author Topic: Is a non-statutory double patenting rejection proper in this situation?  (Read 383 times)

mybrainisfull

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Is a non-statutory double patenting rejection proper in this situation?

THE FACTS:

Three non-provisional patent applications were filed on the same day. Each application incorporates the disclosures of other two applications by reference. The first application claims an apparatus (A). The second application claims an apparatus (B). The third application claims a system comprising apparatus (A) and apparatus (B). The first application, claiming apparatus (A) has already issued as a patent. The second application, claiming apparatus (B) and the third application claiming a system are still pending.

THE ISSUE

The claimed system of the third application was rejected on the ground of non-statutory double patenting in view of the claims of the first application (now patented), and provisionally rejected the ground of non-statutory double patenting in view of the pending claims of the second application. The Examiner argues, although the claimed system includes limitations not claimed by either A or B, their specifications disclose those limitations, so it would be obvious to use A & B in the combination presently claimed (i.e. a system).

MY QUESTIONS:

1. Is it proper for the Examiner to rely on the specifications to justify this rejection? I thought only the language of claims at issue were supposed to be compared to determine if they are patently distinct from each other. It seems ridiculous to me if the examiner can rely on the spec to determine obviousness. Of course the system is obvious in view of the specification....all three applications have the same spec. (i.e. each application incorporates the other two disclosures by reference).

2. Isn't a system claim inherently patently distinguishable from an apparatus claim?   
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lazyexaminer

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1. No, the examiner is clearly wrong here. Canít rely on the spec like that.

2. Iíve never heard of that. Depends on what the art/secondary references say.
« Last Edit: 03-10-18 at 12:19 am by lazyexaminer »
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I'm not your examiner, I'm not your lawyer, and I'm speaking only for myself, not for the USPTO.
 



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