Does filing 2 inventions merged in 1 application work?

[Weng Tianxiang]

Hi  still_learnin,

Thank you for your advice.

I checked my one set of claim and found that mentioning the new type of signals in application A is enough to meet the requirement of "enable" problem.

Here is my reason:

In application A my first independent claim describes every element in the drawing, or in other words, based on the my first independent claim, person in the art can build the circuit without full definition of the new type of signals. The drawing indicates that a special set of signals connects here and another special set of signals connects there, and their most important characteristics are clearly described in the independent claim. I move the full definition of the set of signals to dependent claims in order to avoid double patenting.

While drawings are a part of interpreting a claim, the spec/drawings should not be "imported into" a claim. So if the independent claim does not include anything more than "new set of signals," and you rely instead on information in the drawings rather than the claim itself to enable your "new set of signals" portion of the claim, the Examiner may take the position that the independent claim is not enabled.

If that happens, sounds like you could overcome the rejection by moving the signal "definition" from the dependent claim into the independent.

I carefully modified my independent claim for invention A to adopt your advice.

[Weng Tianxiang]

Hi,

Thanks advice from still_learnin, EvilLost and smgsmc, I decide to file 2 non-provisional applications .

I know there are 2 methods to do that.

1. My originally planned method:
I use one set of specification and drawing, and 2 sets of claims and extracts to file 2 non-provisional applications at the same day. Later I will list the other in one's IDS.

2. Learned method from this post comments:
File one non-provisional applications first, then file a continuation application based on the first filed application.

I don't know if there are any differences between them and what advantage one may have over another.

Thank you.

[EvilLost]

So I decide to take your advice and file 2 different non-provisional applications. Thank you very much!!!

Just to be clear, I wasn't saying you should file 2 separate applications. I was merely pointing out that you can do it a few different ways.

I feel it important to say that we are not your lawyers and this is not legal advice. Please realize that we don't know the details of your case....this is more general information on how USPTO rules work. If you want legal advice, you should have a formal consult with a licensed practitioner. Do not rely on your interpretation of what we say here as legal advice.

I don't know if there are any differences between them.

There are differences, but it starts to get technical. One important difference is that if you don't IBR correctly, the info from the other application may not carry over (or in other jurisdictions). When doing a CON the disclosure is exactly the same as the parent (no new matter), so you can be sure that anything in the parent is also available for use in the CON.

from EvilLost:

PS: Why 2 terminal disclaimers? You would only need to disclaim the one with the longer term.

Could you please tell me the official source? I mistakenly thought that each of them must file a term disclaimer.

This is generally obvious if you understand the reason behind the requirements. It is meant to prevent prolonging patent terms by gaming the system. You file a terminal disclaimer to disclaim the extra length of a longer patent, so that its term becomes equal to the shorter patent (the extra time, ie the terminal part, gets "cut" off). Nothing would happen if you disclaimed the term of a shorter patent in view of a longer one....the shorter one already ends first, so there is no extra part and the term length doesn't change.

https://www.uspto.gov/web/offices/pac/mpep/s1490.html

[still_learnin]

Why 2 terminal disclaimers? You would only need to disclaim the one with the longer term.

Could you please tell me the official source? I mistakenly thought that each of them must file a term disclaimer.

Note that an Applicant can voluntarily file terminal disclaimers at any time, for any reason. And an Applicant is never truly required to file a terminal disclaimer.

However ... terminal disclaimers are almost always filed in response to a Double Patenting rejection, which means it's important to understand Double Patenting rejections. MPEP 804 has a very long section that describes scenarios where a Double Patenting rejection is appropriate, and scenarios where the Examiner is directed to withdraw a DP rejection.

See in particular MPEP section 804.I.B.1.b.

[Weng Tianxiang]

Hi EvilLost,

My saying that I thank you for your advice never means that I received a legal advice from a lawyer, but thank you for your time spent on your response. My using "advice" instead of "response" shows my more respect for your time spent and means that the responses come from an experienced professional, a patent agent, a patent lawyer, or an Examiner at USPTO.

I thank every response to my post.

Of cause I made a mistake and filed an extra terminal declaimer in my last 3 patents. Thank you for your instructions. The same mistake will never happen again.

One important difference is that if you don't IBR correctly, the info from the other application may not carry over (or in other jurisdictions).

What is "IBR". Do you mean Information Disclosure Statement at USPTO?

I think another advantages to file a CON may be:

1. USPTO may assign an application and a CON to a single Examiner, instead of 2 different Examiners that saves time spent on reading the specs for one Examiner, shortening whole examining time.

2. It may also save settling time for the CON to an art unit in USPTO.

Hi still_learnin,

Terminal disclaimers are almost always filed in response to a Double Patenting rejection, which means it's important to understand Double Patenting rejections.

Very good and simple idea, leaving the problem's complexity to the Examiner!

Thank you.

[EvilLost]

My saying that I thank you for your advice never means that I received a legal advice from a lawyer, but thank you for your time spent on your response. My using "advice" instead of "response" shows my more respect for your time spent and means that the responses come from an experienced professional, a patent agent, a patent lawyer, or an Examiner at USPTO.

I thank every response to my post.

I appreciate that. Just wanted to be clear just in case. You'll notice some members on these boards actually include a comment like that in their signatures ("I'm not your lawyer and this is not legal advice" kind of thing). Perhaps I should do that too

One important difference is that if you don't IBR correctly, the info from the other application may not carry over (or in other jurisdictions).

What is "IBR". Do you mean Information Disclosure Statement at USPTO?

IBR = Incorporation By Reference

[smgsmc]

Hi,

Thanks advice from still_learnin, EvilLost and smgsmc, I decide to file 2 non-provisional applications .

I know there are 2 methods to do that.

1. My originally planned method:
I use one set of specification and drawing, and 2 sets of claims and extracts to file 2 non-provisional applications at the same day. Later I will list the other in one's IDS.

2. Learned method from this post comments:
File one non-provisional applications first, then file a continuation application based on the first filed application.

I don't know if there are any differences between them and what advantage one may have over another.

Thank you.

Some other considerations:

(a) Payment of fees.  In Method 1, you need to have the money to pay both application fees at the same time.  In Method 2, you can file the CON at any time prior to the issuance of the parent (actually the USPTO allows you to file the CON on the day of issuance of the parent; but best to avoid this).

(b) Simultaneous prosecution.  In Method 1, prosecution of both applications could overlap.  If they are closely related, you could end up making similar amendments and arguments, which may be unsuccessful, and end up filing RCEs for both applications.  In Method 2, if you wait to file the CON after the parent has been allowed, you know which amendments and arguments have been successful and which have not, so you can draft the claims for the CON appropriately and get allowance more readily.  Of course, this strategy delays issuance of the CON, since you delayed filing it.

[Weng Tianxiang]

Hi smgsmc,

Thank you for your advice!

I decide to file the first non-provisional application, and at the same day after having filed the first non-provisional application I will file a CON immediately so that I may take advantages for one Examiner to examine my 2 applications and the Examiner may have a push to speed up my application prosecution.

Two independent claims are dramatically different and I think I can also benefit from one Examiner. Last time my 2 applications were examined by one female Examiner. After I learned something new in claims, both were allowed through one telephone call that lasted 2 hours.

I think another advantages to file a CON may be:

1. USPTO may assign an application and a CON to a single Examiner, instead of 2 different Examiners that saves time spent on reading the specs for one Examiner, shortening whole examining time.

2. It may also save settling time for the CON to an art unit in USPTO.

[smgsmc]

Hi smgsmc,

Thank you for your advice!

I decide to file the first non-provisional application, and at the same day after having filed the first non-provisional application I will file a CON immediately so that I may take advantages for one Examiner to examine my 2 applications and the Examiner may have a push to speed up my application prosecution.

Two independent claims are dramatically different and I think I can also benefit from one Examiner. Last time my 2 applications were examined by one female Examiner. After I learned something new in claims, both were allowed through one telephone call that lasted 2 hours.

I think another advantages to file a CON may be:

1. USPTO may assign an application and a CON to a single Examiner, instead of 2 different Examiners that saves time spent on reading the specs for one Examiner, shortening whole examining time.

2. It may also save settling time for the CON to an art unit in USPTO.

Perhaps one of the Examiners here will chime in.  Not sure what you did will guarantee that both applications will be assigned to the same Examiner.

[bluerogue]

Perhaps one of the Examiners here will chime in.  Not sure what you did will guarantee that both applications will be assigned to the same Examiner.

CONs will generally go to the same examiner assuming a similar classification.  No guarantees though, particularly if the claims are directed to different inventions that might be classified differently.