MPEP § 804 — MPEP § 804
Current through: 2022-07-01

804-Definition of Double Patenting 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0800 

 Section 804 
 

 
 
 
 
 
 804 Definition of Double Patenting [R-07.2022]

 
 35 U.S.C. 101 
 Inventions Patentable. 

 Whoever invents or discovers any new and useful process, machine,
 manufacture, or composition of matter or any new and useful improvement thereof, may
 obtain a patent therefor, subject to the conditions and requirements of this title. 
 

 

 
 35 U.S.C. 121 
 Divisional Applications. 

 [ Editor Note:
 Applicable to any patent application filed on or after September 16, 2012. See
 pre-AIA 35
 U.S.C. 121 for the law otherwise applicable. ]
 

 If two or more independent and distinct inventions are
 claimed in one application, the Director may require the application to be restricted to
 one of the inventions. If the other invention is made the subject of a divisional
 application which complies with the requirements of section 120 it
 shall be entitled to the benefit of the filing date of the original application. A
 patent issuing on an application with respect to which a requirement for restriction
 under this section has been made, or on an application filed as a result of such a
 requirement, shall not be used as a reference either in the Patent and Trademark Office
 or in the courts against a divisional application or against the original application or
 any patent issued on either of them, if the divisional application is filed before the
 issuance of the patent on the other application. The validity of a patent shall not be
 questioned for failure of the Director to require the application to be restricted to
 one invention.
 

 

 
 pre-AIA 35 U.S.C. 121 
 Divisional Applications. 

 [ Editor Note: Not applicable to any
 patent application filed on or after September 16, 2012. See 35 U.S.C.
 121 for the law otherwise applicable. ]
 

 If two or more independent and distinct inventions are claimed in one
 application, the Director may require the application to be restricted to one of the
 inventions. If the other invention is made the subject of a divisional application which
 complies with the requirements of section 120 of this title it shall
 be entitled to the benefit of the filing date of the original application. A patent
 issuing on an application with respect to which a requirement for restriction under this
 section has been made, or on an application filed as a result of such a requirement,
 shall not be used as a reference either in the Patent and Trademark Office or in the
 courts against a divisional application or against the original application or any
 patent issued on either of them, if the divisional application is filed before the
 issuance of the patent on the other application. If a divisional application is directed
 solely to subject matter described and claimed in the original application as filed, the
 Director may dispense with signing and execution by the inventor. The validity of a
 patent shall not be questioned for failure of the Director to require the application to
 be restricted to one invention. 
 

 

 The doctrine of double patenting seeks to prevent the unjustified extension
 of patent exclusivity beyond the term of a patent. The public policy behind this doctrine
 is that: 
 

 
 The public should . . . be able to act on the assumption that upon the
 expiration of the patent it will be free to use not only the invention claimed in the
 patent but also modifications or variants which would have been obvious to those of
 ordinary skill in the art at the time the invention was made, taking into account the
 skill in the art and prior art other than the invention claimed in the issued patent.
 
 

 
 In re Zickendraht, 319 F.2d 225, 232, 138 USPQ 22, 27 (CCPA 1963) (Rich,
 J., concurring). Double patenting results when the right to exclude granted in one patent
 is unjustly extended by the grant of another patent or patents. In re Van
 Ornum, 686 F.2d 937, 943-44, 214 USPQ 761, 766-67 (CCPA 1982). 
 

 Some commonality of inventorship or (deemed) ownership must exist between
 two or more patents or applications before consideration can be given to the issue of
 double patenting. For example, the patents or applications may have the same inventive
 entity. The patents or applications may also have at least one common (joint) inventor,
 which covers the situations where at least one patent or application names a sole inventor
 and the other patent(s) or application(s) names joint inventors and where all the patents
 or applications name joint inventors. For example, if one application names inventor A and
 the second application names joint inventors A and B, then the applications have one common
 (joint) inventor. As another example, if one application names joint inventors A and B and
 a second application names joint inventors A, B, and C, then the applications have two
 common joint inventors, and thus, have at least one common joint inventor. See
 35 U.S.C.
 100(f) for definition of “inventor” and 35 U.S.C.
 100(g) for definition of “joint inventor”. Alternatively, the patents
 or applications may have a common applicant, and/or be commonly assigned/owned or
 non-commonly assigned/owned but subject to a joint research agreement as set forth in
 35 U.S.C.
 102(c) or in pre-AIA 35 U.S.C. 103(c)(2) and (3) . To
 determine if subject matter excepted as prior art under 35 U.S.C.
 102(b)(2)(C) or disqualified as prior art under pre-AIA 35 U.S.C.
 103(c) may be considered for double patenting issues, see
 MPEP §
 804.03 . 
 

 There are generally two types of double patenting rejections. One is the
 “same invention” type double patenting rejection based on 35 U.S.C. 101 which
 states in the singular that an inventor “may obtain a patent.” The second is the
 “nonstatutory-type” double patenting rejection based on a judicially created doctrine
 grounded in public policy and which is primarily intended to prevent prolongation of the
 patent term by prohibiting claims in a second patent not patentably distinct from claims in
 a first patent. Since the doctrine of double patenting seeks to avoid unjustly extending
 patent rights at the expense of the public, the focus of any double patenting analysis
 necessarily is on the claims in the multiple patents or patent applications involved in the
 analysis. 
 

 The doctrine of nonstatutory double patenting also seeks to
 prevent the possibility of multiple suits against an accused infringer by different
 assignees of patents claiming patentably indistinct variations of the same invention.
 In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA
 1982) (citing Chisum, Patents , § 9.04(2)(b) (1981) ). A terminal
 disclaimer, submitted in compliance with 37 CFR 1.321(c) or (d) to overcome a
 double patenting rejection, includes a provision that the patent or any patent issuing from
 the application is only enforceable for and during such period that it is owned by the same
 party (or parties) that owns the other patents or applications, identified in the terminal
 disclaimer, that claim obvious variations of one invention. Van Ornum, 
 686 F.2d at 944-45, 214 USPQ at 767 (citing Chisum, Patents , §
 9.04(2)(b) (1981)). 
 

 Nonstatutory double patenting includes rejections based on
 anticipation, a one-way determination of “obviousness,” or a two-way determination of
 “obviousness.” It is important to note that the “obviousness” analysis for
 “obviousness-type” double-patenting is “similar to, but not necessarily the same as, that
 undertaken under 35 U.S.C. 103 .” In re Braat, 937 F.2d 589,
 592-93, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991) (citing In re Longi, 759
 F.2d 887, 892 n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985)); Geneva
 Pharmaceuticals, 349 F.3d 1373, 1378 n.1, 68 USPQ2d 1865, 1869 n.1 (Fed. Cir.
 2003). In addition, nonstatutory double patenting also includes rejections based on the
 equitable principle against permitting an unjustified timewise extension of patent rights.
 See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); see also
 subsection II.B.6, below. 
 

 The charts below are an overview of the treatment of applications having
 conflicting claims (e.g., where a claim in an application is not patentably distinct from a
 claim in a patent or another application). Note that although double patenting and
 unpatentability over prior art are two separate issues (for example, a double patenting
 reference that contains conflicting claims need not qualify as prior art), the charts speak
 to both issues when the reference is a patent or application for completeness.
 Specifically, the charts cover when two applications have claims to the same invention
 (Charts I-A) or to patentably indistinct inventions (Charts I-B) and when an application
 and a patent have claims to the same invention (Charts II-A) or to patentably indistinct
 inventions (Charts II-B). The charts also include first to invent (FTI) versions (i.e.,
 Charts I-A_FTI, I-B_FTI, II-A_FTI, and II-B_FTI) for use when examining an application that
 is subject to 35 U.S.C.
 102 and 103 in effect on March 15, 2013 (e.g.,
 pre-AIA 35 U.S.C.
 102 and 103 ) and America Invents Act (AIA)
 versions (i.e., Charts I-A_AIA, I-B_AIA, II-A_AIA, and II-B_AIA) for use when examining an
 application that is subject to 35 U.S.C. 102 and 103 in
 effect on March 16, 2013 ( AIA 35 U.S.C. 102 and 103 ).
 Therefore, in certain situations, examiners may have to use the FTI versions of the charts
 for an earlier-filed application that is subject to pre-AIA 35 U.S.C. 102 and
 103 
 and the AIA versions of the charts for the later-filed application that is subject to
 AIA 35 U.S.C.
 102 and 103 or vice versa. The charts show
 possible rejections based upon an earlier-filed application or patent that may be
 applicable if the record supports such rejections. For example, examiners should determine
 if an earlier-filed application or patent is prior art under pre-AIA 35 U.S.C.
 102(e) or 35 U.S.C. 102(a)(2) before making an
 anticipation or obviousness rejection based upon the earlier-filed application or patent. 
 

 The AIA versions of the charts provide that a (provisional)
 rejection under 35 U.S.C. 102(a)(2) should not be applied if the earlier-filed
 application or patent is not prior art in view of 35 U.S.C. 102(b)(2)(A) or
 (B) . The evidence necessary to show that the disclosure is by the
 inventor or a joint inventor or another who obtained the subject matter disclosed from the
 inventor or a joint inventor, and is therefore not prior art in view of 35 U.S.C.
 102(b)(2)(A) , requires a case-by-case analysis, which depends on
 whether it is apparent from the disclosure itself or the patent application specification
 that the disclosure is an inventor-originated disclosure. In the situation where a previous
 public disclosure by the inventor or a joint inventor (or which originated with the
 inventor or a joint inventor) was not within the grace period but was effective to
 establish that an intervening disclosure was not 35 U.S.C.
 102(a)(2) prior art in view of the exception of 35 U.S.C.
 102(b)(2)(B) , the previous inventor-originated public disclosure
 would qualify as prior art under 35 U.S.C. 102(a)(1) and no exception
 provision could possibly apply. See MPEP §§ 717 et seq. and 2155 et seq. for more information about the prior art exceptions under
 35 U.S.C.
 102(b)(2) .
 

 The AIA versions of the charts do not address the transition
 cases in which pre-AIA 35
 U.S.C. 102(g) applies to applications subject to AIA 35 U.S.C.
 102 and 103 . See MPEP §
 2159.03 to determine if an application is a transition
 application. Examiners should consult with a Technology Center Practice Specialist if an
 application is a transition application and the examiner finds potential pre-AIA 35 U.S.C.
 102(g) issues. 
 

 Finally, the AIA versions of the charts also do not address
 rejections under 35
 U.S.C. 101 and 115 for improper naming of inventor.
 Although the AIA eliminated pre-AIA 35 U.S.C. 102(f) , the patent
 laws still require the naming of the actual inventor or joint inventors of the claimed
 subject matter. See 35 U.S.C. 115(a) . In the rare situation
 where there is evidence on the record that the application does not name the correct
 inventorship, examiners should consult MPEP § 2157 to determine if a rejection
 under 35 U.S.C.
 101 and 115 should be made.
 

 See MPEP § 2258 for information pertaining to
 double patenting rejections in reexamination proceedings.
 

 

 

 

 

 

 

 

 

 

 I. INSTANCES WHERE DOUBLE PATENTING ISSUE CAN BE RAISED A double patenting issue may arise between two or more pending
 applications, or between one or more pending applications and a patent. A double
 patenting issue may likewise arise in a reexamination proceeding between the patent
 claims being reexamined and the claims of one or more applications and/or patents.
 Double patenting does not relate to international applications which have not yet
 entered the national stage in the United States. 
 

 A. Between Issued Patent and One or More Applications Double patenting may exist between an issued patent and an
 application which share the same inventive entity, at least one common (joint)
 inventor, a common applicant, and/or a common owner/assignee. See In re
 Hubbell, 709 F.3d 1140, 1146-47, 106 USPQ2d 1032, 1037-38 (Fed. Cir.
 2013) (in the context of an application and a patent that had two common joint
 inventors, but different inventive entities and no common owners or assignees, the
 court held that complete identity of ownership or inventive entities is not a
 prerequisite to a nonstatutory double patenting rejection). Double patenting may also
 exist where the inventions claimed in a patent and an application were made as a
 result of activities undertaken within the scope of a joint research agreement as
 defined in 35 U.S.C. 102(c) or
 pre-AIA 35
 U.S.C. 103(c)(2) and (3) . Since the inventor/applicant/patent
 owner has already secured the issuance of a first patent, the examiner must determine
 whether the grant of a second patent would give rise to an unjustified extension of
 the rights granted in the first patent. 
 

 B. Between Copending Applications—Provisional Rejections An examiner may become aware of two or more copending applications
 which share the same inventive entity, at least one common (joint) inventor, a common
 applicant, and/or a common owner/assignee, or that claim an invention resulting from
 activities undertaken within the scope of a joint research agreement as defined in
 35
 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and
 (3) , that would raise an issue of double patenting if one of
 the applications became a patent. Where this issue can be addressed without violating
 the confidential status of applications ( 35 U.S.C. 122 ), the courts have
 sanctioned the practice of making applicant aware of the potential double patenting
 problem if one of the applications became a patent by permitting the examiner to make
 a provisional rejection on the ground of double patenting. In re
 Mott, 539 F.2d 1291, 190 USPQ 536 (CCPA 1976); In re
 Wetterau, 356 F.2d 556, 148 USPQ 499 (CCPA 1966). An application that
 was published under 35 U.S.C. 122(b) without redactions can be utilized as a
 double patenting reference without violating the confidential status required by
 35 U.S.C.
 122 . An unpublished application, or an application that has
 been published as redacted, can be utilized as a double patenting reference without
 violating the confidential status required by 35 U.S.C. 122 when it has at
 least one common (joint) inventor, applicant, assignee, or owner, or is deemed
 commonly owned ( 35 U.S.C. 102(c) or
 pre-AIA 35
 U.S.C. 103(c)(2) ) with the application under examination. See
 MPEP §§
 2136.01 and 2154.01(d) for information on provisional rejections based
 on prior art. The merits of such a provisional rejection can be addressed by both the
 applicant and the examiner without waiting for the first patent to issue. 
 

 A provisional double patenting rejection should be made and
 maintained by the examiner until the rejection has been obviated or is no longer
 applicable except as noted below.
 

 1. Provisional Nonstatutory Double Patenting Rejections A complete response to a nonstatutory double
 patenting (NSDP) rejection is either a reply by applicant showing that the claims
 subject to the rejection are patentably distinct from the reference claims, or the
 filing of a terminal disclaimer in accordance with 37 CFR
 1.321 in the pending application(s) with a reply to the
 Office action (see MPEP § 1490 for a discussion of terminal disclaimers).
 Such a response is required even when the nonstatutory double patenting rejection
 is provisional. 
 

 As filing a terminal disclaimer, or filing a showing
 that the claims subject to the rejection are patentably distinct from the
 reference application’s claims, is necessary for further consideration of the
 rejection of the claims, such a filing should not be held in abeyance. Only
 compliance with objections or requirements as to form not necessary for further
 consideration of the claims may be held in abeyance until allowable subject matter
 is indicated. Replies with an omission should be treated as provided in
 MPEP §
 714.03 . Therefore, an application must not be allowed
 unless the required compliant terminal disclaimer(s) is/are filed and/or the
 withdrawal of the nonstatutory double patenting rejection(s) is made of record by
 the examiner. See MPEP § 804.02 , subsection VI, for filing terminal
 disclaimers required to overcome nonstatutory double patenting rejections in
 applications filed on or after June 8, 1995.
 

 If two (or more) pending applications are filed, in each of which
 a rejection of one claimed invention over the other on the ground of provisional
 nonstatutory double patenting (NSDP) is proper, the provisional NSDP rejection
 will be made in each application. Where there are three applications containing
 claims that conflict such that a provisional NSDP rejection is made in each
 application based upon the other two, and it is necessary to file terminal
 disclaimers to overcome the rejections, it is not sufficient to file a terminal
 disclaimer in only one of the applications addressing the other two applications.
 Rather, an appropriate terminal disclaimer must be filed in at least two of the
 applications to require common ownership or enforcement for all three
 applications. A terminal disclaimer may be required in each of the three
 applications in certain situations. See subsections (a)-(c) below. See also
 MPEP §
 1490 , subsection VI.D. 
 

 (a) Patent Term Filing Date for Original
 Utility or Plant Applications The doctrine of double patenting seeks to prevent
 the unjustified extension of patent exclusivity beyond the term of a patent.
 For utility and plant patents issuing on applications filed on or after June 8,
 1995, 35
 U.S.C. 154(a)(2) provides that the patent term ends on
 the date that is twenty years from the date on which the application for the
 patent was filed in the United States, or if the application contains a
 specific reference to one or more earlier-filed application(s) under
 35
 U.S.C. 120 , 121 , 365(c) ,
 or 386(c) , twenty years from the filing date of the
 earliest such application. For a patent that issues on an international (PCT)
 application that entered the national stage under 35 U.S.C.
 371 , the date that the application was filed in the
 United States is the international filing date; see MPEP § 2701 ,
 subsection II. Thus, where there are two or more original applications
 (applications which are not reissue applications - see MPEP § 201.02 )
 with conflicting (i.e., patentably indistinct) claims, it may be necessary to
 determine the respective date from which the twenty year term is measured in
 view of 35
 U.S.C. 154(a)(2) (hereinafter referred to as the “patent
 term filing date”) for each of the applications which could potentially issue
 as patents.
 

 The patent term filing date of an original utility or plant
 application filed on or after June 8, 1995 is the earliest of: 
 

 
 (1) The actual filing date of the application;
 or
 

 (2) The filing date of the earliest application
 for which the application claims the benefit of an earlier filing date
 under 35 U.S.C. 120 ,
 121 , 365(c) , or
 386(c) . See
 37 CFR 1.78 . See also MPEP §
 211 .
 

 
 For example, if an original (non-reissue; see
 MPEP §
 201.02 ) patent application has no specific reference
 to any earlier-filed application under 35 U.S.C. 120 ,
 121 , 365(c) , or
 386(c) , then the patent term filing date is the date
 that the application was actually filed. However, if an original patent
 application does include one or more specific references to an earlier-filed
 application under 35 U.S.C. 120 ,
 121 , 365(c) , or
 386(c) , then the patent term filing date is the filing
 date of the earliest reference application for which the benefit is properly
 claimed. See MPEP § 2701 . For an application to properly claim
 the benefit of an earlier-filed application, it must meet the requirements of
 37 CFR
 1.78 (e.g., having a (joint) inventor in common,
 copendency, timeliness, and a proper reference). See 37 CFR
 1.78 and MPEP §
 211.01 et seq. It does not require a determination that the
 earlier-filed application discloses the invention in a manner provided by
 35 U.S.C. 112(a) . In other words, the issue of
 entitlement of a claimed invention to the benefit of the filing date of an
 earlier-filed application does not affect the expiration date of a patent
 containing the claims, and therefore need not be considered when determining
 the patent term filing date for the purpose of a double patenting analysis.
 

 The patent term filing date of a reissue
 application for purposes of nonstatutory double patenting analysis is the
 patent term filing date of the original application that resulted in the patent
 for which reissue is sought.
 

 Benefit claims under 35 U.S.C.
 119(e) and foreign priority claims under
 35 U.S.C.
 119(a)-(d) or (f) , 365(a) or (b) , or
 386(a) or (b) are not taken into account when
 determining the term of an issued patent (see 35 U.S.C.
 154(a)(2) and (a)(3) ), and therefore, are
 not taken into account in determining the patent term filing date of an
 application.
 

 (b) Provisional nonstatutory double patenting
 rejection is the only rejection remaining in a utility or plant
 application Subsections (i)-(iv) below discuss examination procedures when two or more
 utility or plant patent applications, filed on or after June 8, 1995, contain
 provisional nonstatutory double patenting rejections over each of the other
 application(s). The explanations refer to pairs of applications, but also apply
 when more than two applications are involved. 
 

 (i) Application under examination has the earlier patent term filing
 date If a provisional nonstatutory double patenting
 rejection is the only rejection remaining in an application having the
 earlier patent term filing date, the examiner should withdraw the rejection
 in the application having the earlier patent term filing date and permit
 that application to issue as a patent, thereby converting the provisional
 nonstatutory double patenting rejection in the other application into a
 nonstatutory double patenting rejection upon issuance of the patent.
 

 (ii) Application under examination has the same patent term filing
 date If both the application under examination and
 the reference application have the same patent term filing date, the
 provisional nonstatutory double patenting rejection made in each application
 should be maintained until it is overcome. Provisional nonstatutory double
 patenting rejections are subject to the requirements of 37 CFR
 1.111(b) . Thus, applicant can overcome a provisional
 nonstatutory double patenting rejection by filing a reply that either shows
 that the claims subject to the rejection are patentably distinct from the
 claims of the reference application, or includes a compliant terminal
 disclaimer under 37 CFR 1.321 that
 obviates the rejection. If the reply is sufficient, the examiner will
 withdraw the nonstatutory double patenting rejection in the application in
 which it was submitted.
 

 (iii) Application under examination has the later patent term filing
 date If a provisional nonstatutory double patenting
 rejection is the only rejection remaining in an application, and that
 application has the later patent term filing date, the rejection should be
 maintained until applicant overcomes the rejection. Replies to overcome the
 rejection are discussed in subsection (ii) above. 
 

 (iv) After Board decision not reaching provisional double patenting
 rejection If a decision by the Patent Trial and Appeal
 Board does not include an opinion on a provisional nonstatutory double
 patenting rejection, and includes a reversal of all other grounds as to a
 claim rejected based on provisional nonstatutory double patenting, and the
 applicant has not filed a proper terminal disclaimer, the examiner must act
 upon the provisional nonstatutory double patenting rejection. The examiner
 must first determine if any reference application used in the provisional
 nonstatutory double patenting rejection has issued as a patent. If the
 reference application has issued, the provisional rejection should be
 re-issued as a nonprovisional rejection and a terminal disclaimer should be
 required, for example, by using form paragraphs 8.33-8.39 as appropriate.
 See MPEP §
 804 , subsection II.B. The rejection may be made
 final, if otherwise appropriate. If the reference application has been
 abandoned or where the reference application has not matured to a patent and
 the provisional double patenting rejection is the only remaining rejection
 in the application, the examiner should withdraw the provisional rejection.
 See MPEP §
 1214.06 .
 

 (c) Design Applications and Utility or Plant Applications Filed Prior
 to June 8, 1995 For design applications, patent term is measured
 from the issue date, and therefore, the determination of the patent term filing
 date is not necessary. If a provisional double patenting rejection (statutory
 or nonstatutory) is the only rejection remaining in the earlier filed of the
 two conflicting design applications, the examiner should withdraw that
 rejection and permit that application to issue as a patent. The examiner should
 maintain the provisional double patenting rejection in the later filed
 application and that rejection will be converted into a double patenting
 rejection when the allowed application issues as a patent unless the rejection
 has already been obviated. If both conflicting applications were filed on the
 same date, the provisional double patenting rejection made in each application
 should be maintained until it is overcome. See also MPEP §
 804.03 , subsection IV, to resolve issues in
 applications that name different inventors and claim indistinct inventions.
 

 For double patenting analysis involving a
 utility or plant application filed prior to June 8, 1995, examiners should
 consult with their TQAS or SPE to determine if any of the provisional
 nonstatutory double patenting rejections should be withdrawn or not made.
 Likewise, for double patenting analysis for a utility or plant application and
 a reference design application or vice versa, examiners should consult with
 their TQAS or SPE to determine if any of the provisional nonstatutory double
 patenting rejections should be withdrawn or not made.
 

 2. Provisional Statutory Double Patenting Rejections (35 U.S.C. 101) A terminal disclaimer cannot be filed to obviate a statutory
 double patenting rejection. A statutory double patenting rejection can be overcome
 by canceling or amending the conflicting claims so they are no longer coextensive
 in scope. A complete response to a statutory double patenting rejection is either
 a reply by applicant showing that the claims subject to the rejection are not the
 same as the reference claims, an amendment in response to the statutory double
 patenting rejection, or cancelation of the conflicting claims. Such a response is
 required even when the statutory double patenting rejection is provisional.
 

 When two or more utility or plant patent applications, filed on or
 after June 8, 1995, each contain a provisional statutory double patenting
 rejection, and that is the only rejection remaining in the application having the
 earliest patent term filing date, the examiner should withdraw the rejection in
 the application having the earliest patent term filing date and permit that
 application to issue as a patent, thereby converting the provisional statutory
 double patenting rejection in the other application(s) into a statutory double
 patenting rejection when the application with the earliest patent term filing date
 issues as a patent. 
 

 If a provisional statutory double patenting rejection is the only
 rejection remaining in an application, and that application has a patent term
 filing date that is later than, or the same as, the patent term filing date of at
 least one of the reference application(s), the rejection should be maintained
 until applicant overcomes the rejection. In accordance with 37 CFR
 1.111(b) , applicant’s reply must present arguments pointing
 out the specific distinctions believed to render the claims, including any amended
 or newly presented claims, patentable over any applied references.
 

 For design applications and utility or plant
 applications filed prior to June 8, 1995, see subsection I.B.1(c) above for
 guidance on maintaining or withdrawing provisional statutory double patenting
 rejections.
 

 C. Between One or More Applications and a Published Application -
 Provisional Rejections Double patenting may exist where a published patent application and
 an application share the same inventive entity, at least one common (joint) inventor,
 a common applicant, and/or a common owner/assignee. Double patenting may also exist
 where a published application and an application claim inventions resulting from
 activities undertaken within the scope of a joint research agreement as defined in
 35
 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and
 (3) . If the published application has not yet issued as a
 patent, the examiner is permitted to make a provisional rejection on the ground of
 double patenting when the published application has not been abandoned and claims
 pending therein conflict with claims of the application being examined. See the
 discussion regarding provisional double patenting rejections in subsection B.
 above.
 

 D. Between a Patent and a Reissue
 Application or Patent under Reexamination When a potential nonstatutory double patenting
 situation arises between two related patents (as in a reissue or reexamination), it
 is necessary to determine whether the patents are subject to the same patent term
 statutory law. Section 532(a)(1) of the Uruguay Round Agreements Act (URAA) (Pub. L.
 No. 103-465, 108 Stat. 4809, 4983 (1994)) amended 35 U.S.C. 154 to provide that the
 term of a plant or utility patent issuing from an original application filed on or
 after June 8, 1995, i.e., a post-URAA patent, begins on the date the patent issues
 and ends on the date that is twenty years from the date on which the application for
 the patent was filed in the United States or, if the application contains a specific
 reference to an earlier filed application or applications under 35 U.S.C.
 120 , 121 , or 365(c) , twenty
 years from the filing date of the earliest of such application(s) (excluding any
 terminal disclaimers or any patent term adjustment or extension). The Patent Law
 Treaties Implementation Act of 2012, Public Law 112-211, which implemented the
 provisions of the Hague Agreement, amended 35 U.S.C. 154(a)(2) to delete
 “section 120, 121, or 365(c)” and to insert “section 120, 121, 365(c), or 386(c)” and
 35 U.S.C.
 154(a)(3) to delete “section 119, 365(a), or 365(b)” and to
 insert “section 119, 365(a), 365(b), 386(a), or 386(b).” See MPEP § 2701 .
 

 A plant or utility patent that was in force on June 8,
 1995, or that issued on an application that was filed before June 8, 1995, i.e., a
 pre-URAA patent, has a term that is the greater of twenty years from the date on
 which the application for the patent was filed in the United States or, if the
 application contains a specific reference to an earlier filed application or
 applications under 35 U.S.C. 120 , 121 , or
 365(c) , twenty years from the filing date of the earliest of
 such application(s) or seventeen years from the patent grant. Filing for reissue on
 or after June 8, 1995 of a patent issued on an original application filed prior to
 June 8, 1995 does not change the patent term of the patent or the reissued patent.
 See MPEP §§
 1405 and 2701 for more information. 
 

 “[T]he proper reference point for an obviousness-type
 double patenting inquiry is the expiration date of the patent in question.”
 Novartis Pharms. v. Breckenridge Pharm., 909 F.3d 1355,
 1362-63, 128 USPQ2d 1745, 1747 (Fed. Cir. 2018) (citing Gilead Sciences,
 Inc. v. Natco Pharma Ltd., 753 F.3d 1208, 1215, 110 USPQ2d 1551, 1558
 (Fed. Cir. 2014)).
 

 Where both the patent under examination (via a
 reexamination proceeding or a reissue application) and the reference patent are
 post-URAA, “an earlier-expiring patent can qualify as an obviousness-type double
 patenting reference for a later-expiring patent.” Gilead Sciences, Inc. v.
 Natco Pharma Ltd., 753 F.3d 1208, 1217, 110 USPQ2d 1551, 1558 (Fed. Cir.
 2014). See also Novartis Pharms. v. Breckenridge Pharm., 909 F.3d
 1355, 1360, 128 USPQ2d 1745, 1747 (Fed. Cir. 2018) ( Gilead “holds
 that a later-filed but earlier-expiring patent can serve as a double-patenting
 reference for an earlier-filed but later-expiring patent in the post-URAA context.”).
 However, where at least one of the patent under examination (via a reexamination
 proceeding or a reissue application) or the reference patent is pre-URAA, the patent
 with the earlier issuance date is available as a reference against a patent with a
 later issuance date “because, under the law pre-URAA, the expiration date of the
 patent was inextricably intertwined with the issuance date.” Id. 
 at 1362, 128 USPQ2d at 1749. Based on the particular facts in
 Novartis, the court held that the post-URAA patent that expired
 prior to the pre-URAA patent is not a proper nonstatutory double patenting reference
 for the pre-URAA patent. Id. at 1367, 128 USPQ2d at 1752 (“To find
 that obviousness-type double patenting applies here because a post-URAA patent
 expires earlier would abrogate Novartis’s right to enjoy one full patent term on its
 invention.”). An examiner should consult with the TC Quality Assurance Specialist if
 an otherwise proper nonstatutory double patenting rejection is not being made based
 on Novartis. 

 See MPEP §
 804.05 for information regarding the impact of patent term
 extension on a double patenting analysis. 
 

 E. Reexamination Proceedings A double patenting issue may raise a substantial new question of
 patentability of a claim of a patent, and thus can be addressed in a reexamination
 proceeding. In re Lonardo, 119 F.3d 960, 966, 43 USPQ2d 1262, 1266
 (Fed. Cir. 1997) (In giving the Director authority under 35 U.S.C.
 303(a) to determine the presence of a substantial new question
 of patentability, “Congress intended that the phrases ‘patents and publications’ and
 ‘other patents or publications’ in section 303(a) not be limited to
 prior art patents or printed publications.”) (emphasis added).
 Accordingly, if the same issue of double patenting was not addressed during original
 prosecution, it may be considered during reexamination.
 

 Double patenting may exist where a reference patent or application
 and the patent under reexamination share the same inventive entity, at least one
 common (joint) inventor, a common applicant, and/or a common owner/assignee. Where
 the patent under reexamination was granted on or after December 10, 2004, double
 patenting may also exist where the inventions claimed in the reference and
 reexamination proceeding resulted from activities undertaken within the scope of a
 joint research agreement pursuant to 35 U.S.C. 102(c) or
 pre-AIA 35
 U.S.C. 103(c)(2) and (3) , as applicable, and if evidence of the
 joint research agreement has been made of record in the patent being reexamined or in
 the reexamination proceeding. A double patenting rejection may NOT be made on this
 basis if the patent under reexamination issued before December 10, 2004. See
 MPEP §
 804.03 . 
 

 The prior art exception under 35 U.S.C.
 102(b)(2)(C) or disqualification under pre-AIA 35 U.S.C.
 103(c) generally cannot be used to overcome a double patenting
 rejection, whether statutory or nonstatutory. However, since a secondary reference
 used to support an obviousness analysis for a nonstatutory double patenting rejection
 must be prior art, a reference excepted under 35 U.S.C.
 102(b)(2)(C) cannot be used as a secondary reference in a
 nonstatutory double patenting rejection. See MPEP §§
 717.02 et seq. and 2154.02(c) for more information on
 35
 U.S.C. 102(b)(2)(C) and MPEP § 2146 for more information on
 pre-AIA 35
 U.S.C. 103(c) . See MPEP § 2258 for more information on
 making double patenting rejections in reexamination proceedings. Subsection II,
 below, describes situations wherein a double patenting rejection would be
 appropriate. In particular, see paragraph II.B. for the analysis required to
 determine the propriety of a nonstatutory double patenting rejection.
 

 II. REQUIREMENTS OF A DOUBLE PATENTING REJECTION (INCLUDING PROVISIONAL REJECTIONS)
 When a double patenting rejection is appropriate, it must be based
 either on statutory grounds or nonstatutory grounds. The ground of rejection employed
 depends upon the relationship of the inventions being claimed. Generally, a double
 patenting rejection is not permitted where the claimed subject matter is presented in a
 divisional application as a result of a restriction requirement made in a parent
 application under 35
 U.S.C. 121 . 
 

 Where the claims of an application are the same as those of a first
 patent, they are barred under 35 U.S.C. 101 - the statutory basis
 for a double patenting rejection. A rejection based on double patenting of the “same
 invention” finds its support in the language of 35 U.S.C. 101 which states that
 “whoever invents or discovers any new and useful process ... may obtain a 
 patent therefor ...” (emphasis added). Thus, the term “same invention,” in this context,
 means an invention drawn to identical subject matter. Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 
 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467,
 114 USPQ 330 (CCPA 1957). 
 

 Where the claims of an application are not the “same” as
 those of a first patent, but the grant of a patent with the claims in the application
 would unjustly extend the rights granted by the first patent, a double patenting
 rejection under nonstatutory grounds is proper. 
 

 In determining whether a proper basis exists to enter a double patenting
 rejection, the examiner must determine the following: 
 

 
 (A) Whether a statutory basis exists; 

 (B) Whether a nonstatutory basis exists; and 

 (C) Whether a nonstatutory double patenting rejection is prohibited by
 the third sentence of 35 U.S.C. 121 (see
 MPEP §
 804.01 ; if such a prohibition applies, a nonstatutory
 double patenting rejection cannot be made). 
 

 
 Each determination must be made on the basis of all the facts in the
 application before the examiner. The charts in MPEP § 804 illustrate the methodology
 of making such a determination. 
 

 Domination and double patenting should not be confused. They are two
 separate issues. One patent or application “dominates” a second patent or application
 when the first patent or application has a broad or generic claim which fully
 encompasses or reads on an invention defined in a narrower or more specific claim in
 another patent or application. Domination by itself, i.e., in the absence of statutory
 or nonstatutory double patenting grounds, cannot support a double patenting rejection.
 In re Kaplan, 789 F.2d 1574, 1577-78, 229 USPQ 678, 681 (Fed. Cir.
 1986); In re Sarett, 327 F.2d 1005, 1014-15, 140 USPQ 474, 482 (CCPA
 1964). However, the presence of domination does not preclude a double patenting
 rejection. See, e.g., In re Schneller, 397 F.2d 350, 158 USPQ 210
 (CCPA 1968); see also AbbVie Inc. v. Kennedy Institute of Rheumatology
 Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014).
 

 A. Statutory Double Patenting — 35 U.S.C. 101 In determining whether a statutory basis for a double patenting
 rejection exists, the question to be asked is: Is the same invention being claimed
 twice? 35 U.S.C.
 101 prevents two patents from issuing on the same invention.
 “Same invention” means identical subject matter. Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re
 Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re
 Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
 

 A reliable test for double patenting under 35 U.S.C. 101 
 is whether a claim in the application could be literally infringed without literally
 infringing a corresponding claim in the patent. In re Vogel, 422
 F.2d 438, 164 USPQ 619 (CCPA 1970). Is there an embodiment of the invention that
 falls within the scope of one claim, but not the other? If there is such an
 embodiment, then identical subject matter is not defined by both claims and statutory
 double patenting would not exist. For example, the invention defined by a claim
 reciting a compound having a “halogen” substituent is not identical to or
 substantively the same as a claim reciting the same compound except having a
 “chlorine” substituent in place of the halogen because “halogen” is broader than
 “chlorine.” On the other hand, claims may be differently worded and still define the
 same invention. Thus, a claim reciting a widget having a length of “36 inches”
 defines the same invention as a claim reciting the same widget having a length of “3
 feet.” 
 

 If it is determined that the same invention is being claimed twice,
 35 U.S.C.
 101 precludes the grant of the second patent regardless of the
 presence or absence of a terminal disclaimer. Id. 

 Form paragraphs 8.30 and 8.31 (between an
 issued patent and one or more applications) or 8.32 (provisional rejections) may be
 used to make statutory double patenting rejections. 
 

 ¶ 8.30 35 U.S.C. 101, Statutory Basis for Double Patenting “Heading”
 Only
 

 A rejection based on double patenting of the “same invention” type finds
 its support in the language of 35 U.S.C. 101 which states that “whoever
 invents or discovers any new and useful process... may obtain a patent
 therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an
 invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co .,
 151 U.S. 186 (1894); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970);
 In re Ockert , 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
 

 A statutory type ( 35 U.S.C. 101 ) double
 patenting rejection can be overcome by canceling or amending the claims that are directed to
 the same invention so they are no longer coextensive in scope. The filing of a terminal
 disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C.
 101 .
 

 Examiner Note:

 The above form paragraph must be
 used as a heading for all subsequent double patenting rejections of the statutory (same
 invention) type using either of form paragraphs 8.31 or 8.32 .
 

 

 ¶ 8.31 Rejection, 35 U.S.C. 101, Double Patenting

 Claim [1] is/are rejected under 35 U.S.C.
 101 as claiming the same invention as that of claim [2] of prior
 U.S. Patent No. [3] . This is a statutory double patenting rejection.
 

 Examiner Note:
 
 1. This form paragraph must be
 preceded by form paragraph 8.30 and is used only for double patenting rejections
 of the same invention claimed in an earlier patent; that is, the “scope” of the
 inventions claimed is identical.
 

 2. If the claims directed to the
 same invention are in another copending application, do not use this form paragraph. A
 provisional double patenting rejection should be made using form paragraph
 8.32 .
 

 3. Do not use this form paragraph
 for nonstatutory-type double patenting rejections. If nonstatutory type, use appropriate
 form paragraphs 8.33 to 8.39 .
 

 4. This form paragraph may be used where the patent and the
 application under examination: 
 name the same inventive entity, or

 name different inventive entities but are commonly assigned,
 or
 

 are not commonly assigned but name at least one common (joint)
 inventor, or
 

 are filed by a common applicant ( 35 U.S.C. 118 ), or
 

 claim patentably indistinct inventions made as a result of
 activities undertaken within the scope of a joint research agreement under
 pre-AIA 35
 U.S.C. 103(c) for applications examined under pre-AIA (first to
 invent) law, or
 

 claim patentably indistinct inventions and the claimed
 invention and the patent were commonly owned under 35 U.S.C.
 102(b)(2)(C) or deemed to be commonly owned under
 35
 U.S.C. 102(c) not later than the effective filing date under
 35
 U.S.C. 100(i) of the claimed invention, for applications
 examined under the first inventor to file (FITF) provisions of the AIA.
 
 
 

 5. In bracket 3, insert the number
 of the patent.
 

 6. For applications
 being examined under pre-AIA (first to invent) law : If the patent is to a
 different inventive entity and is commonly assigned with the application, form paragraph
 8.27.fti
 should additionally be used to
 require the assignee to name the first inventor.
 

 7. If evidence is of record to indicate that the patent is prior
 art under either pre-AIA 35 U.S.C. 102(f) or (g) , a rejection should also be made
 using form paragraphs 7.15.fti and/or 7.19.fti , if applicable, in
 addition to this double patenting rejection.
 

 8. For applications being examined under pre-AIA (first to invent)
 law : If the patent is prior art under pre-AIA 35 U.S.C. 102(e) to the
 claimed invention, a rejection should additionally be made using
 form paragraph 7.15.02.fti . 
 

 9. For applications being examined under the
 first inventor to file (FITF) provisions of the AIA : If the patent is to
 a different inventive entity and is commonly assigned with the application, form
 paragraph 8.27.aia should additionally be used to request that
 the applicant take action to amend or cancel claims such that the application no longer
 contains claims directed to the same invention. A rejection under 35 U.S.C.
 102(a)(2) should also be made if appropriate. 
 
 
 

 ¶ 8.32 Provisional Rejection, 35 U.S.C. 101, Double Patenting

 Claim [1] provisionally
 rejected under 35
 U.S.C. 101 as claiming the same invention as that of claim [2]
 of copending Application No. [3] (reference application). This is a
 provisional statutory double patenting rejection since the claims
 directed to the same invention have not in fact been patented.
 

 Examiner Note:
 
 1. This form paragraph must be
 preceded by form paragraph 8.30 and is used only for double patenting rejections
 of the same invention claimed in another copending
 application ; that is, the scope of the claimed inventions is
 identical.
 

 2. If the claims directed to the
 same invention are in an issued patent , do not use this
 paragraph. See form paragraph 8.31 .
 

 3. Do not use this paragraph for
 nonstatutory-type double patenting rejections. See form paragraphs
 8.33 to
 8.39 .
 

 4. This form paragraph may be used where the reference application and
 the application under examination: 
 name the same inventive entity, or

 name different inventive entities but are commonly assigned,
 or
 

 are not commonly assigned but name at least one common (joint)
 inventor (unless disclosure of the reference application would violate the duty of
 the USPTO to keep the reference application confidential under 35 U.S.C. 122 
 e.g., the applicant or assignee of record has specifically requested that the
 inventor not be permitted to access the record in the manner provided in
 MPEP §
 106 ), or
 

 are filed by a common applicant ( 35 U.S.C. 118 ), or
 

 claim patentably indistinct inventions made as a result of
 activities undertaken within the scope of a joint research agreement under
 pre-AIA 35
 U.S.C. 103(c) , for applications examined under pre-AIA (first
 to invent) law, or 
 

 claim patentably indistinct inventions and the claimed
 invention and the reference application were commonly owned under 35 U.S.C.
 102(b)(2)(C) or deemed to be commonly owned under
 35
 U.S.C. 102(c) not later than the effective filing date under
 35
 U.S.C. 100(i) of the claimed invention, for applications
 examined under the first inventor to file (FITF) provisions of the AIA.
 
 
 

 5. Form paragraph
 8.28.fti
 or 8.28.aia , as appropriate, should also be
 used.
 

 6. In bracket 3, insert the number
 of the reference application.
 

 7. A provisional double patenting
 rejection should also be made in the reference application.
 

 8. For applications
 being examined under pre-AIA (first to invent) law : If the reference
 application is by a different inventive entity and is commonly assigned, form paragraph
 8.27.fti
 should additionally be used to
 require the assignee to name the first inventor.
 

 9. If evidence is also of record to show that either application is
 prior art unto the other under pre-AIA 35 U.S.C. 102(f) or
 (g) , a rejection should also be made in the reference application
 using form paragraphs 7.15.fti and/or 7.19.fti , if applicable, in
 addition to this provisional double patenting rejection. 
 

 10. For applications being examined under pre-AIA (first to invent)
 law : If the reference application is prior art under pre-AIA 35 U.S.C.
 102(e) to the claimed invention, a provisional pre-AIA 35 U.S.C.
 102(e) rejection should additionally be
 made using form paragraph 7.15.01.fti . If the reference application has been
 published, use form paragraph 7.15.02.fti instead.
 

 11. For applications being examined under first inventor to file (FITF)
 provisions of the AIA : If the reference application is to a different
 inventive entity and is commonly assigned with the instant application, form paragraph
 8.27.aia 
 should additionally be used to request that the applicant take action to amend or cancel
 claims such that the applications no longer contain claims directed to the same
 invention. A rejection under 35 U.S.C. 102(a)(2) should also be
 made if appropriate.
 
 
 

 If the “same invention” is not being claimed twice, an analysis must
 be made to determine whether a nonstatutory basis for double patenting exists. 
 

 B. Nonstatutory Double Patenting A rejection based on nonstatutory double patenting is based on a
 judicially created doctrine grounded in public policy so as to prevent the
 unjustified or improper timewise extension of the right to exclude granted by a
 patent. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir.
 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985);
 In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982);
 In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970);
 In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969);
 In re White, 405 F.2d 904, 160 USPQ 417 (CCPA 1969);
 In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968);
 In re Sarett, 327 F.2d 1005, 140 USPQ 474 (CCPA 1964). A double
 patenting rejection also serves public policy interests by preventing the possibility
 of multiple suits against an accused infringer by different assignees of patents
 claiming patentably indistinct variations of the same invention. In re Van
 Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982).
 

 A nonstatutory double patenting rejection is
 appropriate where the conflicting claims are not identical, but at least one examined
 application claim is not patentably distinct from the reference claim(s) because the
 examined application claim is either anticipated by, or would have been obvious over,
 the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46
 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29
 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ
 645 (Fed. Cir. 1985). In determining whether a nonstatutory basis exists for a double
 patenting rejection, the first question to be asked is: Is any invention claimed in
 the application anticipated by, or an obvious variation of, an invention claimed in
 the patent? If the answer is yes, then a nonstatutory double patenting rejection may
 be appropriate. To decide the question above, the examiner should first construe the
 claim(s) in the application under examination and the claim(s) in the reference
 application or patent to determine what are the differences. Then the examiner should
 determine whether those differences render the claims patentably distinct using an
 anticipation analysis and/or an obviousness analysis. See Pfizer, Inc. v.
 Teva Pharms. USA, Inc., 518 F.3d 1353, 1363, 86 USPQ2d 1001, 1008 (Fed.
 Cir. 2008).
 

 Nonstatutory double patenting also requires rejection
 of an application claim when the claimed subject matter is not patentably
 distinct from the subject matter claimed in a commonly owned patent, or a
 non-commonly owned patent but subject to a joint research agreement as set forth in
 35
 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and
 (3) , when the issuance of a second patent would provide
 unjustified extension of the term of the right to exclude granted by a patent. See
 Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 58
 USPQ2d 1869 (Fed. Cir. 2001); Ex parte Davis, 56 USPQ2d 1434,
 1435-36 (Bd. Pat. App. & Inter. 2000).
 

 1. Construing the Claim Using the Reference Patent or Application
 Disclosure When considering whether the invention defined in a claim of an
 application would have been anticipated by or is an obvious variation of the
 invention defined in the claim of a patent or copending application, no part of
 the reference patent or application may be used as if it were prior art.
 General Foods Corp. v. Studiengesellschaft Kohle mbH, 972
 F.2d 1272, 1281, 23 USPQ2d 1839, 1846 (Fed. Cir. 1992) (“Our precedent makes clear
 that the disclosure of a patent cited in support of a double patenting rejection
 cannot be used as though it were prior art, even where the disclosure is found in
 the claims”). This does not mean that one is precluded from all use of the
 reference patent or application disclosure to understand the meaning of the
 reference claims. 
 

 The specification can be used as a dictionary to learn the meaning
 of a term in the claim. Toro Co. v. White Consol. Indus., Inc., 
 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999) (“[W]ords in patent
 claims are given their ordinary meaning in the usage of the field of the
 invention, unless the text of the patent makes clear that a word was used with a
 special meaning.”); Renishaw PLC v. Marposs Societa' per
 Azioni, 158 F.3d 1243, 1250, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998)
 (“Where there are several common meanings for a claim term, the patent disclosure
 serves to point away from the improper meanings and toward the proper meanings.”).
 “The Patent and Trademark Office (‘PTO’) determines the scope of the claims in
 patent applications not solely on the basis of the claim language, but upon giving
 claims their broadest reasonable construction ‘in light of the specification as it
 would be interpreted by one of ordinary skill in the art.’ ” Phillips v.
 AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005)
 (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); see also MPEP § 2111.01 .
 Further, those portions of the specification which provide support for the
 reference claims may also be examined and considered when addressing the issue of
 whether a claim in the application defines an obvious variation of an invention
 claimed in the reference patent or application (as distinguished from an obvious
 variation of the subject matter disclosed in the reference patent or application).
 In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA
 1970). The court in Vogel recognized “that it is most
 difficult, if not meaningless, to try to say what is or is not an obvious
 variation of a claim,” but that one can judge whether or not the invention claimed
 in an application is an obvious variation of an embodiment disclosed in the patent
 or application which provides support for the claim. According to the court, one
 must first “determine how much of the patent disclosure pertains to the invention
 claimed in the patent” because only “[t]his portion of the specification supports
 the patent claims and may be considered.” The court pointed out that “this use of
 the disclosure is not in contravention of the cases forbidding its use as prior
 art, nor is it applying the patent as a reference under 35 U.S.C.
 103 , since only the disclosure of the invention claimed in
 the patent may be examined.” In AbbVie Inc. v. Kennedy Institute of
 Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014),
 the court explained that it is also proper to look at the disclosed utility in the
 reference disclosure to determine the overall question of obviousness in a
 nonstatutory double patenting context. See Sun Pharm. Indus., Ltd. v. Eli
 Lilly & Co., 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010);
 Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 86
 USPQ2d 1001 (Fed. Cir. 2008); Geneva Pharmaceuticals Inc. v.
 GlaxoSmithKline PLC, 349 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875
 (Fed. Cir. 2003). 
 

 To avoid improperly treating what is disclosed in a
 reference patent or copending application as if it were prior art in the context
 of a nonstatutory double patenting analysis, the examiner must first properly
 construe the scope of the reference claims. The portion of the specification of
 the reference that describes subject matter that falls within the scope of a
 reference claim may be relied upon to properly construe the scope of that claim.
 In particular, when ascertaining the scope of the reference’s claim(s) to a
 compound, the examiner should consider the reference’s specification, including
 all of the compound’s uses that are disclosed. See Sun Pharm.
 Indus., 611 F.3d at 1386-88, 95 USPQ2d at 1801-02. If claims to the
 compound’s use and the compound were subject to a restriction requirement, and the
 compound was elected, a nonstatutory double patenting rejection may not be
 appropriate in a divisional application claiming the restricted compound’s use.
 See MPEP §
 804.01 . However, subject matter disclosed in the
 reference patent or application that does not fall within the scope of a reference
 claim cannot be used to support a nonstatutory double patenting rejection as this
 would effectively be treating the reference patent or application as prior
 art.
 

 Properly construing the reference claims does not
 complete the nonstatutory double patenting analysis. It merely provides a
 determination as to how the earlier issued claim should be understood in making a
 nonstatutory double patenting rejection. To do a full analysis to determine
 whether a nonstatutory double patenting rejection should be made, one must go
 through the “anticipation analysis” and “obviousness analysis” noted below, and
 consider the “nonstatutory double patenting rejection based on equitable
 principles” discussed in subsection II.B.6 below.
 

 In construing the claims of the reference patent or
 application, a determination is made as to whether a portion of the specification,
 including the drawings and claims, is directed to subject matter that is within
 the scope of a reference claim. For example, assume that the claim in a reference
 patent is directed to a genus of compounds, and the application being examined is
 directed to a species within the reference patent genus. If the reference patent
 discloses several species within the scope of the reference genus claim, that
 portion of the disclosure should be analyzed to properly construe the reference
 patent claim and determine whether it anticipates or renders obvious the claim in
 the application being examined. Because that portion of the disclosure of the
 reference patent is an embodiment of the reference patent claim, it may be helpful
 in determining the full scope and obvious variations of the reference patent
 claim. As an alternative example, assume that the claim in the reference patent is
 directed to a genus of compounds, and the application being examined is directed
 to a method of making compounds within the genus. Further assume that the
 reference patent discloses a nearly identical method of making compounds within
 the genus. Here, the disclosed method of making the compounds in the reference
 patent does not fall within the scope of the genus of compounds claimed in the
 reference. Thus, the reference disclosure directed to the method of making the
 compounds cannot be used to construe the claim to the genus of compounds in the
 context of a nonstatutory double patenting analysis. This would effectively result
 in treating the reference as prior art. Nevertheless, there may be cases in which
 permitting claims to a method of making a compound could essentially result in an
 unjustified timewise extension of the period of exclusivity for the compound
 itself. In such cases, the “Nonstatutory Double Patenting Rejection Based on
 Equitable Principles” discussed in paragraph II.B.6 below should be considered.
 Cf. Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349
 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003) (rejecting claims to
 methods of use over claims to compound based on unjustified timewise extension
 rationale).
 

 The result in In re Schneller, 
 397 F.2d 350, 158 USPQ 210 (CCPA 1968) is consistent with the analysis set forth
 above. In Schneller , the examined claims were directed to a
 clip comprising ABCY and a clip comprising ABCXY; the reference patent claimed a
 clip comprising ABCX and disclosed an embodiment of a clip having ABCXY. The ABCXY
 clip disclosed in the reference patent falls within the scope of the reference
 patent claim to a clip “comprising ABCX.” Thus the disclosed embodiment of ABCXY
 may be relied upon to properly construe the scope of the reference claim and
 determine the propriety of a nonstatutory double patenting rejection against the
 examined claim. However, nonstatutory double patenting rejections based on
 Schneller will be rare . The Technology Center (TC) Director must approve any
 nonstatutory double patenting rejections based on Schneller . If
 an examiner determines that a double patenting rejection based on
 Schneller is appropriate, the examiner should first consult
 with the examiner's supervisory patent examiner (SPE). If the SPE agrees with the
 examiner then approval of the TC Director must be obtained before such a
 nonstatutory double patenting rejection can be made. See subsection II.B.6 below
 for a more detailed discussion.
 

 Each nonstatutory double patenting situation must be
 decided on its own facts.
 

 2. Anticipation Analysis A nonstatutory double patenting rejection is
 appropriate where a claim in an application under examination claims subject
 matter that is different, but not patentably distinct, from the subject matter
 claimed in a prior patent or a copending application. The claim under examination
 is not patentably distinct from the reference claim(s) if the claim under
 examination is anticipated by the reference claim(s). See, e.g., In re
 Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re
 Goodman, 11 F.3d 1046, 1052, 29 USPQ2d 2010, 2015-16 (Fed. Cir.
 1993). This type of nonstatutory double patenting situation arises when the claim
 being examined is, for example, generic to a species or sub-genus claimed in a
 conflicting patent or application, i.e., the entire scope of the reference claim
 falls within the scope of the examined claim. In such a situation, a later patent
 to a genus would, necessarily, extend the right to exclude granted by an earlier
 patent directed to a species or sub-genus. In this type of nonstatutory double
 patenting situation, an obviousness analysis is not required for the nonstatutory
 double patenting rejection. The nonstatutory double patenting rejection in this
 case should explain the fact that the species or sub-genus claimed in the
 conflicting patent or application anticipates the claimed genus in the application
 being examined and, therefore, a patent to the genus would improperly extend the
 right to exclude granted by a patent to the species or sub-genus should the genus
 issue as a patent after the species or sub-genus.
 

 The analysis required is different in situations
 where the claim in the application being examined (1) is directed to a species or
 sub-genus covered by a generic claim in a potentially conflicting patent or
 application, or (2) overlaps in scope with a claim in a potentially conflicting
 claim or claims of the patent or application but the potentially conflicting
 claims cannot be said to anticipate the examined claims. Both of these situations
 require an obviousness analysis unless one of ordinary skill in the art would, on
 reading the potentially conflicting patent or application, at once envisage the
 invention claimed in the examined application. See AbbVie Inc. v. Kennedy
 Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed.
 Cir. 2014). For example, in the genus-species situation, the examiner typically
 should explain why it would have been obvious to select the claimed species or
 sub-genus given the genus claimed in the potentially conflicting patent or
 application. See MPEP § 2131.02 and MPEP § 2144.08 
 for discussions of genus-species situations with respect to anticipation and
 obviousness, respectively. Note that the genus-species and overlapping subject
 matter scenarios discussed in this paragraph may result in nonstatutory
 double-patenting rejections based on the principle against unjustified timewise
 extension of patent rights, discussed below in paragraph II.B.6.
 

 3. Obviousness Analysis A nonstatutory double patenting rejection, if not
 based on an anticipation rationale or an “unjustified timewise extension”
 rationale, is “analogous to [a failure to meet] the nonobviousness requirement of
 35
 U.S.C. 103 ” except that the patent disclosure principally
 underlying the double patenting rejection is not considered prior art. In
 re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967). Even though
 the specification of the applied patent or copending application is not prior art,
 it may still be used to interpret the applied claims. See paragraph II.B.1, above.
 The analysis employed with regard to nonstatutory double patenting is “similar to,
 but not necessarily the same as that undertaken under 35 USC § 103.” In
 re Braat, 937 F.2d 589, 592-93, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991)
 (citing In re Longi, 759 F.2d 887, 892 n.4, 225 USPQ 645, 648
 n.4 (Fed. Cir. 1985)); see also Geneva Pharmaceuticals, 349
 F.3d at 1378 n.1, 68 USPQ2d at 1869 n.1 (Fed. Cir. 2003); In re Basell
 Poliolefine, 547 F.3d 1371, 1379, 89 USPQ2d 1030, 1036 (Fed. Cir.
 2008). 
 

 In view of the similarities, the factual inquiries set forth in
 Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966) that are
 applied for establishing a background for determining obviousness under
 35 U.S.C.
 103 should be considered when making a nonstatutory double
 patenting analysis based on “obviousness.” See MPEP § 2141 for
 guidelines for determining obviousness. These factual inquiries are summarized as
 follows: 
 

 
 (A) Determine the scope and content of a patent claim relative
 to a claim in the application at issue; 
 

 (B) Determine the differences between the scope and content of
 the patent claim as determined in (A) and the claim in the application at
 issue; 
 

 (C) Determine the level of ordinary skill in the pertinent art;
 and 
 

 (D) Evaluate any objective indicia of nonobviousness. 

 
 Any nonstatutory double patenting rejection made under the
 obviousness analysis should make clear: 
 

 
 (A) The differences between the inventions defined by the
 conflicting claims — a claim in the patent compared to a claim in the
 application; and 
 

 (B) The reasons why a person of ordinary skill in the art would
 conclude that the invention defined in the claim at issue would have been an
 obvious variation of the invention defined in a claim in the patent.
 

 
 Any secondary reference used to support an obviousness analysis for a nonstatutory
 double patenting rejection must be prior art under 35 U.S.C.
 102 or pre-AIA 35 U.S.C. 102 . See
 MPEP § 2120 et seq. for more information on determining if a reference is
 prior art and MPEP
 § 2141 , subsection II.A, for determining the scope and
 content of the prior art.
 

 4. One-Way Test for Distinctness If the patent term filing date of an application under examination
 is the same or later than that of a reference application or patent, only a
 one-way determination of distinctness is needed in resolving the issue of double
 patenting, i.e., whether the invention claimed in the application would have been
 anticipated by, or an obvious variation of, the invention claimed in the reference
 application or patent. See, e.g., In re Berg, 140 F.3d 1428,
 1435, 46 USPQ2d 1226, 1231-32 (Fed. Cir. 1998). The court in
 Berg applied a one-way test where an applicant filed two
 separate applications even though all claims could have been filed in a single
 application, because the applicant’s action could have resulted in an improper
 timewise extension of rights if one patent expired later than the other. If a
 claimed invention in the application would have been obvious over a claimed
 invention in the patent, there would be an unjustified timewise extension of the
 patent and a nonstatutory double patenting rejection is proper. According to the
 Berg court, improperly extending the patent term “is
 precisely the result that the doctrine of obviousness-type double patenting was
 created to prevent.” Id . See also MPEP § 804 ,
 subsection II.B above.
 

 Similarly, even if the application under examination has the
 earlier patent term filing date, only a one-way determination of distinctness is
 needed to support a double patenting rejection in the absence of a finding: (A)
 that "the PTO is solely responsible for any delays" in prosecution of that
 application ( In re Hubbell, 709 F.3d 1140, 1150, 106 USPQ2d
 1032, 1039 (Fed. Cir. 2013)); and (B) that the applicant could not have filed the
 conflicting claims in a single (i.e., the earlier-filed) application ( In
 re Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986)). In
 Kaplan, a generic invention (use of solvents) was invented
 by Kaplan, and a species thereof (i.e., use of a specific combination of solvents)
 was invented by Kaplan and Walker. Multiple applications were necessary to claim
 both the broad and narrow inventions because at the time the applications were
 filed, 35
 U.S.C. 116 did not expressly authorize filing a patent
 application in the name of joint inventors who did not make a contribution to the
 invention defined in each claim in the patent. Compare In re
 Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998), wherein the
 genus and species claims could have been filed in the same application.
 

 Form paragraph 8.33 and the appropriate one of
 form paragraphs 8.34 - 8.37 may be used to make
 nonstatutory double patenting rejections based on anticipation or obviousness
 analyses. See subsection II.B.6, below, and form paragraphs
 8.38 
 and 8.39 
 if the basis for the nonstatutory double patenting rejection is equitable
 principles.
 

 ¶ 8.33 Basis for Nonstatutory Double Patenting, “Heading”
 Only
 

 The nonstatutory double patenting rejection is based on a judicially
 created doctrine grounded in public policy (a policy reflected in the statute) so as to
 prevent the unjustified or improper timewise extension of the “right to exclude” granted by a
 patent and to prevent possible harassment by multiple assignees. A nonstatutory double
 patenting rejection is appropriate where the conflicting claims are not identical, but at
 least one examined application claim is not patentably distinct from the reference claim(s)
 because the examined application claim is either anticipated by, or would have been obvious
 over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226
 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993);
 In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re
 Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re
 Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 
 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
 

 A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or
 1.321(d) may be used to overcome an actual or provisional rejection
 based on nonstatutory double patenting provided the reference application or patent either is
 shown to be commonly owned with the examined application, or claims an invention made as a
 result of activities undertaken within the scope of a joint research agreement. See
 MPEP §
 717.02 for applications subject to examination under the first
 inventor to file provisions of the AIA as explained in MPEP § 2159 .
 See 
 MPEP §
 2146 et seq. for applications not subject to examination under the
 first inventor to file provisions of the AIA. A terminal disclaimer must be signed in
 compliance with 37 CFR
 1.321(b) . 
 

 The filing of a terminal disclaimer by itself is not a complete
 reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires
 that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior
 Office action. Even where the NSDP rejection is provisional the reply must be complete. See
 MPEP §
 804 , subsection I.B.1. For a reply to a non-final Office action, see
 37 CFR
 1.111(a) . For a reply to final Office action, see 37 CFR 1.113(c) . A
 request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final
 for consideration. See MPEP §§
 706.07(e) and 714.13 . 
 

 The USPTO Internet website contains terminal disclaimer forms which may
 be used. Please visit www.uspto.gov/ patent/patents-forms . The actual filing date of the
 application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26,
 PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out
 completely online using web-screens. An eTerminal Disclaimer that meets all requirements is
 auto-processed and approved immediately upon submission. For more information about eTerminal
 Disclaimers, refer to www.uspto.gov/ patents/apply/applying-online/eterminal-disclaimer .
 

 Examiner Note:

 This form paragraph is to be used
 as a heading before a nonstatutory double patenting rejection using
 any of form paragraphs 8.34 - 8.39 . Although nonstatutory double patenting is sometimes
 called obviousness-type double patenting (“ODP”), an obviousness analysis is required only
 if the examined application claim(s) is not anticipated by the reference
 claim(s).
 

 

 ¶ 8.34 Rejection, Nonstatutory Double Patenting - No Secondary
 Reference(s)
 

 Claim [1] rejected on the
 ground of nonstatutory double patenting as being unpatentable over claim [2] of
 U.S. Patent No. [3] . Although the claims at issue are not identical, they are not
 patentably distinct from each other because [4] .
 

 Examiner Note:
 
 1. Form paragraph 8.33
 must precede any one of form paragraphs
 8.34 to
 8.39 and must
 be used only ONCE in an Office action.
 

 2. This form paragraph is used for
 nonstatutory double patenting rejections based upon a patent.
 

 3. If the nonstatutory double patenting rejection is based upon
 another application, do not use this form paragraph. A provisional double patenting
 rejection should be made using form paragraph 8.33 and either form paragraph
 8.35 or
 8.37 .
 

 4. This form paragraph may be used where the patent and the
 application under examination: 
 name the same inventive entity, or

 name different inventive entities but are commonly assigned,
 or
 

 are not commonly assigned but name at least one common (joint)
 inventor, or
 

 are filed by a common applicant ( 35 U.S.C. 118 ), or
 

 claim patentably indistinct inventions made as a result of
 activities undertaken within the scope of a joint research agreement under
 pre-AIA
 35 U.S.C. 103 , for applications examined under pre-AIA (first
 to invent) law, or
 

 claim patentably indistinct inventions and the claimed
 invention and the patent were commonly owned under 35 U.S.C.
 102(b)(2)(C) or deemed to be commonly owned under
 35
 U.S.C. 102(c) not later than the effective filing date under
 35
 U.S.C. 100(i) of the claimed invention, for applications
 examined under the first inventor to file (FITF) provisions of the AIA.
 
 
 

 5. In bracket 3, insert the number
 of the patent.
 

 6. In bracket 4, provide appropriate explanation for anticipation or rationale for
 obviousness of the claims being rejected over the claims of the cited patent.
 

 7. A rejection should additionally be made under pre-AIA 35 U.S.C.
 103(a) using form paragraph 7.21.fti if: 
 evidence indicates that the patent is prior art under pre-AIA 35 U.S.C.
 102(f) or (g) (e.g., applicant has named
 the prior inventor in response to a requirement made using form paragraph
 8.28.fti ); and 
 

 the patent has not been disqualified as prior art in a pre-AIA 35 U.S.C.
 103(a) rejection pursuant to pre-AIA 35 U.S.C.
 103(c) .
 
 
 

 8. For applications being examined under pre-AIA (first to invent)
 law : If the patent is prior art under pre-AIA 35 U.S.C. 102(e) to the
 claimed invention, a rejection under pre-AIA 35 U.S.C.
 102(e) / 103(a) may be made using form
 paragraph 7.21.02.fti . Rejections under pre-AIA 35 U.S.C.
 102(e) / 103(a) should not be made or
 maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior
 art in a pre-AIA 35
 U.S.C. 103(a) rejection. 
 

 9. For applications being examined under the
 first inventor to file (FITF) provisions of the AIA : A rejection under
 35
 U.S.C. 102(a)(2) or 35 U.S.C.
 103 should also be made if appropriate. 
 
 
 

 ¶ 8.35 Provisional Rejection, Nonstatutory Double Patenting - No
 Secondary Reference(s)
 

 Claim [1] provisionally
 rejected on the ground of nonstatutory double patenting as being unpatentable over claim
 [2] of copending Application No. [3] (reference application).
 Although the claims at issue are not identical, they are not patentably distinct from each
 other because [4] .
 

 This is a provisional nonstatutory
 double patenting rejection because the patentably indistinct claims have not in fact been
 patented.
 

 Examiner Note:
 
 1. Form paragraph
 8.33 must
 precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office
 action.
 

 2. This form paragraph should be
 used when the patentably indistinct claims are in another copending
 application .
 

 3. If the patentably indistinct
 claims are in a patent , do not use this form paragraph. Use form
 paragraphs 8.33 
 and 8.34 .
 

 4. This form paragraph may be used where the reference application
 and the application under examination: 
 name the same inventive entity, or

 name different inventive entities but are commonly assigned,
 or
 

 are not commonly assigned but name at least one common (joint)
 inventor (unless disclosure of the reference application would violate the duty of
 the USPTO to keep the reference application confidential under 35 U.S.C. 122 
 e.g., the applicant or assignee of record has specifically requested that the
 inventor not be permitted to access the record in the manner provided in
 MPEP §
 106 ), or
 

 are filed by a common applicant ( 35 U.S.C. 118 ), or
 

 claim patentably indistinct inventions made as a result of
 activities undertaken within the scope of a joint research agreement under
 pre-AIA 35
 U.S.C. 103(c) , for applications examined under pre-AIA (first
 to invent) law, or 
 

 claim patentably indistinct inventions and the claimed
 invention and the reference application were commonly owned under 35 U.S.C.
 102(b)(2)(C) or deemed to be commonly owned under
 35
 U.S.C. 102(c) not later than the effective filing date under
 35
 U.S.C. 100(i) of the claimed invention, for applications
 examined under the first inventor to file (FITF) provisions of the AIA.
 
 
 

 5. If the reference application is currently commonly assigned but
 the file does not establish that the patentably indistinct inventions were commonly
 owned at the time the later invention was made, form paragraph
 8.28.fti 
 may be used in addition to this form paragraph to resolve any issues relating to
 priority under pre-AIA
 35 U.S.C. 102(f) and/or (g) .
 

 6. In bracket 3, insert the number
 of the reference application.
 

 7. A provisional nonstatutory
 double patenting rejection should also be made in the reference
 application.
 

 8. A rejection should additionally be made under pre-AIA 35 U.S.C.
 103(a) using form paragraph 7.21.fti if: 
 evidence indicates that the reference application is prior art under
 pre-AIA 35
 U.S.C. 102(f) or (g) (e.g., applicant has named
 the prior inventor in response to a requirement made using form paragraph
 8.28.fti ); and 
 

 the reference application has not been disqualified as prior art in a
 pre-AIA 35
 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C.
 103(c) .
 
 
 

 9. For applications being examined under pre-AIA (first to invent)
 law : If the reference application is prior art under pre-AIA 35 U.S.C.
 102(e) to the claimed invention, use form paragraph
 7.21.01.fti to additionally make
 a provisional rejection under pre-AIA 35 U.S.C.
 102(e) / 103(a) . Rejections
 under pre-AIA 35
 U.S.C. 102(e) / 103(a) should not be made or
 maintained if the reference application is disqualified under pre-AIA 35 U.S.C.
 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. 
 

 10. See MPEP § 1490 for guidance regarding terminal disclaimers and
 withdrawal of nonstatutory double patenting rejections when these are the only
 rejections remaining. Note especially that priority or benefit claims under
 35 U.S.C.
 119(a) and (e) are not taken into account in
 determining which is the earlier-filed application for double patenting purposes.
 

 11. For applications being examined under the
 first inventor to file (FITF) provisions of the AIA : A rejection under
 35
 U.S.C. 102(a)(2) or 35 U.S.C.
 103 should also be made if appropriate. 
 

 12. In bracket 4, provide appropriate explanation for anticipation or
 rationale for obviousness of the claims being rejected over the claims of the cited
 application.
 
 
 

 ¶ 8.36 Rejection, Nonstatutory Double Patenting - With Secondary
 Reference(s)
 

 Claim [1] rejected on the
 ground of nonstatutory obviousness-type double patenting as being unpatentable over claim
 [2] of U.S. Patent No. [3] in view of [4] .
 [5] 

 Examiner Note:
 
 1. Form paragraph
 8.33 must
 precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office
 action.
 

 2. This form paragraph is used for nonstatutory double patenting
 rejections where the primary reference is a patent that includes
 claims patentably indistinct from those in the application under examination.
 

 3. If the nonstatutory double patenting rejection is
 based on another application , do not use this form paragraph. A
 provisional nonstatutory double patenting rejection should be made using form paragraphs
 8.33 and
 either 8.35 or
 8.37 .
 

 4. This form paragraph may be used where the patentably indistinct
 invention is claimed in a patent where the patent and the application under
 examination: 
 name the same inventive entity, or

 name different inventive entities but are commonly assigned,
 or
 

 are not commonly assigned but have at least one common (joint)
 inventor, or
 

 are filed by a common applicant ( 35 U.S.C. 118 ), or
 

 claim patentably indistinct inventions made as a result of
 activities undertaken within the scope of a joint research agreement under
 pre-AIA 35
 U.S.C. 103(c) , for applications examined under pre-AIA (first
 to invent) law, or
 

 claim patentably indistinct inventions and the claimed invention and the patent were
 commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed
 to be commonly owned under 35 U.S.C. 102(c) not later than
 the effective filing date under 35 U.S.C. 100(i) of the claimed
 invention, for applications examined under the first inventor to file (FITF)
 provisions of the AIA.
 
 
 

 5. In bracket 3, insert the number
 of the primary reference patent.
 

 6. In bracket 4, insert the secondary reference, which must be prior
 art under 35
 U.S.C. 102 or pre-AIA 35 U.S.C. 102 , as
 applicable.
 

 7. In bracket 5, insert an
 explanation of the obviousness analysis.
 

 8. A rejection should additionally be made under pre-AIA 35 U.S.C.
 103(a) using form paragraph 7.21.fti if: 
 evidence indicates that the primary reference patent is prior art under
 pre-AIA 35
 U.S.C. 102(f) or (g) (e.g., applicant has named
 the prior inventor in response to a requirement made using form paragraph
 8.28.fti ); and 
 

 the primary reference patent has not been disqualified as prior art in a
 pre-AIA 35
 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C.
 103(c) .
 
 
 

 9. For applications being examined under pre-AIA (first to invent)
 law : If the primary reference patent is prior art under pre-AIA 35 U.S.C.
 102(e) to the claimed invention, a rejection under
 pre-AIA 35 U.S.C.
 102(e) / 103(a) may be made using form
 paragraph 7.21.02.fti. Rejections under pre-AIA 35 U.S.C.
 102(e) / 103(a) should not be made or
 maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior
 art in a pre-AIA 35
 U.S.C. 103(a) rejection. 
 

 10. For applications being examined under
 first inventor to file (FITF) provisions of the AIA : A rejection under
 35
 U.S.C. 102(a)(2) or 35 U.S.C.
 103 should also be made if appropriate. 
 
 
 

 ¶ 8.37 Provisional Rejection, Nonstatutory Double Patenting - With
 Secondary Reference(s)
 

 Claim [1] provisionally
 rejected on the ground of nonstatutory double patenting as being unpatentable over claim
 [2] of copending Application No. [3] in view of [4] .
 [5] 

 This is a
 provisional nonstatutory double patenting rejection.
 

 Examiner Note:
 
 1. Form paragraph
 8.33 must
 precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office
 action.
 

 2. This form paragraph is used for
 nonstatutory double patenting rejections requiring an obviousness analysis where the
 primary reference is a copending application .
 

 3. If the patentably indistinct claims are in a
 patent , do not use this form paragraph, use form paragraph
 8.36 .
 

 4. This form paragraph may be used where the patentably indistinct
 claims are in a copending application where the copending application and the
 application under examination: 
 name the same inventive entity, or

 name different inventive entities but are commonly assigned,
 or
 

 are not commonly assigned but name at least one common (joint)
 inventor (unless disclosure of the reference application would violate the duty of
 the USPTO to keep the reference application confidential under 35 U.S.C. 122 
 e.g., the applicant or assignee of record has specifically requested that the
 inventor not be permitted to access the record in the manner provided in
 MPEP §
 106 ), or
 

 are filed by a common applicant ( 35 U.S.C. 118 ), or
 

 claim patentably indistinct inventions made as a result of
 activities undertaken within the scope of a joint research agreement under
 pre-AIA 35
 U.S.C. 103(c) , for applications examined under pre-AIA (first
 to invent) law, or 
 

 claim patentably indistinct inventions and the claimed invention and the primary
 reference application were commonly owned under 35 U.S.C.
 102(b)(2)(C) or deemed to be commonly owned under
 35
 U.S.C. 102(c) not later than the effective filing date under
 35
 U.S.C. 100(i) of the claimed invention, for applications
 examined under the first inventor to file (FITF) provisions of the AIA.
 
 
 

 5. If the application under examination and primary reference
 application are currently commonly assigned but the application under examination does
 not establish that the patentably indistinct inventions were commonly owned at the time
 the later invention was made, form paragraph 8.28.fti may be used in addition to
 this form paragraph to also resolve any issues relating to priority under
 pre-AIA 35 U.S.C.
 102(f) and/or (g) . 
 

 6. For applications being examined under first inventor to file (FITF)
 provisions of the AIA : If the primary reference application is to a
 different inventive entity and is commonly assigned with the application under
 examination, form paragraph 8.28.aia should additionally be used if there is no
 evidence of common ownership not later than the effective filing date of the invention
 claimed in the examined application. A rejection under 35 U.S.C.
 102(a)(2) or 35 U.S.C. 103 should also be made if
 appropriate. 
 

 7. In bracket 3, insert the number
 of the primary reference application.
 

 8. In bracket 4, insert the secondary reference, which must be prior
 art under 35
 U.S.C. 102 or pre-AIA 35 U.S.C. 102 , as
 applicable.
 

 9. In bracket 5, insert an
 explanation of the obviousness analysis.
 

 10. A provisional nonstatutory double patenting
 rejection should also be made in the primary reference application.
 

 11. A rejection should additionally be made under pre-AIA 35 U.S.C.
 103(a) using form paragraph 7.21.fti if: 
 evidence indicates that the primary reference application is prior art under
 pre-AIA 35
 U.S.C. 102(f) or (g) (e.g., applicant has named
 the prior inventor in response to a requirement made using form paragraph
 8.28.fti ); and 
 

 the primary reference application has not been disqualified as prior art in a
 pre-AIA 35
 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C.
 103(c) .
 
 
 

 12. For applications being examined under pre-AIA (first to invent)
 law : If the reference application is prior art under pre-AIA 35 U.S.C.
 102(e) to the claimed invention, use form paragraph
 7.21.01.fti to additionally make
 a rejection under pre-AIA 35 U.S.C. 102(e) / 103(a) . Rejections under
 pre-AIA 35 U.S.C.
 102(e) / 103(a) should not be made or
 maintained if the primary reference application is disqualified under pre-AIA 35 U.S.C.
 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) 
 rejection.
 

 13. See MPEP § 1490 for guidance regarding
 terminal disclaimers and withdrawal of nonstatutory double patenting rejections when
 these are the only rejections remaining. Note especially that priority or benefit claims
 under 35 U.S.C.
 119(a) and (e) are not taken into account in determining which is
 the earlier-filed application for double patenting purposes.
 
 
 
 5. Two-Way Test for Distinctness If a reference patent has a later patent term filing date than
 the application under examination, the question of whether the timewise extension
 of the right to exclude granted by a patent is justified or unjustified must be
 addressed. A two-way test is to be applied only when the applicant could not have
 filed the claims in a single application and the Office is
 solely responsible for any delays. In re Berg, 140 F.3d 1428,
 46 USPQ2d 1226 (Fed. Cir. 1998) (“The two-way exception can only apply when the
 applicant could not avoid separate filings, and even then, only if the PTO
 controlled the rates of prosecution to cause the later filed species claims to
 issue before the claims for a genus in an earlier application . . . . In Berg’s
 case, the two applications could have been filed as one, so it is irrelevant to
 our disposition who actually controlled the respective rates of prosecution.” 140
 F.3d at 1435, 46 USPQ2d at 1232); In re Hubbell, 709 F.3d 1140,
 106 USPQ2d 1032 (Fed. Cir. 2013) ("[P]rosecution choices resulted in the
 foreseeable consequence that the ′685 patent issued before the application claims
 on appeal. Given these circumstances, and because it is undisputed that the PTO
 was not solely responsible for the delay, Hubbell is not entitled to a two-way
 obviousness analysis." 709 F.3d at 1150, 106 USPQ2d at 1039.); see also
 In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993)
 (in a situation where delayed issuance equated to later expiration, applicant’s
 voluntary decision to obtain early issuance of claims directed to a species and to
 pursue prosecution of previously rejected genus claims in a continuation is a
 considered election to postpone by the applicant and not administrative delay).
 Unless the record clearly shows administrative delay caused solely by the Office
 and that applicant could not have avoided filing separate applications, the
 examiner may use the one-way distinctness determination and shift the burden to
 applicant to show why a two-way distinctness determination is required.
 

 When making a two-way distinctness determination, where
 appropriate, it is necessary to apply the obviousness analysis twice, first
 analyzing the obviousness of the application claims in view of the patent claims,
 and then analyzing the obviousness of the patent claims in view of the application
 claims. Where a two-way distinctness determination is required, a nonstatutory
 double patenting rejection based on obviousness is appropriate only where each
 analysis leads to a conclusion that the claimed invention is an obvious variation
 of the invention claimed in the other application/patent. If either analysis does
 not lead to a conclusion of obviousness, no double patenting rejection of the
 obviousness-type is made, but this does not necessarily preclude a nonstatutory
 double patenting rejection based on equitable principles. In re
 Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). 
 

 Although a delay in the processing of applications before the
 Office that causes patents to issue in an order different from the order in which
 the applications were filed is a factor to be considered in determining whether a
 one-way or two-way distinctness determination is necessary to support a double
 patenting rejection, it may be very difficult to assess whether the administrative
 process is solely responsible for a delay in the issuance of a patent. On the one
 hand, it is applicant who presents claims for examination and pays the issue fee.
 On the other hand, the resolution of legitimate differences of opinion in an
 appeal process or the time spent in an interference proceeding can significantly
 delay the issuance of a patent. Nevertheless, the reasons for the delay in issuing
 a patent have been considered in assessing the propriety of a double patenting
 rejection. Thus, in Pierce v . Allen B. DuMont
 Laboratories, Inc., 297 F.2d 323, 131 USPQ 340 (3d. Cir. 1961), the
 court found that administrative delay may justify the extension of patent rights
 beyond 17 years but “a considered election to postpone acquisition of the broader
 [patent after the issuance of the later filed application] should not be
 tolerated.” In Pierce, the patentee elected to participate in
 an interference proceeding [after all claims in the application had been
 determined to be patentable] whereby the issuance of the broader patent was
 delayed by more than 7 years after the issuance of the narrower patent. The court
 determined that the second issued patent was invalid on the ground of double
 patenting. Similarly, in In re Emert, 124 F.3d 1458, 44 USPQ2d
 1149 (Fed. Cir. 1997), the court found that the one-way test is appropriate where
 applicants, rather than the Office, had significant control over the rate of
 prosecution of the application at issue. In support of its finding that the
 applicants were responsible for delaying prosecution of the application during the
 critical period, the court noted that the applicants had requested and received
 numerous time extensions in various filings. More importantly, the court noted,
 after initially receiving an obviousness rejection of all claims, applicants had
 waited the maximum period to reply (6 months), then abandoned the application in
 favor of a substantially identical continuation application, then received another
 obviousness rejection of all claims, again waited the maximum period to reply, and
 then again abandoned the application in favor of a second continuation application
 substantially identical to the original filing. On the other hand, in
 General Foods Corp. v. Studiengesellschaft Kohle mbH, 972
 F.2d 1272, 23 USPQ2d 1839 (Fed. Cir. 1992), the court did not hold the patentee
 accountable for a delay in issuing the first-filed application until after the
 second-filed application issued as a patent, even where the patentee had
 intentionally refiled the first-filed application as a continuation-in-part after
 receiving a Notice of Allowance indicating that all claims presented were
 patentable. Where, through no fault of the applicant, the claims in a
 later-filed application issue first, a nonstatutory double patenting rejection is
 improper, in the absence of a two-way distinctness determination, because the
 applicant does not have complete control over the rate of progress of a patent
 application through the Office. In re Braat, 937 F.2d 589, 19
 USPQ2d 1289 (Fed. Cir. 1991). While acknowledging that allowance of the claims in
 the earlier-filed application would result in the timewise extension of an
 invention claimed in the patent, the court in Braat was of the
 view that the extension was justified under the circumstances, indicating that a
 nonstatutory double patenting rejection would be proper only if the claimed
 inventions were obvious over each other — a two-way distinctness determination. 
 

 See, however, In re Berg, 140
 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998), wherein the claims at issue could have
 been filed in the same application. The Berg court explained,
 “Braat was an unusual case; moreover, its factual situation is not likely to be
 repeated since the 1984 Act [amending 35 U.S.C. 116 , and permitting
 joint inventorship even though not all inventors contributed to each claim] went
 into effect.” 140 F.3d at 1433-34, 46 USPQ2d at 1230.
 

 Form paragraph 8.33 and the appropriate one of
 form paragraphs 8.34 - 8.37 may be used to make
 nonstatutory double patenting rejections based on anticipation or obviousness
 analyses. See MPEP §
 804 , paragraph II.B.4, above. See paragraph II.B.6,
 below, and form paragraphs 8.38 and 8.39 if the basis for the
 nonstatutory double patenting rejection is equitable principles. 
 

 6. Nonstatutory Double Patenting Rejection Based on Equitable Principles In some circumstances a nonstatutory double patenting
 rejection is applicable based on equitable principles. Occasionally the
 fundamental reason for nonstatutory double patenting – to prevent unjustified
 timewise extension of patent rights – is itself enforceable no matter how the
 extension is brought about. Examples of this occurred in In re
 Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); and
 Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d
 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003).
 

 In In re Schneller, 397 F.2d 350, 158 USPQ
 210, 216 (CCPA 1968), the court affirmed a double patenting rejection after
 summing up the situation as follows: 
 

 
 [I]n appellant’s own terms: The combination ABC was old. He
 made two improvements on it, (1) adding X and (2) adding Y, the result still
 being a unitary clip of enhanced utility. While his invention can be practiced
 in the forms ABCX or ABCY, the greatest advantage and best mode of practicing
 the invention as disclosed is obtained by using both inventions in the
 combination ABCXY. His first application disclosed ABCXY and other matters. He
 obtained a patent claiming [a clip comprising] BCX and ABCX, . . .
 so claiming these combinations as to cover them
 no matter what other feature is incorporated in them ,
 thus covering effectively ABCXY . He now, many years later,
 seeks more claims directed to ABCY and ABCXY . Thus,
 protection he already had would be extended, albeit in somewhat different form,
 for several years beyond the expiration of his patent, were we to reverse. 
 

 
 397 F.2d at 355-56, 158 USPQ at 216 (emphasis in original). 

 The court recognized that “there is no double patenting in the
 sense of claiming the same invention because ABCX and ABCY are, in the technical
 patent law sense, different inventions. The rule against ‘double patenting,’
 however, is not so circumscribed. The fundamental reason for the rule is to
 prevent unjustified timewise extension of the right to
 exclude granted by a patent no matter how the extension is brought
 about. To . . . prevail here, appellant has the burden of establishing that the
 invention claimed in his patent is ‘independent and distinct’ from the invention
 of the appealed claims…. [A]ppellant has clearly not established the independent
 and distinct character of the inventions of the appealed claims.” 397 F.2d at
 354-55, 158 USPQ at 214-15 (emphasis in original). The court observed:
 

 
 The controlling fact is that patent protection for the clips,
 fully disclosed in and covered by the claims of the patent, would be extended
 by allowance of the appealed claims. Under the circumstance of the instant
 case, wherein we find no valid excuse or mitigating circumstances making it
 either reasonable or equitable to make an exception, and wherein there is no
 terminal disclaimer, the rule against “double patenting” must be applied. 
 

 
 397 F.2d at 355, 158 USPQ at 215. 

 The decision in In re Schneller did not
 establish a rule of general application and thus is limited to the particular set
 of facts set forth in that decision. The court in Schneller 
 cautioned “against the tendency to freeze into rules of general application what,
 at best, are statements applicable to particular fact situations.”
 Schneller, 397 F.2d at 355, 158 USPQ at 215. Nonstatutory
 double patenting rejections based on Schneller will be rare.
 The Technology Center (TC) Director must approve any nonstatutory double patenting
 rejections based on Schneller . If an examiner determines that a
 double patenting rejection based on Schneller is appropriate,
 the examiner should first consult with the examiner's supervisory patent examiner
 (SPE). If the SPE agrees with the examiner then approval of the TC Director must
 be obtained before such a nonstatutory double patenting rejection can be made.
 

 A fact situation similar to that in Schneller 
 was presented to a Federal Circuit panel in In re Kaplan, 
 789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986). Kaplan had been issued a patent on a
 process of making chemicals in the presence of an organic solvent. Among the
 organic solvents disclosed and claimed as being useful were tetraglyme and
 sulfolane. One unclaimed example in the patent was specifically directed to a
 mixture of these two solvents. The claims in the application to Kaplan and Walker,
 the application before the Office, were directed to essentially the same chemical
 process, but requiring the use of the solvent mixture of tetraglyme and sulfolane.
 In reversing the double patenting rejection, the court stated that the mere fact
 that the broad process claim of the patent requiring an organic solvent reads on
 or “dominates” the narrower claim directed to basically the same process using a
 specific solvent mixture does not, per se , justify a double
 patenting rejection. The court also pointed out that the double patenting
 rejection improperly “used the disclosure of the appellants’ joint invention
 [solvent mixture] in the Kaplan patent specification as though it were prior art.”
 Kaplan , 789 F.2d at 1577, 229 USPQ at 681. 
 

 A significant factor in the Kaplan case was
 that the broad invention was invented by Kaplan, and the narrow invention (i.e.,
 using a specific combination of solvents) was invented by Kaplan and Walker. Since
 these applications (as the applications in Braat ) were filed
 before the Patent Law Amendments Act of 1984 (Public Law 98-622, November 8, 1984)
 amending 35
 U.S.C. 116 to expressly authorize filing a patent
 application in the names of joint inventors who did not necessarily make a
 contribution to the invention defined in each claim in the patent, it was
 necessary to file multiple applications to claim both the broad and narrow
 inventions. Accordingly, there was a valid reason, driven by statute, why the
 claims to the specific solvent mixture were not presented for examination in the
 Kaplan patent application. 
 

 More recently, in Geneva Pharmaceuticals
 Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1385-86, 68 USPQ2d 1865,
 1875 (Fed. Cir. 2003), the court applied nonstatutory double patenting to
 invalidate a claim without analyzing anticipation or obviousness. In this case,
 the earlier patent claimed a compound and the written description disclosed a
 single utility of that compound as administration to a human in amounts effective
 for inhibiting ß-lactamase. The later patent claimed nothing more than the earlier
 patent’s disclosed utility as a method of using the compound. Thus, the court
 found that the claims of the later patent and the claims of the earlier patent
 were not patentably distinct. The Geneva court relied on
 equitable principles, not an obviousness-type analysis, in reaching its
 conclusion. Id. at 1386, 68 USPQ2d at 1875 (quoting In
 re Byck, 48 F.2d 665, 666 (CCPA 1931)).
 

 Each double patenting situation must be decided on its own facts. 

 Form paragraph 8.38 (between an issued patent
 and one or more applications) or 8.39 (provisional rejection) may
 be used to make this type of nonstatutory double patenting rejection.
 

 ¶ 8.38 Double Patenting - Nonstatutory (Based Solely on Improper Timewise
 Extension of Patent Rights) With a Patent
 

 Claim [1] rejected on the
 ground of nonstatutory double patenting over claim [2] of U.S. Patent No.
 [3] since the claims, if allowed, would improperly extend the “right to
 exclude” already granted in the patent.
 

 The subject matter claimed in the
 instant application is fully disclosed in the patent and is covered by the patent since the
 patent and the application are claiming common subject matter, as follows: [4] 

 Furthermore, there is no apparent
 reason why applicant was prevented from presenting claims corresponding to those of the
 instant application during prosecution of the application which matured into a patent. See
 In re Schneller , 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also
 MPEP §
 804 .
 

 Examiner Note:
 
 1. Form paragraph 8.33 must precede any one of form
 paragraphs 8.34 
 to 8.39 and
 must be used only ONCE in an Office action.
 

 2. This form paragraph should only
 be used where approval from the TC Director to make a nonstatutory double patenting
 rejection based on In re Schneller has been obtained.
 
 

 3. Use this form paragraph only when the subject matter of the
 claim(s) is fully disclosed in, and covered by at least one claim of, an issued U.S.
 Patent which is commonly owned or where there is at least one common (joint) inventor or
 a common applicant ( 35 U.S.C. 118 ).
 

 4. In bracket 3, insert the number
 of the patent.
 

 5. In bracket 4, insert a
 description of the subject matter being claimed which is covered in the
 patent.
 

 6. A rejection should additionally be made under pre-AIA 35 U.S.C.
 103(a) using form paragraph 7.21.fti if: 
 evidence indicates that the patent is also prior art under pre-AIA 35 U.S.C.
 102(f) or (g) (e.g., applicant has named
 the prior inventor in response to a requirement made using form paragraph
 8.28.fti ); and 
 

 the patent has not been disqualified as prior art in a pre-AIA 35 U.S.C.
 103(a) rejection pursuant to pre-AIA 35 U.S.C.
 103(c) .
 
 
 

 7. For applications being examined under pre-AIA (first to invent)
 law : If the patent is prior art under pre-AIA 35 U.S.C. 102(e) to the
 claimed invention, a rejection under pre-AIA 35 U.S.C.
 102(e) / 103(a) may be made using form
 paragraph 
 7.21.02.fti . Rejections under pre-AIA 35 U.S.C.
 102(e) / 103(a) should not be made or
 maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior
 art in a pre-AIA 35
 U.S.C. 103(a) rejection.
 

 8. For applications
 being examined under first inventor to file (FITF) provisions of the AIA :
 A rejection under 35 U.S.C. 102(a)(2) or
 35
 U.S.C. 103 should also be made if appropriate. 
 
 
 

 ¶ 8.39 Double Patenting - Nonstatutory (Based Solely on Improper Timewise
 Extension of Patent Rights) With Another Application
 

 Claim [1] provisionally
 rejected on the ground of nonstatutory double patenting over claim [2] of
 copending Application No. [3] . This is a provisional double patenting rejection
 because the patentably indistinct claims have not in fact been patented.
 

 The subject matter claimed in the
 instant application is fully disclosed in the referenced copending application and would be
 covered by any patent granted on that copending application since the referenced copending
 application and the instant application are claiming common subject matter, as follows: 
 [4] 

 Furthermore, there is no apparent
 reason why applicant would be prevented from presenting claims corresponding to those of the
 instant application in the other copending application. See In re
 Schneller , 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804 .
 

 Examiner Note:
 
 1. Form paragraph 8.33 must precede any one of form
 paragraphs 8.34 
 to 8.39 and
 must be used only ONCE in an Office action.
 

 2. This form paragraph should only
 be used where approval from the TC Director to make a nonstatutory double patenting
 rejection based on In re Schneller has been obtained.
 
 

 3. Use this form paragraph only when the subject matter of the
 claim(s) is fully disclosed in, and covered by at least one claim of, another copending
 application (reference application) which is commonly owned, or where there is at least
 one common (joint) inventor or a common applicant ( 35 U.S.C.
 118 ).
 

 4. In bracket 3, insert the number
 of the reference application.
 

 5. In bracket 4, insert a
 description of the subject matter being claimed which is covered in the reference
 application.
 

 6. If the reference application is currently commonly assigned but the
 prosecution file of the application under examination does not establish that the
 patentably indistinct inventions were commonly owned at the time the later invention was
 made, form paragraph 8.28.fti may be used in addition to this form paragraph
 to resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or
 (g) .
 

 7. For applications being examined under first inventor to
 file (FITF) provisions of the AIA : If the reference application is to a
 different inventive entity and is commonly assigned with the application under
 examination, form paragraph 8.28.aia
 should additionally be used if there is no evidence of
 common ownership not later than the effective filing date under 35 U.S.C.
 100(i) of the claimed invention. A rejection under
 35 U.S.C.
 102(a)(2) or 35 U.S.C. 103 should also be made if
 appropriate. 
 

 8. A provisional double patenting
 rejection should also be made in the reference application.
 

 9. A rejection should additionally be made under pre-AIA 35 U.S.C.
 103(a) using form paragraph 7.21.fti if: 
 evidence indicates that the reference application is prior art under
 pre-AIA 35
 U.S.C. 102(f) or (g) (e.g., applicant has named
 the prior inventor in response to a requirement made using form paragraph
 8.28.fti ); and 
 

 the reference application has not been disqualified as prior art in a
 pre-AIA 35
 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C.
 103(c) .
 
 
 

 10. For applications being examined under pre-AIA (first to invent)
 law : If the reference application is prior art under pre-AIA 35 U.S.C.
 102(e) to the claimed invention, use form paragraph
 7.21.01.fti to additionally make a rejection under
 pre-AIA 35 U.S.C.
 102(e) / 103(a) in the application with the
 later effective U.S. filing date. Rejections under pre-AIA 35 U.S.C.
 102(e) / 103(a) should not be made or
 maintained if the reference application is disqualified under pre-AIA 35 U.S.C.
 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) 
 rejection.
 

 11. See MPEP § 1490 for guidance regarding
 terminal disclaimers and withdrawal of nonstatutory double patenting rejections when
 these are the only rejections remaining. Note especially that priority or benefit claims
 under 35
 U.S.C. 119(a) and (e) are not taken into account in determining
 which is the earlier-filed application for double patenting purposes. 
 
 
 
 7. Design/Plant — Utility Situations Double patenting issues may be raised where an applicant has
 filed both a utility patent application ( 35 U.S.C. 111 ) and either an
 application for a plant patent ( 35 U.S.C. 161 ) or an
 application for a design patent ( 35 U.S.C. 171 ). In general,
 the same double patenting principles and criteria that are applied in
 utility-utility situations are applied to utility-plant or utility-design
 situations. Double patenting rejections in utility-plant situations may be made in
 appropriate circumstances. 
 

 Although double patenting is rare in the context of utility
 versus design patents, a double patenting rejection of a pending design or utility
 application can be made on the basis of a previously issued utility or design
 patent, respectively. Carman Indus. Inc. v. Wahl, 724 F.2d 932,
 220 USPQ 481 (Fed. Cir. 1983). The rejection is based on the public policy
 preventing the extension of the term of a patent. Double patenting may be found in
 a design-utility situation irrespective of whether the claims in the reference
 patent/application and the claims in the application under examination are
 directed to the same invention, or whether they are directed to inventions which
 are obvious variations of one another. In re Thorington, 418
 F.2d 528, 163 USPQ 644 (CCPA 1969). 
 

 In Carman Indus., the court held that no
 double patenting existed between a design and utility patent since the claims in
 the utility patent, drawn to the interior construction of a flow promoter, were
 not directed to the same invention or an obvious variation of the invention
 claimed in a design patent directed to the visible external surface configuration
 of a storage bin flow promoter. The majority opinion in this decision appears to
 indicate that a two-way distinctness determination is necessary in design-utility
 cases. 724 F.2d at 940-41, 220 USPQ at 487-88.
 

 In Thorington, the court affirmed a double
 patenting rejection of claims for a fluorescent light bulb in a utility patent
 application in view of a previously issued design patent for the same bulb. In
 another case, a double patenting rejection of utility claims for a finger ring was
 affirmed in view of an earlier issued design patent, where the drawing in both the
 design patent and the utility application illustrated the same article.
 In re Phelan, 205 F.2d 183, 98 USPQ 156 (CCPA 1953). A
 double patenting rejection of a design claim for a flashlight cap and hanger ring
 was affirmed over an earlier issued utility patent. In re
 Barber, 81 F.2d 231, 28 USPQ 187 (CCPA 1936). A double patenting
 rejection of claims in a utility patent application directed to a balloon tire
 construction was affirmed over an earlier issued design patent. In re
 Hargraves, 53 F.2d 900, 11 USPQ 240 (CCPA 1931). 
 

 III. CONTRAST BETWEEN DOUBLE PATENTING REJECTION AND REJECTIONS BASED ON PRIOR ART
 Rejections over a patent or another copending application based on
 double patenting or under 35 U.S.C. 102 or 103 are
 similar in the sense that both require comparison of the claimed subject matter with at
 least part of the content of another patent or application, and both may require that an
 anticipation or obviousness analysis be made. However, there are significant differences
 between a rejection based on double patenting and one based on prior art under
 35 U.S.C.
 102 or 103 . “[O]bvious-type double
 patenting and [pre-AIA] §102(e) / §103 rejections may be analogous in
 the sense that an obviousness analysis is performed in both cases, but they are not
 analogous in terms of what is analyzed.” In re Bartfeld, 925 F.2d
 1450, 1453, 17 USPQ2d 1885, 1888 (Fed. Cir. 1991). 
 

 One significant difference is that a double patenting rejection must
 rely on a comparison with the claims in an issued patent or pending application, whereas
 an anticipation or obviousness rejection based on the same patent or application under
 35 U.S.C.
 102 or 103 relies on a comparison with what
 is disclosed (whether or not claimed) in the same issued patent or pending application.
 In a 35
 U.S.C. 102 or 103 rejection over a prior art
 patent, the reference patent is available for all that it fairly discloses to one of
 ordinary skill in the art, regardless of what is claimed. In re Heck, 
 699 F.2d 1331, 216 USPQ 1038 (Fed. Cir. 1983). 
 

 A second significant difference is that a terminal disclaimer cannot be
 used to obviate a rejection based on prior art under 35 U.S.C.
 102 or 103 prior art, even though it may
 overcome a nonstatutory double patenting rejection. In re Bartfeld, 
 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991). The purpose of a terminal disclaimer is
 to obviate a nonstatutory double patenting rejection by removing the potential harm to
 the public by issuing a second patent, and not to remove a patent as prior art. See, for
 example, Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344, 86
 USPQ2d 1110, 1115 (Fed. Cir. 2008).
 

 IV. DOUBLE PATENTING REJECTIONS AND PRIOR ART DISQUALIFICATION UNDER PRE-AIA 35
 U.S.C. 103(c) For pre-AIA applications filed on or after November 29, 1999 and for
 pre-AIA applications pending on or after December 10, 2004, a commonly assigned/owned
 patent or application may be disqualified as pre-AIA 35 U.S.C. 102(e) prior art
 in a pre-AIA 35 U.S.C.
 103(a) rejection. See pre-AIA 35 U.S.C. 103(c)(1) . For
 pre-AIA applications pending on or after December 10, 2004, a patent or application may
 be disqualified as pre-AIA 35 U.S.C. 102(e) prior art in a pre-AIA 35 U.S.C.
 103(a) rejection if evidence of a joint research agreement
 pursuant to pre-AIA 35
 U.S.C. 103(c)(2) and (3) is made of record in the application (or
 patent) being examined (or reexamined), and the conflicting claims resulted from a joint
 research agreement that was in effect on or before the date the later claimed invention
 was made. See MPEP §
 2146 et seq. for more information. The prior art disqualification under
 pre-AIA 35 U.S.C.
 103(c) may also be applicable in post-grant Office proceedings if
 the application, which matured into the patent under reexamination or review, meets the
 above-mentioned conditions.
 

 An examiner should make both a pre-AIA 35 U.S.C.
 102(e) / 103(a) rejection and a double
 patenting rejection over the same reference when the facts support both rejections. See
 the charts in MPEP §
 804 for an overview of possible rejections based on prior art
 as well as double patenting. Note that even if an earlier patent or application to
 another is disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection
 based on common ownership or a joint research agreement as discussed above, that patent
 or application may still form the basis of a double patenting rejection and is still
 available as prior art under pre-AIA 35 U.S.C. 102(e) to form the
 basis of an anticipation rejection. See MPEP § 804.03 , subsection IV. If the
 examiner makes only one of these rejections when each is separately applicable, and if
 the next Office action includes the previously omitted rejection, then the next Office
 action cannot be made final. A prior art reference that anticipates or renders claimed
 subject matter obvious under pre-AIA 35 U.S.C.
 102(e) / 103(a) does not support a double
 patenting rejection where that subject matter is not claimed in the reference patent or
 application. For pre-AIA applications pending on or after December 10, 2004, rejections
 under pre-AIA 35
 U.S.C. 102(e) / 103(a) should not be made or
 maintained if the reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior
 art in a pre-AIA 35
 U.S.C. 103(a) rejection. See MPEP § 2146.01 for
 information regarding when prior art is disqualified under pre-AIA 35 U.S.C.
 103(c) based on common ownership or as a result of activities
 undertaken within the scope of a joint research agreement. 
 

 As an alternative to invoking the prior art
 disqualification under pre-AIA 35 U.S.C. 103(c)(1) , the assignee could have taken some
 preemptive measures to avoid having a commonly assigned/owned copending application
 become prior art under pre-AIA 35 U.S.C. 102(e) . The applications could have been filed
 on the same day, or copending applications could have been merged into a single
 continuation-in-part application and the parent applications abandoned. If these steps
 are undesirable or the first patent has issued, the prior art effect of the first patent
 may be avoided by a showing under 37 CFR 1.132 that any unclaimed
 invention disclosed in the first patent was derived from the inventor of the application
 before the examiner in which the pre-AIA 35 U.S.C.
 102(e) / 103(a) rejection was made.
 In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982). See also
 MPEP §
 716.10 . It may also be possible for applicant to respond to a
 pre-AIA 35 U.S.C.
 102(e) / 103(a) rejection by showing, under
 37 CFR
 1.131(a) , that the date of invention of the claimed subject matter
 was prior to the pre-AIA 35 U.S.C. 102(e) date of the reference patent which has
 been relied upon for its unclaimed disclosure. See MPEP § 715 . See also
 37 CFR
 1.131(c) and MPEP § 718 for affidavits or
 declarations to disqualify a commonly owned patent as prior art under pre-AIA 35 U.S.C.
 103(c) . 
 

 V. DOUBLE PATENTING REJECTIONS AND PRIOR ART EXCEPTION UNDER 35 U.S.C. 102(b)(2)(C)
 and 102(c) For AIA applications, subject matter in a commonly
 assigned/owned patent or application may be excepted as prior art under
 35 U.S.C.
 102(a)(2) . See 35 U.S.C. 102(b)(2)(C) . Also, if the
 requirements of 35 U.S.C. 102(c) are met, common
 ownership can be established by a joint research agreement. This prior art exception
 also applies in post-grant Office proceedings of patents if the patent under
 reexamination or review is subject to AIA 35 U.S.C. 102 and
 103 . See, e.g., MPEP § 2258 , subsection I, for more
 information about which prior art regime applies in an ex parte reexamination. See also
 MPEP §
 717.02 et seq. for more information on the prior art exception for commonly
 owned or joint research agreement subject matter.
 

 An examiner should make both a prior art rejection under
 either 35
 U.S.C. 102(a)(2) or 103 and a double patenting rejection
 over the same reference when the facts support both rejections. See the charts in
 MPEP §
 804 for an overview of possible rejections based on prior art
 as well as double patenting. If the prior art exception under 35 U.S.C.
 102(b)(2)(C) is properly invoked, the excepted subject matter
 disclosed in the commonly owned or joint research agreement reference is not available
 as prior art under 35 U.S.C. 102(a)(2) for an
 anticipation and/or obviousness rejection, and also may not be used as a secondary
 reference in a nonstatutory double patenting rejection. However, the claims of a
 reference excepted under 35 U.S.C. 102(b)(2)(C) may still be
 the basis for a double patenting rejection, whether statutory or nonstatutory. See
 MPEP §
 804.03 , subsection IV. A prior art reference that anticipates
 or renders claimed subject matter obvious under 35 U.S.C.
 102(a)(2) or 103 does not support a double
 patenting rejection where that subject matter is not claimed in the reference patent or
 application. Rejections under 35 U.S.C. 102(a)(2) or
 103 should not be made or maintained if the reference is not
 prior art because of the exception under 35 U.S.C. 102(b)(2)(C) . See
 MPEP §
 717.02 et seq. for information regarding when prior art meets the exception
 under 35
 U.S.C. 102(b)(2)(C) and 102(c) 
 based on common ownership or a joint research agreement.
 

 VI. DOUBLE PATENTING REJECTIONS ONCE A JOINT RESEARCH AGREEMENT IS ESTABLISHED
 Under both pre-AIA and AIA law, examiners cannot rely on
 the joint research agreement provisions to apply a nonstatutory double patenting
 rejection until applicant establishes the existence of a joint research agreement in
 accordance with 37 CFR
 1.104(c)(4)(ii) or (c)(5)(ii) . Therefore, it is not
 appropriate for an examiner to assume that the pre-AIA common ownership disqualification
 or the AIA common ownership exception applies merely on the basis of assignment
 information. If in reply to an Office action applying a prior art rejection, applicant
 establishes that the relied upon reference is not prior art under the joint research
 agreement provision of 35 U.S.C. 102(c) , or disqualifies it
 as prior art under pre-AIA 35 U.S.C. 103(c) , and a subsequent nonstatutory double
 patenting rejection based upon conflicting claims in the same reference is applied, the
 next Office action may be made final even if applicant did not amend the claims
 (provided the examiner introduces no other new ground of rejection that was not
 necessitated by either amendment or an information disclosure statement filed during the
 time period set forth in 37 CFR 1.97(c) with the fee set
 forth in 37 CFR 1.17(p) ). The Office action is properly made final because
 the new nonstatutory double patenting rejection was necessitated by the applicant’s
 amendment of the application.
 

 
 804.01 Prohibition of Nonstatutory Double Patenting Rejections Under
 35 U.S.C. 121 [R-07.2022]
 

 35 U.S.C.
 121 authorizes the Director to restrict the claims in a patent
 application to a single invention when independent and distinct inventions are presented
 for examination. The third sentence of 35 U.S.C. 121 prohibits the use of a
 patent issuing on an application in which a requirement for restriction has been made,
 or on an application filed as a result of such a requirement, as a reference against any
 divisional application in a nonstatutory double patenting rejection, if the divisional
 application is filed before the issuance of the patent. The 35 U.S.C. 121 
 prohibition applies only where the Office has made a requirement for restriction. The
 prohibition does not apply where the divisional application was voluntarily filed by the
 applicant and not in response to an Office requirement for restriction. The U.S. Court
 of Appeals for the Federal Circuit has concluded that the protection of
 35 U.S.C.
 121 does not extend to all types of continuing applications,
 stating that “the protection afforded by section 121 to applications (or patents issued
 therefrom) filed as a result of a restriction requirement is limited to divisional
 applications.” Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518
 F.3d 1353, 1362, 86 USPQ2d 1001, 1007-1008 (Fed. Cir. 2008). Note that a patentee cannot
 retroactively recover the safe harbor protection of 35 U.S.C. 121 
 against nonstatutory double patenting by amending a patent that issued from a
 continuation-in-part application to only subject matter in the parent application and
 redesignating the CIP as a divisional of the parent application. See In re
 Janssen Biotech, Inc., 880 F.3d 1315, 1322, 125 USPQ2d 1525, 1529-30 (Fed.
 Cir. 2018)( “[A] patent owner cannot retroactively bring its challenged patent within
 the scope of the safe-harbor provision by amendment in a reexamination proceeding.”);
 G.D. Searle LLC v. Lupin Pharm., Inc., 790 F.3d 1349, 1355, 115
 USPQ2d 1326, 1330 (Fed. Cir. 2015)(“Simply deleting that new matter from the reissue
 patent does not retroactively alter the nature of the [ ] application.”).
 

 This apparent nullification of nonstatutory double
 patenting as a ground of rejection or invalidity in divisional applications imposes a
 heavy burden on the Office to guard against erroneous requirements for restrictions
 where the claims define essentially the same invention in different language and where
 acquiescence to the restriction requirement might result in the issuance of several
 patents for the same invention. “[I]f an examiner issues a restriction requirement
 between patentably indistinct claims, two patents may issue and prolong patent
 protection beyond the statutory term on obvious variants of the same invention. This
 prolongation would occur because § 121 would immunize the restricted
 application against nonstatutory double patenting rejections.” Geneva
 Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1379, 68 USPQ2d
 1865, 1869 (Fed. Cir. 2003). “[W]hen the existence of multiple patents is due to the
 administrative requirements imposed by the Patent and Trademark Office,
 35 U.S.C.
 Section 121 provides that the inventor shall not be prejudiced by
 having complied with those requirements. Thus when two or more patents result from a PTO
 restriction requirement, whereby aspects of the original application must be divided
 into separate applications, Section 121 insulates the ensuing
 patents from the charge of double patenting.” Applied Materials Inc. v.
 Advanced Semiconductor Materials, 98 F.3d 1563, 1568, 40 USPQ2d 1481, 1484
 (Fed. Cir. 1996) (citing Studiengesellschaft Kohle mbH v. Northern
 Petrochemical Co., 784 F.2d 351, 354, 228 USPQ 837, 840 (Fed. Cir.
 1986)).
 

 The prohibition against holdings of nonstatutory double patenting
 applies to requirements for restriction between independent or distinct inventions, such
 as the related subject matter treated in MPEP § 806.04 through
 §
 806.05(j) , namely, between a combination and a subcombination
 thereof, between subcombinations disclosed as usable together, between a process and an
 apparatus for its practice, between a process and a product made by such process and
 between an apparatus and a product made by such apparatus, etc., so long as the claims
 in each application are filed as a result of such requirement. 
 

 The following are situations where the prohibition against nonstatutory
 double patenting rejections under 35 U.S.C. 121 does not apply: 
 

 
 (A) The applicant voluntarily files two or more applications without
 a restriction requirement by the examiner. In order to obtain the benefit of
 35 U.S.C.
 121 , claims must be formally entered, restricted in, and
 removed from an earlier application before they are filed in a divisional
 application . Geneva Pharms. Inc. v. GlaxoSmithKline PLC, 349
 F.3d 1373, 1379, 68 USPQ2d 1865, 1870 (Fed. Cir. 2003) (For claims that were not
 in the original application and are first formally entered in a later divisional
 application, 35
 U.S.C. 121 “does not suggest that the original application
 merely needs to provide some support for claims that are first entered formally in
 the later divisional application.” Id .); In re
 Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). 
 

 (B) The claims of the application under examination and claims of the
 other application/patent are not consonant with the restriction requirement made
 by the examiner, since the claims have been changed in material respects from the
 claims at the time the requirement was made. For example, the divisional
 application filed includes additional claims not consonant in scope with the
 original claims subject to restriction in the parent. Symbol
 Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991);
 Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 916
 F.2d 683, 16 USPQ2d 1436 (Fed. Cir. 1990). In order for consonance to exist, the
 line of demarcation between the independent and distinct inventions identified by
 the examiner in the requirement for restriction must be maintained. 916 F.2d at
 688, 16 USPQ2d at 1440. 
 

 (C) The restriction requirement was withdrawn because the requirement
 was written in a manner which made it clear to applicant that the requirement was
 made subject to the nonallowance of generic or other linking claims and such
 generic or linking claims are subsequently allowed.
 

 (D) The requirement for restriction (holding of lack of unity of
 invention) was only made in an international application by the International
 Searching Authority or the International Preliminary Examining Authority. However,
 the prohibition against nonstatutory double patenting rejections does apply to
 requirements for restriction (lack of unity of invention holdings) made in
 national stage applications submitted under 35 U.S.C. 371 .
 

 (E) The requirement for restriction was withdrawn, in its entirety or
 in pertinent part, by the examiner before the patent issues. With the withdrawal
 of the restriction requirement, the non-elected claims that are no longer
 withdrawn from consideration become subject to examination. “The restriction
 requirement disappears; it is as though it had not been made. With the
 disappearance of the restriction requirement, the need for a divisional
 application and the need for the [double patenting] prohibition also
 disappear.” In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129,
 132 (CCPA 1971). Note that a restriction requirement in an earlier-filed
 application does not carry over to claims of a continuation application in which
 the examiner does not reinstate or refer to the restriction requirement in the
 parent application. Reliance on a patent issued from such a continuation
 application to reject claims in a later-filed divisional application is not
 prohibited under 35 U.S.C. 121 . Bristol-Myers Squibb Co. v.
 Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir.
 2004).
 

 (F) The claims of the second application are drawn to the “same
 invention” as the first application or patent. Studiengesellschaft Kohle
 mbH v. Northern Petrochemical Co., 784 F.2d 351, 228 USPQ 837 (Fed.
 Cir. 1986). A statutory double patenting rejection under 35 U.S.C.
 101 should be made, thus it is not necessary to determine
 whether the 35 U.S.C. 121 prohibition against making double patenting
 rejections is applicable. “Same invention” means identical subject matter. See,
 e.g., Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894);
 In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970);
 In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). The
 35 U.S.C.
 121 prohibition against certain nonstatutory double
 patenting rejections does not apply to statutory double patenting rejections under
 35 U.S.C.
 101 of claims to the “same invention.”
 

 (G) Where a requirement for restriction between a product, a process
 of making the product, and a process of using the product was made subject to the
 non-allowance of the product and the product is subsequently allowed. In this
 situation if any process claims are rejoined, the restriction requirement between
 the elected product and any rejoined process should be withdrawn in accordance
 with 37 CFR
 1.141(b) and MPEP § 821.04 .
 

 (H) The second application is a continuation-in-part
 (CIP) application that includes claims restricted from the original application. A
 CIP, by definition, is an application filed during the lifetime of an earlier
 application by at least one common (joint) inventor that repeats some substantial
 portion or all of the earlier application and adds matter not disclosed in the
 earlier application, i.e., the application in which the restriction requirement
 was originally made. 35 U.S.C. 121 refers
 specifically and only to divisional and original applications, and does not afford
 protection to CIP applications. Pfizer, Inc. v. Teva Pharmaceuticals USA,
 Inc., 518 F.3d 1353, 1362, 86 USPQ2d 1001, 1007-08 (Fed. Cir. 2008).
 See also In re Janssen Biotech, Inc., 880 F.3d 1315, 1322,125
 USPQ2d 1525, 1529-30 (Fed. Cir. 2018) and G.D. Searle LLC v. Lupin
 Pharm., Inc., 790 F.3d 1349, 1355, 115 USPQ2d 1326, 1330 (Fed. Cir.
 2015).
 

 
 35 U.S.C.
 121 does not prevent a double patenting rejection when the
 identical invention is claimed in the divisional application and the application/patent
 in which a restriction requirement was made. While identical claims should not arise if
 appropriate care is exercised in defining the independent and distinct inventions in a
 restriction requirement, if they do, the Office will make the statutory
 ( 35 U.S.C.
 101 ) double patenting rejection because the patentee is entitled
 only to a single patent for an invention. As expressed in Studiengesellschaft
 Kohle, 784 F.2d at 361, 228 USPQ at 844, (J. Newman, concurring),
 “ 35 U.S.C.
 121 of course does not provide that multiple patents may be
 granted on the identical invention.” 
 

 

 
 804.02 Avoiding a Double Patenting Rejection [R-07.2022]
 I. STATUTORY A rejection based on the statutory type of double patenting can be
 avoided by amending the conflicting claims so that they are not coextensive in scope.
 Where the conflicting claims are in one or more pending applications and a patent, a
 rejection based on statutory type double patenting can also be avoided by canceling
 the conflicting claims in all the pending applications. Where the conflicting claims
 are in two or more pending applications, a provisional rejection based on statutory
 type double patenting can also be avoided by canceling the conflicting claims in all
 but one of the pending applications. A terminal disclaimer is not effective in
 overcoming a statutory double patenting rejection. 
 

 The use of a 37 CFR 1.131(a) affidavit in
 overcoming a statutory double patenting rejection is inappropriate. In re
 Dunn, 349 F.2d 433, 146 USPQ 479 (CCPA 1965). Knell v.
 Muller, 174 USPQ 460 (Comm’r. Pat. 1971) (citing the CCPA decisions in
 In re Ward, 236 F.2d 428, 111 USPQ 101 (CCPA 1956); In
 re Teague, 254 F.2d 145, 117 USPQ 284 (CCPA 1958); and In re
 Hidy, 303 F.2d 954, 133 USPQ 650 (CCPA 1962)). 
 

 II. NONSTATUTORY A rejection based on a nonstatutory type of double patenting can be
 avoided by filing a terminal disclaimer in the application or proceeding in which the
 rejection is made. In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA
 1970); In re Knohl, 386 F.2d 476, 155 USPQ 586 (CCPA 1967); and
 In re Griswold, 365 F.2d 834, 150 USPQ 804 (CCPA 1966). The use
 of a terminal disclaimer in overcoming a nonstatutory double patenting rejection is
 in the public interest because it encourages the disclosure of additional
 developments, the earlier filing of applications, and the earlier expiration of
 patents whereby the inventions covered become freely available to the public.
 In re Jentoft, 392 F.2d 633, 157 USPQ 363 (CCPA 1968);
 In re Eckel, 393 F.2d 848, 157 USPQ 415 (CCPA 1968);
 In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967). Note
 that a terminal disclaimer filed after the expiration of the reference patent is not
 effective to obviate a nonstatutory double patenting rejection. See
 Boehringer Ingelheim Int’l v. Barr Laboratories, 592 F.3d 1340,
 93 USPQ2d 1417 (Fed. Cir. 2010). See also MPEP § 1490 , subsection VI.A. A
 disclaimer filed in a reference patent that has an earlier expiration date and that
 disclaims the patentably indistinct claim(s) would have no impact on whether a
 nonstatutory double patenting rejection is proper in a patent that has, or an
 application for a patent that would have, a later expiration date. Eli Lilly
 & Co. v. Barr Labs., Inc., 251 F.3d 955, 967 n.5, 58 USPQ2d 1869,
 1878 n.5 (Fed. Cir. 2001)(“A patent owner cannot avoid double patenting by
 disclaiming the earlier patent.”).
 

 The use of a 37 CFR 1.131(a) affidavit in
 overcoming a double patenting rejection is inappropriate because the claim or claims
 in the application are being rejected over a patent which claims the rejected
 invention. In re Dunn, 349 F.2d 433, 146 USPQ 479 (CCPA 1965).
 37 CFR
 1.131(a) is inapplicable if the claims of the application and
 the patent are “directed to substantially the same invention.” It is also
 inapplicable if there is a lack of “patentable distinctness” between the claimed
 subject matter. Knell v. Muller, 174 USPQ 460 (Comm’r. Pat. 1971) (citing the court
 decisions in In re Ward, 236 F.2d 428, 111 USPQ 101 (CCPA 1956);
 In re Teague, 254 F.2d 145, 117 USPQ 284 (CCPA 1958); and
 In re Hidy, 303 F.2d 954, 133 USPQ 65 (CCPA 1962)). 
 

 A patentee or applicant may disclaim or dedicate to the public the
 entire term, or any terminal part of the term of a patent. 35 U.S.C. 253 .
 The statute does not provide for a terminal disclaimer of only a specified claim or
 claims. The terminal disclaimer must operate with respect to all claims in the
 patent. 
 

 The filing of a terminal disclaimer to obviate a rejection based on
 nonstatutory double patenting is not an admission of the propriety of the rejection.
 Quad Environmental Technologies Corp. v. Union Sanitary
 District, 946 F.2d 870, 20 USPQ2d 1392 (Fed. Cir. 1991). In
 Quad Environmental Technologies, the court indicated that the
 “filing of a terminal disclaimer simply serves the statutory function of removing the
 rejection of double patenting, and raises neither a presumption nor estoppel on the
 merits of the rejection.” 
 

 A terminal disclaimer filed to obviate a nonstatutory double
 patenting rejection is effective only with respect to the application identified in
 the disclaimer, unless by its terms it extends to continuing applications. If an
 appropriate provisional nonstatutory double patenting rejection is made in each of
 two or more pending applications, the examiner should follow the practice set forth
 in MPEP §
 804 , subsection I.B.1. and subsection VI. below.
 

 35 U.S.C.
 101 prevents two patents from issuing on the same invention.
 “Same invention” means identical subject matter. See, e.g., Miller v. Eagle
 Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d
 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114
 USPQ 330 (CCPA 1957). Claims that differ from each other (aside from minor
 differences in language, punctuation, etc.), whether or not the difference would have
 been obvious, are not considered to be drawn to the same invention for double
 patenting purposes under 35 U.S.C. 101 . In cases where the
 difference in claims would have been obvious, terminal disclaimers are effective to
 overcome nonstatutory double patenting rejections. Such terminal disclaimers must
 include a provision that the patent shall be unenforceable if it ceases to be
 commonly owned or enforced with the other application or patent. Note
 37 CFR
 1.321(c) and (d) . 37 CFR 1.321(d) 
 sets forth the requirements for a terminal disclaimer where the claimed invention
 resulted from activities undertaken within the scope of a joint research agreement.
 It should be emphasized that a terminal disclaimer cannot be used to overcome a prior
 art rejection under 35 U.S.C. 102 or
 103 . 
 

 A nonstatutory double patenting rejection may also be
 avoided if consonance between the originally restricted inventions is maintained in a
 divisional application. “ Section 121 shields claims
 against a double patenting challenge if consonance exists between the divided groups
 of claims and an earlier restriction requirement.” Geneva Pharmaceuticals
 Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1381, 68 USPQ2d 1865, 1871
 (Fed. Cir. 2003). “Consonance requires that the line of demarcation between the
 ‘independent and distinct inventions’ that prompted the restriction requirement be
 maintained ... Where that line is crossed the prohibition of the third sentence of
 Section 121 does not apply.” Symbol Techs, Inc. v. Opticon, Inc., 
 935 F.2d 1569, 1579, 19 USPQ2d 1241, 1249 (Fed. Cir. 1991) (quoting Gerber
 Garment Technology Inc. v. Lectra Systems Inc., 916 F.2d 683, 688, 16
 USPQ2d 1436, 1440 (Fed. Cir. 1990)). “However, even if such consonance is lost,
 double patenting does not follow if the requirements of Section 121 
 are met or if the claims are in fact patentably distinct … The purpose of
 Section
 121 is to accommodate administrative convenience and to protect
 the patentee from technical flaws based on this unappealable examination practice.”
 Applied Materials Inc. v. Advanced Semiconductor Materials, 98
 F.3d 1563, 1568, 40 USPQ2d 1481, 1484 (Fed. Cir. 1996).
 

 III. TERMINAL DISCLAIMER REQUIRED DESPITE REQUEST TO ISSUE ON COMMON ISSUE
 DATE Applicants are cautioned that reliance upon a common issue date
 cannot effectively substitute for the filing of one or more terminal disclaimers in
 order to overcome a proper nonstatutory double patenting rejection, particularly
 since a common issue date alone does not avoid the potential problems of dual
 ownership by a common assignee, or by parties to a joint research agreement, of
 patents to patentably indistinct inventions. In any event, the Office cannot ensure
 that two or more applications will have a common issue date.
 

 IV. DISCLAIMING MULTIPLE DOUBLE PATENTING REFERENCES If multiple conflicting patents and/or pending applications are
 applied in nonstatutory double patenting rejections made in a single application,
 then prior to issuance of that application, it is necessary to disclaim the terminal
 part of any patent granted on the application which would extend beyond the
 expiration date of each one of the conflicting patents and/or applications. A
 terminal disclaimer fee is required for each terminal disclaimer filed. To avoid
 paying multiple terminal disclaimer fees, a single terminal disclaimer based on
 common ownership may be filed, for example, in which the term disclaimed is based on
 all the conflicting, commonly owned nonstatutory double patenting references.
 Similarly, a single terminal disclaimer based on a joint research agreement may be
 filed, in which the term disclaimed is based on all the conflicting nonstatutory
 double patenting references.
 

 Each one of the commonly owned conflicting nonstatutory double
 patenting references must be included in the terminal disclaimer to avoid the problem
 of dual ownership of patents to patentably indistinct inventions in the event that
 the patent issuing from the application being examined ceases to be commonly owned
 with any one of the double patenting references that have issued or may issue as a
 patent. Note that 37 CFR 1.321(c)(3) requires that a terminal disclaimer for
 commonly owned conflicting claims “[i]nclude a provision that any patent granted on
 that application or any patent subject to the reexamination proceeding shall be
 enforceable only for and during such period that said patent is commonly owned with
 the application or patent which formed the basis for the judicially created double
 patenting.”
 

 Filing a terminal disclaimer including each one of the conflicting
 nonstatutory double patenting references is also necessary to avoid the problem of
 separate enforcement of patents to patentably indistinct inventions by parties to a
 joint research agreement. 37 CFR 1.321(d) sets forth the
 requirements for a terminal disclaimer where the claimed invention resulted from
 activities undertaken within the scope of a joint research agreement.
 

 V. REQUIREMENTS OF A TERMINAL DISCLAIMER A terminal disclaimer is a statement filed by an owner (in whole or
 in part) of a patent or a patent to be granted that is used to disclaim or dedicate a
 portion of the entire term of all the claims of a patent. The requirements for a
 terminal disclaimer are set forth in 37 CFR 1.321 . Sample forms of a
 terminal disclaimer, and guidance as to the filing and treatment of a terminal
 disclaimer, are provided in MPEP § 1490 . 
 

 VI. TERMINAL DISCLAIMERS REQUIRED TO OVERCOME NONSTATUTORY DOUBLE PATENTING
 REJECTIONS IN APPLICATIONS FILED ON OR AFTER JUNE 8, 1995 Public Law 103-465 (1994) amended 35 U.S.C.
 154(a)(2) to provide that any patent issuing on a utility or
 plant application filed on or after June 8, 1995 will expire 20 years from its actual
 filing date, or, if the application claims the benefit of an earlier filed
 application under 35 U.S.C. 120 , 121 , or
 365(c) , 20 years from the earliest filing date for which a
 benefit under 35
 U.S.C. 120 , 121 , or 365(c) is
 claimed. The Patent Law Treaties Implementation Act of 2012, Public Law 112-211,
 which implemented the provisions of the Hague Agreement, amended 35 U.S.C.
 154(a)(2) to delete “section 120, 121, or 365(c)” and to insert
 “section 120, 121, 365(c), or 386(c)” and 35 U.S.C. 154(a)(3) to delete “section 119,
 365(a), or 365(b)” and to insert “section 119, 365(a), 365(b), 386(a), or 386(b).”
 Therefore, any patent issuing on a continuing utility or plant application filed on
 or after June 8, 1995 will expire 20 years from the earliest filing date for which a
 benefit is claimed under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) , subject to the provisions
 of 35 U.S.C.
 154(b) and 156 (providing for certain patent
 term adjustments and extensions). Thus, situations will often arise in which two
 copending applications subject to a provisional double patenting rejection will have
 the same patent term filing date, and thus, potentially will have the same patent
 term. Note that a benefit claim under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) that meets the
 requirements of 37 CFR 1.78 determines the twenty year patent term for utility
 and plant applications filed on or after June 8, 1995. For patent term, it is not
 relevant if any claimed invention in the patent actually has 35 U.S.C.
 112(a) ) support in an earlier application and is therefore
 entitled to benefit of the earlier filing date for the purpose of avoiding prior art.
 See MPEP §
 804 , subsection I.B.1(a).
 

 There are at least two reasons for insisting upon a terminal
 disclaimer to overcome a nonstatutory double patenting rejection in an application
 subject to a 20-year term under 35 U.S.C. 154(a)(2) . First,
 35 U.S.C.
 154(b) includes provisions for patent term adjustment based
 upon prosecution delays during the application process. Thus, 35 U.S.C. 154 
 does not ensure that any patent issuing on a continuing utility or plant application
 filed on or after June 8, 1995 will necessarily expire 20 years from the earliest
 filing date for which a benefit is claimed under 35 U.S.C.
 120 , 121 , 365(c) , or
 386(c) . However, 35 U.S.C. 154(b)(2)(B) states
 that no patent the term of which has been disclaimed beyond a specified date may be
 adjusted under this section beyond the expiration date specified in the disclaimer.
 As the presence of a terminal disclaimer affects whether the patent is granted an
 adjustment, it is necessary that the terminal disclaimer be filed in the application
 in order to accurately determine whether the patent is entitled to a term adjustment.
 Second, 37 CFR
 1.321(c)(3) requires that a terminal disclaimer filed to
 obviate a nonstatutory double patenting rejection based on commonly owned conflicting
 claims include a provision that any patent granted on that application be enforceable
 only for and during the period that the patent is commonly owned with the application
 or patent which formed the basis for the rejection. 37 CFR 1.321(d) 
 sets forth the requirements for a terminal disclaimer where the claimed invention
 resulted from activities undertaken within the scope of a joint research agreement
 and limits enforcement of the patent only to that period when the patent and the
 reference application or patent are not separately enforced. These requirements serve
 to avoid the potential for harassment of an accused infringer by multiple parties
 with patents covering the same patentable invention. See, e.g., In re Van
 Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982). Not
 insisting upon a terminal disclaimer to overcome a nonstatutory double patenting
 rejection in an application subject to a 20-year term under 35 U.S.C.
 154(a)(2) would result in the potential for the problem that
 37 CFR
 1.321(c)(3) was promulgated to avoid. Further, as a terminal
 disclaimer is only effective in the application in which it is filed, it is necessary
 to require that the terminal disclaimer be filed in each application and/or patent
 that is subject to the common ownership requirement in order to provide complete
 notice to the public of this obligation.
 

 Accordingly, a terminal disclaimer under 37 CFR 1.321 is
 required in an application to overcome a nonstatutory double patenting rejection,
 even if the application was filed on or after June 8, 1995 and even if the
 application claims the benefit under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) of the filing date of the
 patent or application which forms the basis for the rejection. Examiners should
 respond to arguments that a terminal disclaimer under 37 CFR 1.321 
 should not be required in a continuing application filed on or after June 8, 1995 to
 overcome a nonstatutory double patenting rejection due to the change to
 35 U.S.C.
 154 by citing to this section of the MPEP. See
 Terminal Disclaimers Required to Overcome Judicially-Created Double
 Patenting Rejections in Utility and Plant Applications Filed on or After June 8,
 1995, 1202 OG 112 (September 30, 1997). See also AbbVie Inc. v.
 Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001
 (Fed. Cir. 2014).
 

 If a terminal disclaimer is filed in an application in
 which the claims are then canceled or otherwise shown to be patentably distinct from
 the reference claims, the terminal disclaimer may be withdrawn before issuance of the
 patent by filing a petition under 37 CFR 1.182 requesting
 withdrawal of the recorded terminal disclaimer. A terminal disclaimer may not be
 withdrawn after issuance of the patent. See MPEP § 1490 , subsection VIII, for a
 complete discussion of withdrawal of a terminal disclaimer.
 

 

 
 804.03 Commonly Owned Inventions of Different Inventive Entities;
 Non-Commonly Owned Inventions Subject to a Joint Research Agreement [R-07.2022]
 

 
 35 U.S.C. 102 
 Conditions for patentability; novelty. 

 [ Editor Note: Applicable to any patent
 application subject to the first inventor to file provisions of the AIA (see
 35
 U.S.C. 100 (note) ). See pre AIA 35 U.S.C. 102 for the
 law otherwise applicable .] 
 

 *****

 
 (b) Exceptions.-
 
 *****

 (2) DISCLOSURES APPEARING IN APPLICATIONS AND
 PATENTS.—A disclosure shall not be prior art to a claimed invention under
 subsection (a)(2) if—
 
 *****

 (C) the subject matter disclosed and the
 claimed invention, not later than the effective filing date of the
 claimed invention, were owned by the same person or subject to an
 obligation of assignment to the same person.
 

 
 

 
 

 (c) COMMON OWNERSHIP UNDER JOINT RESEARCH
 AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to
 have been owned by the same person or subject to an obligation of assignment to
 the same person in applying the provisions of subsection (b)(2)(C) if—
 
 (1) the subject matter disclosed was developed
 and the claimed invention was made by, or on behalf of, 1 or more parties
 to a joint research agreement that was in effect on or before the
 effective filing date of the claimed invention;
 

 (2) the claimed invention was made as a result
 of activities undertaken within the scope of the joint research
 agreement; and
 

 (3) the application for patent for the claimed
 invention discloses or is amended to disclose the names of the parties to
 the joint research agreement.
 

 
 

 
 *****

 

 
 Pre-AIA 35 U.S.C. 103 
 Conditions for patentability; non-obvious subject matter. 

 [ Editor Note: Not applicable to any patent
 application subject to the first inventor to file provisions of the AIA (see
 35
 U.S.C. 100 (note) ). See 35 U.S.C.
 103 for the law otherwise applicable .]
 

 *****

 
 (c)
 
 (1) Subject matter developed by another person, which
 qualifies as prior art only under one or more of subsections (e), (f),
 and (g) of section 102 of this
 title, shall not preclude patentability under this section where the
 subject matter and the claimed invention were, at the time the claimed
 invention was made, owned by the same person or subject to an obligation
 of assignment to the same person.
 

 (2) For purposes of this subsection, subject matter
 developed by another person and a claimed invention shall be deemed to
 have been owned by the same person or subject to an obligation of
 assignment to the same person if — 
 
 (A) the claimed invention was made by or on behalf of
 parties to a joint research agreement that was in effect on or
 before the date the claimed invention was made;
 

 (B) the claimed invention was made as a result of
 activities undertaken within the scope of the joint research
 agreement; and 
 

 (C) the application for patent for the claimed
 invention discloses or is amended to disclose the names of the
 parties to the joint research agreement. 
 

 
 

 (3) For purposes of paragraph (2), the term “joint research
 agreement” means a written contract, grant, or cooperative agreement
 entered into by two or more persons or entities for the performance of
 experimental, developmental, or research work in the field of the claimed
 invention.
 

 
 

 
 

 
 37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other
 applications. 

 *****

 
 (g) Applications or patents under reexamination naming different inventors
 and containing patentably indistinct claims. If an application or
 a patent under reexamination and at least one other application naming
 different inventors are owned by the same person and contain patentably
 indistinct claims, and there is no statement of record indicating that the
 claimed inventions were commonly owned or subject to an obligation of
 assignment to the same person on the effective filing date (as defined in
 §
 1.109 ), or on the date of the invention, as applicable,
 of the later claimed invention, the Office may require the applicant or
 assignee to state whether the claimed inventions were commonly owned or subject
 to an obligation of assignment to the same person on such date, and if not,
 indicate which named inventor is the prior inventor, as applicable. Even if the
 claimed inventions were commonly owned, or subject to an obligation of
 assignment to the same person on the effective filing date (as defined in
 §
 1.109 ), or on the date of the invention, as applicable,
 of the later claimed invention, the patentably indistinct claims may be
 rejected under the doctrine of double patenting in view of such commonly owned
 or assigned applications or patents under reexamination.
 

 
 *****

 

 
 37 CFR 1.131 Affidavit or declaration of prior invention or to disqualify commonly owned
 patent or published application as prior art. 

 *****

 
 (c) When any claim of an application or a patent under
 reexamination is rejected under 35 U.S.C. 103 as in effect
 on March 15, 2013, on a U.S. patent or U.S. patent application publication
 which is not prior art under 35 U.S.C. 102(b) as in
 effect on March 15, 2013, and the inventions defined by the claims in the
 application or patent under reexamination and by the claims in the patent or
 published application are not identical but are not patentably distinct, and
 the inventions are owned by the same party, the applicant or owner of the
 patent under reexamination may disqualify the patent or patent application
 publication as prior art. The patent or patent application publication can be
 disqualified as prior art by submission of: 
 
 (1) A terminal disclaimer in accordance with
 §
 1.321(c) ; and
 

 (2) An oath or declaration stating that the application or
 patent under reexamination and patent or published application are
 currently owned by the same party, and that the inventor named in the
 application or patent under reexamination is the prior inventor under
 35
 U.S.C. 104 as in effect on March 15, 2013.
 

 
 

 
 *****

 

 The guidance provided in this section pertains only to a
 double patenting analysis when the subject matter in the reference is excepted as prior
 art under 35
 U.S.C. 102(b)(2)(C) or the reference is disqualified as prior art
 under pre-AIA 35
 U.S.C. 103(c) . The guidance as to the application of the prior art
 exception in 35 U.S.C. 102(b)(2)(C) or the prior art disqualification in
 pre-AIA 35 U.S.C.
 103(c) in this section as well as MPEP §§ 717.02 et seq., 2146.02 , and 2154.02(c) is not determinative as to whether there is a
 common applicant, assignee, or owner in a double patenting analysis. Specifically, the
 “same person” requirement in 35 U.S.C. 102(b)(2)(C) and
 pre-AIA 35 U.S.C.
 103(c) that “the subject matter disclosed and the claimed
 invention” be “owned by the same person or subject to an obligation of assignment to the
 same person” strictly requires that each owner be the same. For purposes of whether
 there is a common applicant in a double patenting analysis, the examiner will need to
 determine the ownership at the time of examination. This analysis is different from the
 analysis required by 35 U.S.C. 102(b)(2)(C) , which
 requires determining ownership not later than the effective filing date of the claimed
 invention, and pre-AIA
 35 U.S.C. 103(c) , which requires determining ownership at the time
 the claimed invention was made.
 

 I. DOUBLE PATENTING Claims in commonly owned applications of different inventive
 entities may be rejected on the ground of double patenting. This is in accordance
 with existing case law and prevents an organization from obtaining two or more
 patents with different expiration dates covering nearly identical subject matter. See
 In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963) (the
 doctrine is well established that claims in different applications need be more than
 merely different in form or content and that patentable distinction must exist
 to entitle applicants to a second patent); see also In re
 Christensen, 330 F.2d 652, 141 USPQ 295 (CCPA 1964). 
 

 Claims may also be rejected on the grounds of nonstatutory double
 patenting in certain non-commonly owned applications that claim inventions resulting
 from activities undertaken within the scope of a joint research agreement as defined
 in 35
 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) . This
 prevents the parties to the joint research agreement from obtaining two or more
 patents with different expiration dates covering nearly identical subject matter. 
 

 Nonstatutory double patenting rejections can be overcome in certain
 circumstances by disclaiming, pursuant to the provisions of 37 CFR
 1.321(c) , the terminal portion of the term of the later patent and
 including in the disclaimer a provision that the patent shall be enforceable only for
 and during the period the patent is commonly owned with the application or patent
 which formed the basis for the rejection, thereby eliminating the problem of
 extending patent life. Nonstatutory double patenting rejections can also be overcome
 in cases subject to a joint research agreement, under certain circumstances, by
 disclaiming the terminal portion of the term of the later patent and including in the
 disclaimer the provisions of 37 CFR 1.321(d) .
 

 See MPEP § 717.02 et seq. for information pertaining to establishment of common
 ownership and the existence of a joint research agreement pursuant to
 35
 U.S.C. 102(c) , as well as examination practice relating to
 35
 U.S.C. 102(b)(2)(C) . See MPEP § 2146 et seq. for information pertaining to establishment of common
 ownership and the existence of a joint research agreement pursuant to
 pre-AIA 35
 U.S.C. 103(c) , as well as examination practice relating to
 pre-AIA 35
 U.S.C. 103(c) .
 

 II. IDENTIFYING COMMONLY OWNED AND NON-COMMONLY OWNED INVENTIONS SUBJECT TO A
 JOINT RESEARCH AGREEMENT 

 A. Common Ownership by the Same Person(s) or Organization(s) Applications or patents are “commonly owned” pursuant to
 35
 U.S.C. 102(b)(2)(C) if they were wholly or entirely owned by
 the same person(s), or organization(s)/business entity(ies) not later than the
 effective filing date of the claimed invention. Applications or patents are
 “commonly owned” pursuant to pre-AIA 35 U.S.C. 103(c)(1) if
 they were wholly or entirely owned by the same person(s), or
 organization(s)/business entity(ies) at the time the claimed invention was made.
 If the person(s) or organization(s) owned less than 100 percent of the subject
 matter which would otherwise be prior art to the claimed invention, or less than
 100 percent of the claimed invention, then common ownership would not exist.
 Common ownership requires that the person(s) or organization(s)/business
 entity(ies) own 100 percent of the subject matter and 100 percent of the claimed
 invention. See MPEP § 717.02(a) , subsection I,
 and MPEP §
 2146.02 for a detailed definition of common ownership.
 35
 U.S.C. 102(b)(2)(C) provides that disclosures shall not be
 prior art under 35 U.S.C. 102(a)(2) if the
 subject matter disclosed and the claimed invention, not later than the effective
 filing date of the claimed invention, were owned by the same person or subject to
 an obligation of assignment to the same person. If the prior art exception under
 35
 U.S.C. 102(b)(2)(C) is properly invoked, the excepted
 subject matter disclosed in the commonly owned or joint research agreement
 reference is not available as prior art under 35 U.S.C.
 102(a)(2) for both anticipation and obviousness rejections
 and also may not be used as a secondary teaching in a nonstatutory double
 patenting rejection. See MPEP § 717.02(a) for more
 information on invoking this prior art exception and MPEP §
 717.02(b) for more information on evaluating when the
 exception applies and is properly invoked. 
 

 Under pre-AIA 35 U.S.C. 103(c)(1) ,
 two inventions of different inventive entities come within the common ownership
 provisions when:
 

 
 (A) the later invention is not anticipated by the earlier
 invention under 35 U.S.C. 102 ; 
 

 (B) the earlier invention qualifies as prior art for purposes
 of obviousness under 35 U.S.C. 103 against
 the later invention only under subsections (f) or (g) of 35 U.S.C.
 102 , or under 35 U.S.C. 102(e) for
 applications pending on or after December 10, 2004, for reexamination
 proceedings in which the patent under reexamination was granted on or after
 December 10, 2004, and for reexamination proceedings in which the patent
 under reexamination was filed on or after November 29, 1999; and 
 

 (C) the inventions were, at the time the later invention was
 made, owned by the same person or subject to an obligation of assignment to
 the same person. 
 

 B. Non-Commonly Owned Inventions Subject to a Joint Research
 Agreement The Cooperative Research and Technology Enhancement Act of 2004
 (CREATE Act) (Public Law 108-453; 118 Stat. 3596 (2004)), which amended
 pre-AIA 35
 U.S.C. 103(c) , was enacted on December 10, 2004. The CREATE
 Act permits an applicant or patentee, who is a party to a joint research
 agreement, to disqualify prior art that is applied in a rejection under
 pre-AIA 35
 U.S.C. 103(a) and that is otherwise available as prior art
 only under pre-AIA 35 U.S.C. 102(e) , (f) or
 (g) . Congress recognized that this amendment to
 pre-AIA 35
 U.S.C. 103(c) would result in situations in which there
 would be double patenting between patents or applications not owned by the same
 party. See H.R. Rep. No. 108-425, at 5-6 (2003).
 

 Pursuant to the CREATE Act, non-commonly owned applications or
 patents that are subject to a joint research agreement may be treated as if they
 are “commonly owned,” i.e., owned or subject to assignment by the same person, for
 the purposes of determining obviousness if certain conditions are met. See
 pre-AIA 35
 U.S.C. 103(c)(2) . The term “joint research agreement” means
 a written contract, grant, or cooperative agreement entered into by two or more
 persons or entities for the performance of experimental, developmental, or
 research work in the field of the claimed invention. See pre-AIA 35 U.S.C.
 103(c)(3) . See also MPEP § 2146.02 .
 

 Two inventions come within the provisions of pre-AIA 35 U.S.C.
 103(c)(2) , for pre-AIA applications pending on or after
 December 10, 2004, and for reexamination proceedings in which the patent under
 reexamination issued after December 10, 2004 and is subject to pre-AIA law,
 when:
 

 
 (A) the later invention is not anticipated by the earlier
 invention under 35 U.S.C. 102 ;
 

 (B) the claimed invention was made by or on behalf of parties
 to a joint research agreement that was in effect on or before the date the
 claimed invention was made;
 

 (C) the claimed invention was made as a result of activities
 undertaken within the scope of the joint research agreement; and
 

 (D) the application for patent for the claimed invention
 discloses or is amended to disclose the names of the parties to the joint
 research agreement.
 

 
 The joint research agreement provisions of
 35
 U.S.C. 102(c) generally track those of the Cooperative
 Research and Technology Enhancement Act of 2004 (CREATE Act). See
 MPEP §
 2146.01 . The major differences between 35 U.S.C.
 102(c) and the CREATE Act are the following: 
 

 
 A. 35 U.S.C. 102(c) is
 keyed to the effective filing date of the claimed invention, while the
 CREATE Act ( pre-AIA 35 U.S.C.
 103(c) ) focuses on the date that the claimed invention
 was made; and 
 

 B. The 2004 CREATE Act provisions
 ( pre-AIA 35 U.S.C. 103(c) ) only apply to obviousness
 rejections and not to anticipation and double patenting rejections. This
 follows from the fact that the CREATE Act merely provides that a reference
 may not be applied to support obviousness rejections under pre-AIA 35 U.S.C.
 103(a) , while the prior art exceptions of
 35 U.S.C. 102(b) 
 establish that a reference is not prior art for any purpose. 
 

 C. Timing of Double Patenting Rejections The examiner should make both a double patenting rejection based
 on common ownership and a rejection based on prior art when the facts support both
 rejections. Until applicant has established that a reference is excepted as prior
 art under the joint research agreement defined in 35 U.S.C.
 102(c) or disqualified as prior art under the joint research
 agreement defined in pre-AIA 35 U.S.C. 103(c)(2) and
 (3) , the examiner should NOT apply a double patenting
 rejection based on a joint research agreement. See MPEP §§
 706.07(a) , 717.02(c) , and 804 , subsection VI, for
 information regarding when an Office action that includes a new subsequent double
 patenting rejection based upon a reference subject to a joint research agreement
 defined in 35 U.S.C. 102(c) and
 pre-AIA 35
 U.S.C. 103(c)(2) and (3) may be made final. 
 

 III. DETERMINING INVENTION PRIORITY A determination of priority is not required when two inventions are
 commonly owned as set forth in 35 U.S.C. 102(b)(2)(C) or
 pre-AIA 35
 U.S.C. 103(c)(1) .
 

 Pursuant to 37 CFR 1.78(g) , where an
 application or a patent under reexamination and at least one other application by
 different inventive entities are owned by the same party and contain conflicting
 claims, the examiner may require the assignee to state whether the claimed inventions
 come within the provisions of 35 U.S.C. 102(b)(2)(C) (i.e.,
 indicate whether common ownership or an obligation of assignment to the same person
 existed on or before the effective filing date) or pre-AIA 35 U.S.C.
 103(c) (i.e., indicate whether common ownership or an
 obligation of assignment to the same person existed at the time the later invention
 was made). For example, if the assignee states that the provisions of
 pre-AIA 35
 U.S.C. 103(c) do not apply to the conflicting claimed
 inventions, the assignee is required to indicate which named inventor is the prior
 inventor. Form paragraphs 8.27.aia , 8.27.fti ,
 8.28.aia , 8.28.fti ,
 8.28.01.aia and 8.28.01.fti may be used to
 require the applicant to identify the prior inventor under 37 CFR
 1.78(g) or to take certain actions. In order to avoid
 abandonment, the assignee must comply with the requirements under 37 CFR
 1.78(g) unless the conflicting claims are eliminated in all but
 one application. If, however, the two inventions come within the provisions of
 35
 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) , it is
 not necessary to determine priority of invention since the earlier invention cannot
 be used as prior art against the later invention and since double patenting
 rejections can be used to ensure that the patent terms expire together. Accordingly,
 a response to a requirement under 37 CFR 1.78(g) which states that
 the inventions of different inventive entities come within the provisions of
 35
 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) is
 complete.
 

 Before making a requirement to identify the prior inventor in an
 application subject to pre-AIA 35 U.S.C. 102(f) or
 (g) , and threatening to hold the application abandoned if the
 statement is not made by the assignee, the examiner must make sure that claims in the
 application under examination or patent under reexamination and the claims in the
 other application(s) are conflicting as defined in MPEP § 804 . See
 In re Rekers, 203 USPQ 1034 (Comm’r Pat. 1979). 
 

 In some situations the prosecution file histories may reflect which
 invention is the prior invention, e.g., by reciting that one invention is an
 improvement of the other invention. See Margolis v. Banner, 
 599 F.2d 435, 202 USPQ 365 (CCPA 1979) (Court refused to uphold a holding of
 abandonment for failure to name the prior inventor since the record showed what was
 invented by the different inventive entities and who was the prior inventor.). 
 

 An application in which a requirement to name the prior inventor has
 been made will not be held abandoned where a timely response indicates that the other
 application is abandoned or will be permitted to become abandoned and will not be
 filed as a continuing application. Such a response will be considered sufficient
 since it renders the requirement to identify the prior inventor moot because the
 existence of conflicting claims is eliminated. Also, any conflict between two or more
 pending applications can be avoided by abandoning the applications and filing a
 continuation-in-part application merging the conflicting inventions into a single
 application.
 

 IV. REJECTIONS UNDER 35 U.S.C. 102 AND 103 AND DOUBLE PATENTING If it is determined that the provisions of 35 U.S.C.
 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) do NOT
 apply to a reference disclosure, the examiner should make (A) any appropriate double
 patenting rejection(s), and (B) the appropriate prior art rejection(s) under
 35
 U.S.C. 102 and/or 35 U.S.C. 103 in the application
 being examined. See the charts in MPEP § 804 . Rejections under
 35
 U.S.C. 102 or 35 U.S.C. 103 cannot be obviated
 solely by filing a terminal disclaimer.
 

 If the prior art exception under 35 U.S.C.
 102(b)(2)(C) is properly invoked, the excepted subject matter
 disclosed in the commonly owned or joint research agreement reference is not
 available as prior art under 35 U.S.C. 102(a)(2) for an
 anticipation and/or obviousness rejection, and also may not be used as a secondary
 reference in a nonstatutory double patenting rejection. However, the claims of a
 reference excepted under 35 U.S.C. 102(b)(2)(C) may still
 be the basis for a double patenting rejection, whether statutory or nonstatutory. 
 

 If the prior art disqualification under
 pre-AIA 35
 U.S.C. 103(c) is properly invoked, the excepted subject matter
 disclosed in the commonly owned or joint research agreement reference is not
 available as prior art under pre-AIA 35 U.S.C. 103(a) for an
 obviousness rejection. The prior art disqualification under pre-AIA 35 U.S.C.
 103(c) does not apply to subject matter that qualifies as
 anticipatory prior art under pre-AIA 35 U.S.C. 102 and also
 cannot be used to overcome a double patenting rejection, whether statutory or
 nonstatutory.
 

 Form paragraphs 8.27.aia , 8.27.fti ,
 8.28.aia , 8.28.fti ,
 8.28.01.aia , and 8.28.01.fti may be used to
 require the applicant to resolve issues that may arise in applications that have
 different inventors but a common assignee and claim the same or patentably indistinct
 inventions.
 

 ¶ 8.27.aia Different Inventors, Common Assignee, Same Invention, Examined
 under First Inventor To File (FITF) Provisions of the AIA
 

 Claim [1] directed to the same invention as that of
 claim [2] of commonly assigned [3] . Under 35 U.S.C. 101 , more than
 one patent may not be issued on the same invention.
 

 The USPTO may not institute a derivation proceeding in the
 absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not
 institute a derivation proceeding between applications or a patent and an application having
 common ownership (see 37 CFR 42.411 ). The applicant should amend
 or cancel claims such that the reference and the instant application no longer contain claims
 directed to the same invention.
 

 Examiner Note:
 
 1. Form paragraph 7.03.aia must be included in any
 Office action that contains this paragraph.
 

 2. In bracket 3, insert the U.S. patent number or the
 copending application number.
 

 3. The claims listed in brackets 1 and 2 must be for the same
 invention. If one invention would have been obvious in view of the other, do not use
 this form paragraph; see form paragraph 8.28.aia .
 

 4. A provisional or actual statutory double patenting
 rejection should also be made using form paragraph 8.31 or 8.32 .
 

 5. If the commonly assigned application or patent is prior
 art under 35
 U.S.C. 102(a)(2) , a rejection may also be made using form
 paragraph 7.15.01.aia or 7.15.02.aia .
 
 
 

 ¶ 8.27.fti Different Inventors, Common Assignee, Same Invention, Examined
 Under Pre-AIA (First to Invent) Provisions
 

 Claim [1] directed to the
 same invention as that of claim [2] of commonly assigned [3] . The
 issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) 
 of this single invention must be resolved.
 

 The U.S. Patent and Trademark Office normally will not institute an
 interference between applications or a patent and an application having common ownership (see
 MPEP Chapter
 2300 ). Either the applicant must amend or cancel claims such that
 the reference and the instant application no longer contain claims directed to the same
 invention, or the assignee must state which entity is the prior inventor of the commonly
 claimed subject matter. A terminal disclaimer has no effect in this situation since the basis
 for refusing more than one patent is priority of invention under pre-AIA 35 U.S.C. 102(f) or
 (g) and not an extension of monopoly.
 

 Failure to comply with this
 requirement will result in a holding of abandonment of this application.
 

 Examiner Note:
 
 1. Form paragraph 7.03.fti must be included in any
 Office action that contains this paragraph.
 

 2. In bracket 3, insert the U.S.
 patent number or the copending application number.
 

 3. The claims listed in brackets 1
 and 2 must be for the same invention. If one invention would have been obvious in view
 of the other, do not use this form paragraph; see form paragraph
 8.28.fti .
 

 4. A provisional or actual
 statutory double patenting rejection should also be made using form paragraph
 8.31 or
 8.32 .
 

 5. If the commonly assigned application or patent is prior art under
 pre-AIA 35 U.S.C.
 102(e) , a rejection may also be made using form paragraph
 7.15.01.fti or 7.15.02.fti . 
 
 
 

 ¶ 8.28.aia Different Inventors, Common Assignee, Inventions Not Patentably
 Distinct, No Evidence of Common Ownership Not Later Than the Effective Filing Date of the
 Claimed Invention, Examined Under First Inventor to File (FITF) Provisions of the
 AIA
 

 Claim [1] directed to an invention not patentably distinct
 from claim [2] of commonly assigned [3] . Specifically,
 [4] .
 

 Examiner Note:
 
 1. This form paragraph should be used when the application
 being examined is commonly assigned with an application or patent that includes claims
 patentably indistinct from those in the present application, but it has not been
 established that they were commonly owned or deemed to have been commonly owned not
 later than the effective filing date under 35 U.S.C. 100(i) of the claimed
 invention. See 35 U.S.C. 102(b)(2)(C) and
 35 U.S.C.
 102(c) .
 

 2. A rejection under 35 U.S.C.
 102(a)(2) / 103 using form paragraph
 7.21.aia ,
 7.21.01.aia or 7.21.02.aia also should be made,
 as appropriate.
 

 3. In bracket 3, insert the number of the patent or
 application that includes claims patentably indistinct from those in the present
 application.
 

 4. A nonstatutory double patenting rejection should also be
 included in the action using one of form paragraphs 8.34 to 8.37 .
 

 5. In bracket 4, explain why the claims in the present
 application and the reference patent or application are patentably indistinct.
 

 6. Form paragraph 8.28.01.aia MUST follow this
 paragraph.
 
 
 

 ¶ 8.28.fti Different Inventors, Common Assignee, Inventions Not Patentably
 Distinct, No Evidence of Common Ownership at Time of Invention, Examined Under Pre-AIA (First
 To Invent) Provisions
 

 Claim [1] directed to an
 invention not patentably distinct from claim [2] of commonly assigned
 [3] . Specifically, [4] .
 

 Examiner Note:
 
 1. This form paragraph should be used when the application being
 examined is commonly assigned with an application or patent that includes claims
 patentably indistinct from those in the present application, but there is no indication
 that they were commonly assigned at the time the invention was made.
 

 2. A rejection under pre-AIA 35 U.S.C.
 102(e) / 103(a) using form paragraph
 7.21.fti ,
 7.21.01.fti or 7.21.02.fti also should be made,
 as appropriate. Rejections under pre-AIA 35 U.S.C.
 102(e) / 103(a) should not be made or
 maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior
 art in a pre-AIA 35
 U.S.C. 103(a) rejection.
 

 3. In bracket 3, insert the number
 of the reference patent or application.
 

 4. A nonstatutory double patenting
 rejection should also be included in the action using one of form paragraphs
 8.34 to
 8.37 .
 

 5. In bracket 4, explain why the
 claims in the present application and the reference patent or application are patentably
 indistinct.
 

 6. Form paragraph
 8.28.01.fti MUST follow this paragraph.
 
 
 

 ¶ 8.28.01.aia Advisory Information Relating to Form Paragraph
 8.28.aia
 

 The U.S. Patent and Trademark Office may not institute a
 derivation proceeding in the absence of a timely filed petition. The USPTO normally will not
 institute a derivation proceeding between applications or a patent and an application having
 common ownership (see 37 CFR 42.411 ). Commonly assigned
 [1] , discussed above, may form the basis for a rejection of the noted claims
 under 35 U.S.C.
 102 or 103 if the commonly assigned case
 qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably
 indistinct inventions were not commonly owned or deemed to be commonly owned not later than
 the effective filing date under 35 U.S.C. 100(i) of the claimed invention. 
 

 In order for the examiner to resolve this issue the applicant or
 patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and
 37 CFR
 1.104(c)(4)(i) to the effect that the subject matter and the claimed
 invention, not later than the effective filing date of the claimed invention, were owned by
 the same person or subject to an obligation of assignment to the same person. Alternatively,
 the applicant or patent owner can provide a statement under 35 U.S.C.
 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that
 the subject matter was developed and the claimed invention was made by or on behalf of one or
 more parties to a joint research agreement that was in effect on or before the effective
 filing date of the claimed invention, and the claimed invention was made as a result of
 activities undertaken within the scope of the joint research agreement; the application must
 also be amended to disclose the names of the parties to the joint research agreement.
 

 A showing that the inventions were commonly owned or deemed to
 be commonly owned not later than the effective filing date under 35 U.S.C.
 100(i) of the claimed invention will preclude a rejection under
 35 U.S.C.
 102 or 103 based upon the commonly assigned case.
 Alternatively, applicant may take action to amend or cancel claims such that the applications,
 or the patent and the application, no longer contain claims directed to patentably indistinct
 inventions.
 

 Examiner Note:

 This form paragraph should follow form paragraph
 8.28.aia and
 should only be used ONCE in an Office action.
 

 

 ¶ 8.28.01.fti Advisory Information Relating to Form Paragraph
 8.28.fti
 

 The U.S. Patent and Trademark Office normally will not institute an
 interference between applications or a patent and an application of common ownership (see
 MPEP Chapter
 2300 ). Commonly assigned [1] , discussed above, may form
 the basis for a rejection of the noted claims under pre-AIA 35 U.S.C. 102 or 103(a) if the commonly
 assigned case qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f) or (g) and
 the patentably indistinct inventions were not commonly owned at the time the claimed invention
 in this application was made. In order for the examiner to resolve this issue the assignee
 can, under pre-AIA 35 U.S.C.
 103(c) and 37 CFR 1.78(g) , either show that the
 patentably indistinct inventions were commonly owned at the time the claimed invention in this
 application was made, or name the prior inventor of the subject matter at issue.
 

 A showing that the inventions were commonly owned at the time the claimed
 invention in this application was made will preclude a rejection under pre-AIA 35 U.S.C. 103(a) 
 based upon the commonly assigned application that qualifies as a reference under
 pre-AIA 35 U.S.C. 102(e),
 (f) or (g) . Alternatively, applicant may take action to amend or cancel
 claims such that the applications, or the patent and the application, no longer contain claims
 directed to patentably indistinct inventions.
 

 Examiner Note:

 This form paragraph should follow
 form paragraph 8.28.fti and should only be used ONCE in an Office
 action.
 

 

 ¶ 7.15.aia Rejection, 35 U.S.C. 102(a)(1)/102(a)(2)

 Claim(s) [1] is/are rejected under 35 U.S.C. 102 [2] as being [3] by [4] . 
 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 

 2. In bracket 1, insert the claim numbers which are
 under rejection.
 

 3. In bracket 2, insert either “(a)(1)” or “(a)(2)” or both. If paragraph
 (a)(2) of 35 U.S.C. 102 is applicable, use
 form paragraph 7.15.01.aia , 7.15.02.aia or
 7.15.03.aia where applicable.
 

 4. In bracket 3, insert either --clearly anticipated--
 or --anticipated-- with an explanation at the end of the paragraph. 
 

 5. In bracket 4, insert the prior art relied
 upon.
 

 6. This rejection must be preceded
 either by form paragraph 7.07.aia and form paragraphs
 7.08.aia ,
 and 7.12.aia 
 as appropriate, or by form paragraph 7.103 .
 

 7. For applications claiming priority to, or the
 benefit of, an application filed before March 16, 2013, this form paragraph must be
 preceded by form paragraph 7.06 .
 
 
 

 ¶ 7.15.fti Rejection, Pre-AIA 35 U.S.C. 102(a), (b) Patent or Publication,
 and (g)
 

 Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102 [2] as being [3] by [4] .
 

 Examiner Note:
 
 1. In bracket 2, insert the appropriate paragraph letter or letters
 of pre-AIA 35 U.S.C.
 102 in parentheses. If paragraph (e) of pre-AIA 35 U.S.C.
 102 is applicable, use form paragraph 7.15.01.fti ,
 7.15.02.fti or 7.15.03.fti .
 

 2. In bracket 3, insert either --clearly anticipated-- or
 --anticipated-- with an explanation at the end of the paragraph. 
 

 3. In bracket 4, insert the prior art relied upon.

 4. This rejection must be preceded either by form paragraph
 7.07.fti 
 and form paragraphs 7.08.fti , 7.09.fti , and
 7.14.fti 
 as appropriate, or by form paragraph 7.103 .
 

 5. If pre-AIA 35 U.S.C. 102(e) is also
 being applied, this form paragraph must be followed by either form paragraph
 7.15.01.fti , 7.15.02.fti or
 7.15.03.fti .
 

 6. For applications with an actual filing date on or after March 16,
 2013, that claim priority to, or the benefit of, an application filed before March 16,
 2013, this form paragraph must be preceded by form paragraph 7.06 .
 
 
 

 ¶ 7.19.fti Rejection, pre-AIA 35 U.S.C. 102(f), Applicant Not the
 Inventor
 

 Claim [1] is/are rejected under pre-AIA 35 U.S.C. 102(f) 
 because the applicant did not invent the claimed subject matter. [2] 

 Examiner Note:
 
 1. This paragraph must be preceded either by paragraphs
 7.07.fti 
 and 7.13.fti 
 or by paragraph 7.103 .
 

 2. In bracket 2, insert an explanation of the supporting evidence establishing that
 applicant was not the inventor. See MPEP § 2137 .
 
 
 

 ¶ 7.21.aia Rejection, 35 U.S.C. 103

 Claim [1] is/are rejected under 35 U.S.C. 103 
 as being unpatentable over [2] . 
 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 
 

 2. This form paragraph must be preceded by either form
 paragraph 7.20.aia or form paragraph 7.103 .
 

 3. An explanation of the rejection must follow this form paragraph.
 See MPEP §
 2144 .
 

 4. If this rejection is a provisional 35 U.S.C.
 103 rejection based upon a copending application that would
 constitute prior art under 35 U.S.C. 102(a)(2) if patented or
 published, use form paragraph 7.21.01.aia instead of this paragraph. 
 

 5. In bracket 1, insert the claim numbers which are
 under rejection.
 

 6. In bracket 2, insert the prior art relied
 upon.
 

 7. For applications claiming priority to, or the benefit
 of, an application filed before March 16, 2013, this form paragraph must be preceded by
 form paragraph 7.06 .
 
 
 

 ¶ 7.21.fti Rejection, Pre-AIA 35 U.S.C. 103(a)

 Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) 
 as being unpatentable over [2] . 
 

 Examiner Note:
 
 1. This paragraph must be preceded by either form
 paragraph 7.20.fti or form paragraph 7.103 .
 

 2. An explanation of the rejection must follow this form paragraph.
 See MPEP §
 2144 .
 

 3. If the rejection relies upon prior art under pre-AIA 35 U.S.C.
 102(e) , use pre-AIA 35 U.S.C. 102(e) as amended
 by the American Inventors Protection Act to determine the reference’s prior art date,
 unless the reference is a U.S. patent issued directly, or indirectly, from an
 international application which has an international filing date prior to November 29,
 2000. In other words, use pre-AIPA 35 U.S.C.
 102(e) only if the reference is a U.S. patent issued directly
 or indirectly from either a national stage of an international application (application
 under 35 U.S.C.
 371 ) which has an international filing date prior to November 29,
 2000 or a continuing application claiming benefit under 35 U.S.C. 120 ,
 121 or 365(c) to an international
 application having an international filing date prior to November 29, 2000. See the
 Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the
 determination of the reference’s 35 U.S.C. 102(e) date. 
 

 4. If the applicability of this rejection (e.g., the availability
 of the prior art as a reference under pre-AIA 35 U.S.C. 102(a) or
 pre-AIA 35 U.S.C.
 102(b) ) prevents the reference from being disqualified under
 pre-AIA 35 U.S.C.
 103(c) , form paragraph 7.20.01.fti must follow this form
 paragraph. 
 

 5. If this rejection is a provisional pre-AIA 35 U.S.C.
 103(a) rejection based upon a copending application that would
 comprise prior art under pre-AIA 35 U.S.C. 102(e) if patented
 or published, use form paragraph 7.21.01.fti instead of this paragraph. 
 

 6. In bracket 1, insert the claim numbers which are
 under rejection.
 

 7. In bracket 2, insert the prior art relied
 upon.
 
 
 

 Further, if a copending application has an effectively filed date
 under 35
 U.S.C. 102(d) that is earlier than the effective filing date of
 claims under examination, the examiner should consider making a provisional rejection
 based on the copending application, under 35 U.S.C.
 102(a)(2) , using form paragraph 7.15.01.aia or under
 35
 U.S.C. 103 using form paragraph 7.21.01.aia . Similarly for
 pre-AIA applications, rejections should be considered under pre-AIA 35 U.S.C.
 102(e) or 102(e) / 103(a) , using
 form paragraph 7.15.01.fti or 7.21.01.fti . Rejections under
 35 U.S.C.
 102 or 103 cannot be obviated solely by
 the filing of a terminal disclaimer.
 

 ¶ 7.15.01.aia Provisional Rejection, 35 U.S.C. 102(a)(2) - Common Assignee,
 Common Applicant, or At Least One Common (Joint) Inventor
 

 Claim(s) [1] is/are provisionally rejected under
 35 U.S.C.
 102(a)(2) as being anticipated by copending Application No.
 [2] which has a common [3] with the instant application.
 

 The copending application would constitute prior art under
 35 U.S.C.
 102(a)(2) if published under 35 U.S.C. 122(b) or patented under
 35 U.S.C.
 151 . This provisional rejection under 35 U.S.C.
 102(a)(2) is based upon a presumption of future publication or patenting
 of the copending application. [4] .
 

 This provisional rejection under 35 U.S.C.
 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the
 subject matter disclosed in the copending application was obtained directly or indirectly from
 the inventor or a joint inventor of this application and is thus not prior art in accordance
 with 35 U.S.C.
 102(b)(2)(A) ; (2) a showing under 37 CFR 1.130(b) of a prior public
 disclosure under 35 U.S.C. 102(b)(2)(B) ; or (3) a statement pursuant to
 35 U.S.C.
 102(b)(2)(C) establishing that, not later than the effective filing date
 of the claimed invention, the subject matter disclosed in the copending application and the
 claimed invention were either owned by the same person or subject to an obligation of
 assignment to the same person or subject to a joint research agreement. 
 

 This rejection may not be overcome by the filing of a terminal
 disclaimer. See In re Bartfeld , 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir.
 1991).
 

 Examiner Note:
 
 1. This form paragraph should only be used in an application filed
 on or after March 16, 2013, where the claims are being examined under 35 U.S.C.
 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 
 

 2. This form paragraph is used to provisionally reject over a
 copending application that discloses the claimed invention and would constitute prior
 art under 35
 U.S.C. 102(a)(2) if published under 35 U.S.C. 122 or
 patented. The copending application must have either a common assignee, common applicant
 ( 35 U.S.C.
 118 ) or at least one common (joint) inventor.
 

 3. 35 U.S.C.
 102(a)(2) may be applied if the reference names another inventor
 (i.e., a different inventive entity) and is one of the following: 
 a U.S. patent granted under 35 U.S.C. 151 
 that has an effectively filed date earlier than the application;
 

 a U.S. Patent Application Publication published under
 35 U.S.C.
 122(b) that has an effectively filed date earlier than the
 effective filing date of the claimed invention; or
 

 a WIPO publication of an international application (PCT) or
 international design application that designates the United States where the WIPO
 publication has an effectively filed date earlier than the effective filing date of
 the claimed invention. 
 If any of the three types of prior art documents under
 35
 U.S.C. 102(a)(2) issued or was published before the effective
 filing date of the claimed invention under examination, then the prior art document
 is also applicable under 35 U.S.C. 102(a)(1) . 
 

 
 
 

 4. If the claims would have been obvious over the invention
 disclosed in the other copending application, use form paragraph
 7.21.01.aia .
 

 5. In bracket 1, insert claim number(s) under rejection.

 6. In bracket 2, insert the application number.

 7. In bracket 3, insert --assignee--, --applicant--, or --joint
 inventor--.
 

 8. In bracket 4, provide an appropriate explanation of the
 examiner’s position on anticipation.
 

 9. Under 35 U.S.C. 101 , two patents are not
 permitted to issue on identical subject matter. Any claims in the instant application
 directed to the same invention claimed in the reference should be provisionally rejected
 using form paragraphs 8.30
 and 8.32 . Additionally, the applicant should be required to
 amend or cancel claims such that the applied reference and the instant application no
 longer contain claims directed to the same invention using form paragraph
 8.27.aia .
 

 10. Any claims in the instant application that are directed to
 subject matter that is not patentably distinct from an invention claimed in the
 reference should be rejected (or provisionally rejected if the reference has not yet
 issued as a patent) on the grounds of nonstatutory double patenting using form paragraph
 8.33 and at
 least one of form paragraphs 8.34 - 8.39 .
 

 11. For applications claiming priority to, or the benefit of, an
 application filed before March 16, 2013, this form paragraph must be preceded by form
 paragraph 7.06 .
 
 
 

 ¶ 7.15.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 102(e) - Common
 Assignee, Common Applicant, or At Least One Common (Joint) Inventor
 

 Claim(s) [1] is/are provisionally rejected under
 pre-AIA 35 U.S.C.
 102(e) as being anticipated by copending Application No. [2]
 which has a common [3] with the instant application.
 

 The copending application would constitute prior art under
 pre-AIA 35 U.S.C.
 102(e) if published under 35 U.S.C. 122(b) or patented. This
 provisional rejection under pre-AIA 35 U.S.C. 102(e) is based upon a presumption of future
 publication or patenting of the copending application. [4] .
 

 This provisional rejection under pre-AIA 35 U.S.C. 102(e) might be overcome
 either by a showing under 37
 CFR 1.132 that any invention disclosed but not claimed in the copending
 application was derived from the inventor of this application and is thus not the invention
 “by another,” or by an appropriate showing under 37 CFR 1.131(a) . 
 

 This rejection may not be overcome by the filing of a terminal
 disclaimer. See In re Bartfeld , 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir.
 1991).
 

 Examiner Note:
 
 1. This form paragraph is used to provisionally reject over a
 copending application that discloses the claimed invention and would constitute prior
 art under pre-AIA 35
 U.S.C. 102(e) if published under 35 U.S.C. 122 or
 patented. The copending application must have either a common assignee, a common
 applicant ( 35
 U.S.C. 118 ), or at least one common (joint) inventor.
 

 2. Use pre-AIA 35 U.S.C. 102(e) as amended
 by the American Inventors Protection Act (AIPA) and the Intellectual Property and High
 Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti ) to determine the copending
 application’s prior art date, unless the copending application is based directly, or
 indirectly, from an international application which has an international filing date
 prior to November 29, 2000. If the copending application is either a national stage of
 an international application (application under 35 U.S.C. 371 ) which has an
 international filing date prior to November 29, 2000, or a continuing application
 claiming benefit under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) to an international
 application having an international filing date prior to November 29, 2000, use
 pre-AIPA
 35 U.S.C. 102(e) (form paragraph 7.12.01.fti ). See the Examiner
 Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the
 determination of the reference’s 35 U.S.C. 102(e) date. 
 

 3. If the claims would have been obvious over the invention
 disclosed in the other copending application, use form paragraph
 7.21.01.fti .
 

 4. In bracket 3, insert --assignee--, --applicant--, or --joint
 inventor--.
 

 5. In bracket 4, an appropriate explanation may be provided in
 support of the examiner’s position on anticipation, if necessary.
 

 6. Under 35 U.S.C. 101 , two patents are not
 permitted to issue on identical subject matter. Any claims in the instant application
 directed to the same invention claimed in the reference should be provisionally rejected
 using form paragraphs 8.30
 and 8.32 . Additionally, the applicant should be required to
 amend or cancel claims such that the applied reference and the instant application no
 longer contain claims directed to the same invention using form paragraph
 8.27.fti .
 

 7. Any claims in the instant application that are directed to
 subject matter that is not patentably distinct from an invention claimed in the
 reference should be rejected (or provisionally rejected if the reference has not yet
 issued as a patent) on the grounds of nonstatutory double patenting using form paragraph
 8.33 and at
 least one of form paragraphs 8.34 - 8.39 .
 

 8. If evidence is additionally of record to show that either
 invention is prior art to the other under pre-AIA 35 U.S.C. 102(f) or
 (g) , a rejection using form paragraphs
 7.13.fti
 and/or 7.14.fti should also be made.
 

 9. For applications with an actual filing date on or after March
 16, 2013 that claim priority to, or the benefit of, an application filed before March
 16, 2013, this form paragraph must be preceded by form paragraph
 7.06 .
 
 
 

 ¶ 7.15.02.aia Rejection, 35 U.S.C. 102(a)(2), Common Assignee, Applicant, or
 Joint Inventor(s)
 

 Claim(s) [1] is/are rejected under 35 U.S.C.
 102(a)(2) as being [2] by [3] .
 

 The applied reference has a common [4] with the instant
 application. Based upon the earlier effectively filed date of the reference, it constitutes
 prior art under 35
 U.S.C. 102(a)(2) . This rejection under 35 U.S.C.
 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the
 subject matter disclosed in the reference was obtained directly or indirectly from the
 inventor or a joint inventor of this application and is thus not prior art in accordance with
 35 U.S.C.
 102(b)(2)(A) ; (2) a showing under 37 CFR 1.130(b) of a prior public
 disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or
 (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that,
 not later than the effective filing date of the claimed invention, the subject matter
 disclosed in the reference and the claimed invention were either owned by the same person or
 subject to an obligation of assignment to the same person or subject to a joint research
 agreement. 
 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 

 2. This form paragraph is used to reject claims as anticipated over
 a U.S. patent, U.S. patent application publication, or WIPO publication with an earlier
 prior art date under 35 U.S.C. 102(a)(2) . These
 references must have either a common assignee, a common applicant ( 35 U.S.C. 118 ),
 or at least one common (joint) inventor.
 

 3. 35 U.S.C. 102(a)(2) may be applied
 if the reference names another inventor (i.e., a different inventive entity) and is one
 of the following: 
 a U.S. patent granted under 35 U.S.C.
 151 that has an effectively filed date earlier than the
 effective filing date of the claimed invention;
 

 a U.S. Patent Application Publication published
 under 35
 U.S.C. 122(b) that has an effectively filed date earlier than
 the effective filing date of the claimed invention; or
 

 a WIPO publication of an international application
 (PCT) or international design application that designates the United States where the
 WIPO publication has an effectively filed date earlier than the effective filing date
 of the claimed invention. 
 
 
 If any of the three types of prior art documents
 under 35 U.S.C. 102(a)(2) was published before the effective filing
 date of the claimed invention under examination, then the prior art document is also
 applicable under 35 U.S.C. 102(a)(1) .
 
 

 

 4. In bracket 1, insert the claim numbers which are
 under rejection.
 

 5. In bracket 2, insert either --clearly anticipated--
 or --anticipated-- with an explanation at the end of the paragraph. 
 

 6. In bracket 3, insert the prior art relied
 upon.
 

 7. In bracket 4, insert --assignee--, --applicant--, or
 --joint inventor--.
 

 8. This form paragraph must be preceded by form
 paragraph 7.12.aia .
 

 9. Under 35 U.S.C. 101 , two patents are not
 permitted to issue on identical subject matter. Any claims in the instant application
 directed to the same invention claimed in the reference should be rejected (or
 provisionally rejected if the reference has not yet issued as a patent) on the grounds
 of statutory double patenting using form paragraphs 8.30 - 8.32 . Additionally, the applicant should
 be required to amend or cancel claims such that the reference and the instant
 application no longer contain claims directed to the same invention using form paragraph
 8.27.aia .
 

 10. Any claims in the instant application that are directed to
 subject matter that is not patentably distinct from an invention claimed in the
 reference should be rejected (or provisionally rejected if the reference has not yet
 issued as a patent) on the grounds of nonstatutory double patenting using form paragraph
 8.33 and at
 least one of form paragraphs 8.34 - 8.39 .
 

 11. For applications claiming priority to, or the benefit of, an
 application filed before March 16, 2013, this form paragraph must be preceded by form
 paragraph 7.06 .
 
 
 

 ¶ 7.15.02.fti Rejection, Pre-AIA 35 U.S.C. 102(e), Common Assignee,
 Applicant, or Joint Inventor
 

 Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102(e) 
 as being anticipated by [2] .
 

 The applied reference has a common [3] with the instant
 application. Based upon the pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior
 art. This rejection under pre-AIA 35 U.S.C. 102(e) might be overcome either by a showing under
 37 CFR
 1.132 that any invention disclosed but not claimed in the reference was
 derived from the inventor or joint inventors (i.e., the inventive entity) of this application
 and is thus not the invention “by another,” or if the same invention is not being claimed, by
 an appropriate showing under 37 CFR 1.131(a) .
 

 Examiner Note:
 
 1. This form paragraph is used to reject over a patent or patent
 application publication that is prior art under pre-AIA 35 U.S.C. 102(e) to the
 claimed invention. The patent or patent application publication must have either a
 common assignee, a common applicant ( 35 U.S.C. 118 ), or a common (joint)
 inventor.
 

 2. Pre-AIA 35 U.S.C.
 102(e) as amended by the American Inventors Protection Act of 1999
 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of
 2002 (form paragraph 7.12.fti ) must be applied if the reference is by
 another and is one of the following: 
 a U.S. patent or a publication of a U.S. application for
 patent filed under 35 U.S.C. 111(a) ;
 

 a U.S. patent issued directly or indirectly from, or a U.S.
 or WIPO publication of, an international application (PCT) if the international
 application has an international filing date on or after November 29,
 2000 ;
 

 a U.S. patent issued from, or a WIPO publication of, an
 international design application that designates the United States.
 
 
 See the Examiner Notes for form paragraph
 7.12.fti 
 to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the
 reference.
 

 

 3. Pre-AIPA
 35 U.S.C. 102(e) (form paragraph 7.12.01.fti ) must be applied if
 the reference is a U.S. patent issued directly, or indirectly, from an international
 application filed prior to November 29, 2000. See the Examiner Notes for form paragraph
 7.12.01.fti to assist in the determination of the
 pre-AIPA 35 U.S.C. 102(e) date of the
 reference.
 

 4. In determining the pre-AIA 35 U.S.C. 102(e) date,
 consider benefit claims to earlier-filed U.S. provisional applications under
 35 U.S.C.
 119(e) , and to earlier-filed U.S. nonprovisional applications and
 international applications under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) if the subject matter used to
 make the rejection is appropriately supported in the relied upon earlier-filed
 application’s disclosure (and any intermediate application(s)). A benefit claim to a
 U.S. patent of an earlier-filed international application, which has an international
 filing date prior to November 29, 2000, may only result in a prior art date under
 pre-AIPA 35 U.S.C. 102(e) as of the date the requirements of 35 U.S.C.
 371(c)(1) , (2) and (4) were
 fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed
 before an international application that has an international filing date prior to
 November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C.
 119(a) - (d) , 365(a) or (b) , or
 386(a) or
 (b) . 
 In addition, a reference (i.e., a U.S. patent, published U.S.
 patent application, or WIPO publication) is entitled to the benefit of the filing date
 of a provisional application only if at least one of the claims in the reference is
 supported by the written description of the provisional application in compliance with
 pre-AIA 35 U.S.C.
 112 , first paragraph or 35 U.S.C.
 112(a) . See Dynamic Drinkware, LLC, v. National Graphics,
 Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v.
 Sanofi , 872 F.3d 1367, 1380 (Fed. Cir. 2017).
 

 

 5. If the reference is a publication of an international application
 (PCT), including voluntary U.S. publication under 35 U.S.C. 122 of the national stage
 or a WIPO PCT publication, that has an international filing date prior to November 29,
 2000, did not designate the United States or was not published in English by WIPO, do
 not use this form paragraph. Such a reference is not a prior art reference under
 pre-AIA 35 U.S.C.
 102(e) . The reference may be applied under pre-AIA 35 U.S.C.
 102(a) or (b) as of its publication date. See
 form paragraphs 7.08.fti
 and 7.09.fti .
 

 6. In bracket 3, insert --assignee--, --applicant--, or --joint
 inventor--.
 

 7. This form paragraph must be preceded by either of form
 paragraphs 7.12.fti
 or 7.12.01.fti .
 

 8. Patent application publications may only be used if this form
 paragraph was preceded by form paragraph 7.12.fti .
 

 9. For applications with an actual filing date on or after March
 16, 2013, that claim priority to, or the benefit of, an application filed before March
 16, 2013, this form paragraph must be preceded by form paragraph
 7.06 .
 

 10. Under 35 U.S.C. 101 , two patents are not
 permitted to issue on identical subject matter. Any claims in the instant application
 directed to the same invention claimed in the reference should be rejected (or
 provisionally rejected if the reference has not yet issued as a patent) using form
 paragraphs 8.30 
 - 8.32 .
 Additionally, the applicant should be required to resolve any issue of priority under
 pre-AIA 35 U.S.C.
 102(g) and possibly pre-AIA 35 U.S.C. 102(f) using form
 paragraph 8.27.fti . See MPEP § 804 , subsection II.A.
 

 11. Any claims in the instant application that are directed to
 subject matter that is not patentably distinct from an invention claimed in the
 reference should be rejected (or provisionally rejected if the reference has not yet
 issued as a patent) on the grounds of nonstatutory double patenting using form paragraph
 8.33 and at
 least one of form paragraphs 8.34 - 8.39 .
 
 
 

 ¶ 7.21.01.aia Provisional Rejection, 35 U.S.C. 103, Common Assignee, Common
 Applicant, or at Least One Common (Joint) Inventor 
 

 Claim [1] is/are provisionally rejected under
 35 U.S.C.
 103 as being obvious over copending Application No. [2]
 which has a common [3] with the instant application. The copending
 application would constitute prior art under 35 U.S.C. 102(a)(2) if published or
 patented. This provisional rejection under 35 U.S.C. 103 is based upon a presumption
 of future publication or patenting of the copending application. [4] 

 This provisional rejection might be overcome by: (1) a showing under
 37 CFR
 1.130(a) that the subject matter disclosed in the copending application
 was obtained directly or indirectly from the inventor or a joint inventor of this application
 and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A) ; (2) a showing
 under 37 CFR
 1.130(b) of a prior public disclosure under 35 U.S.C.
 102(b)(2)(B) ; or (3) a statement pursuant to 35 U.S.C.
 102(b)(2)(C) establishing that, not later than the effective filing date
 of the claimed invention, the subject matter disclosed in the copending application and the
 claimed invention either were owned by the same person or subject to an obligation of
 assignment to the same person or subject to a joint research agreement. See generally
 MPEP §
 717.02 .
 

 Examiner Note:
 
 1. This form paragraph should only be used in an application filed
 on or after March 16, 2013, where the claims are being examined under 35 U.S.C.
 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 
 

 2. This form paragraph is used to provisionally reject claims over
 a copending application that discloses the claimed invention and would constitute prior
 art under 35
 U.S.C. 102(a)(2) if published under 35 U.S.C. 122 or
 patented. The copending application must have either a common assignee, common applicant
 ( 35 U.S.C.
 118 ) or at least one common (joint) inventor. 
 

 3. If the claimed invention is fully disclosed in the copending
 application, use form paragraph 7.15.01.aia . 
 

 4. In bracket 1, insert the claim number(s) which is/are under
 rejection.
 

 5. In bracket 2, insert the application number.

 6. In bracket 3, insert --assignee--, --applicant--, or --joint
 inventor--. 
 

 7. In bracket 4, insert an explanation of obviousness. See
 MPEP §
 2144 .
 

 8. If the claimed invention is not patentably distinct from the
 invention claimed in the copending application, a provisional nonstatutory double
 patenting rejection should additionally be made using form paragraphs
 8.33 and
 8.37 .
 
 
 

 ¶ 7.21.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 103(a), Common
 Assignee, Common Applicant, or at Least One Common (Joint) Inventor
 

 Claim [1] is/are provisionally rejected under
 pre-AIA 35 U.S.C.
 103(a) as being obvious over copending Application No. [2] 
 which has a common [3] with the instant application. The copending application
 would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published or
 patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) is based upon a
 presumption of future publication or patenting of the copending application. [4] 

 This provisional rejection might be overcome either by a showing under
 37 CFR
 1.132 that any invention disclosed but not claimed in the copending
 application was derived from the inventor or joint inventors (i.e., the inventive entity) of
 this application and is thus not the invention “by another,” or by a showing of a date of
 invention for the instant application prior to the pre-AIA 35 U.S.C. 102(e) date of the
 copending application under 37 CFR 1.131(a) . This rejection might also
 be overcome by showing that the copending application is disqualified under pre-AIA 35 U.S.C. 103(c) 
 as prior art in a rejection under pre-AIA 35 U.S.C. 103(a) .
 See
 MPEP §
 2146 et seq.
 

 Examiner Note:
 
 1. This paragraph is used to provisionally reject claims not
 patentably distinct from the disclosure in a copending application that would be prior
 art under pre-AIA 35 U.S.C. 102(e) to the claimed invention if published or issued as a
 patent and also has either a common assignee, a common applicant ( 35 U.S.C. 118 ),
 or at least one common (joint) inventor. This form paragraph should not be used when the
 copending application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior
 art in a pre-AIA 35
 U.S.C. 103(a) rejection.
 
 See MPEP §
 2146.03(a) . 
 

 2. Use pre-AIA 35 U.S.C. 102(e) as amended
 by the American Inventors Protection Act (AIPA) to determine the copending application's
 prior art date, unless the copending application is based directly, or indirectly, from
 an international application which has an international filing date prior to November
 29, 2000. If the copending application is either a national stage of an international
 application (application under 35 U.S.C. 371 ) which has an
 international filing date prior to November 29, 2000, or a continuing application
 claiming benefit under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) to an international
 application having an international filing date prior to November 29, 2000, use
 pre-AIPA 35
 U.S.C. 102(e) to determine the copending application’s prior art
 date. See the Examiner Notes for form paragraphs 7.12.fti and
 7.12.01.fti to assist in the determination of the
 reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
 

 3. If the claimed invention is fully disclosed in the copending
 application, use paragraph 7.15.01.fti . 
 

 4. In bracket 1, insert the claim number(s) which is/are under
 rejection.
 

 5. In bracket 2, insert the application number.

 6. In bracket 3, insert --assignee--, --applicant--, or --joint
 inventor--. 
 

 7. In bracket 4, insert an explanation of obviousness. See
 MPEP §
 2144 . 
 

 8. If the claimed invention is not patentably distinct from the
 invention claimed in the copending application, a provisional obviousness double
 patenting rejection should additionally be made using form paragraphs
 8.33 and
 8.37 .
 

 9. A rejection should additionally be made under pre-AIA 35 U.S.C.
 103(a) using form paragraph 7.21.fti if: 
 evidence indicates that the copending application is
 also prior art under pre-AIA 35 U.S.C. 102(f) or
 (g) (e.g., applicant has named the prior inventor in response
 to a requirement made using form paragraph 8.28.fti ); and
 

 the copending application has not been disqualified as
 prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to
 pre-AIA 35
 U.S.C. 103(c) .
 
 
 
 
 

 ¶ 7.21.02.aia Rejection, 35 U.S.C. 103, Common Assignee, Common Applicant,
 or at Least One Common (Joint) Inventor
 

 Claim [1] is/are rejected under 35 U.S.C. 103 
 as being obvious over [2] .
 

 The applied reference has a common [3] with the instant
 application. Based upon the earlier effectively filed date of the reference, it constitutes
 prior art under 35
 U.S.C. 102(a)(2) . [4] 

 This rejection under 35 U.S.C. 103 might be overcome by: (1) a
 showing under 37 CFR
 1.130(a) that the subject matter disclosed in the reference was obtained
 directly or indirectly from the inventor or a joint inventor of this application and is thus
 not prior art in accordance with 35 U.S.C. 102(b)(2)(A) ; (2) a showing
 under 37 CFR
 1.130(b) of a prior public disclosure under 35 U.S.C.
 102(b)(2)(B) ; or (3) a statement pursuant to 35 U.S.C.
 102(b)(2)(C) establishing that, not later than the effective filing date
 of the claimed invention, the subject matter disclosed and the claimed invention were either
 owned by the same person or subject to an obligation of assignment to the same person or
 subject to a joint research agreement. See generally MPEP § 717.02 . 
 

 Examiner Note:
 
 1. This form paragraph should only be used in an application filed
 on or after March 16, 2013, where the claims are being examined under 35 U.S.C.
 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 

 2. This paragraph is used to reject over a reference (patent or
 published application) that discloses the claimed invention, and that ONLY qualifies as
 prior art under 35 U.S.C. 102(a)(2) . If the
 reference qualifies as prior art under 35 U.S.C. 102(a)(1) , then this form
 paragraph should not be used (form paragraph 7.21.aia should be used instead). The
 reference must have either a common assignee, a common applicant ( 35 U.S.C. 118 
 ), or at least one common (joint) inventor. This form paragraph should not 
 be used in applications when the reference is not prior art in view of the
 35 U.S.C.
 102(b)(2)(C) exception.
 

 3. In bracket 3, insert --assignee--, --applicant--, or --joint
 inventor--.
 

 4. In bracket 4, insert an explanation of obviousness. See
 MPEP §
 2144 .
 
 
 

 ¶ 7.22.aia Rejection, 35 U.S.C. 103, Further in View Of

 Claim [1] is/are rejected under 35 U.S.C. 103 
 as being unpatentable over [2] as applied to claim [3] above, and
 further in view of [4] . 
 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 
 

 2. This form paragraph must be preceded by form
 paragraph 7.21.aia .
 

 3. An explanation of the rejection must follow this form paragraph.
 See MPEP §
 2144 .
 
 
 

 ¶ 7.21.02.fti Rejection, pre-AIA 35 U.S.C. 103(a), Common Assignee, Common
 Applicant, or at Least One Common (Joint) Inventor
 

 Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) 
 as being obvious over [2] .
 

 The applied reference has a common [3] with the instant
 application. Based upon the pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior
 art. This rejection under pre-AIA 35 U.S.C. 103(a) might be overcome by: (1) a showing under
 37 CFR
 1.132 that any invention disclosed but not claimed in the reference was
 derived from the inventor of this application and is thus not an invention “by another”; (2) a
 showing of a date of invention for the claimed subject matter of the application which
 corresponds to subject matter disclosed but not claimed in the reference, prior to the
 pre-AIA 35 U.S.C.
 102(e) date of the reference under 37 CFR 1.131(a) ; or
 (3) an oath or declaration under 37 CFR 1.131(c) stating that the
 application and reference are currently owned by the same party and that the inventor or joint
 inventors (i.e., the inventive entity) named in the application is the prior inventor under
 pre-AIA 35 U.S.C.
 104 as in effect on March 15, 2013, together with a terminal disclaimer
 in accordance with 37 CFR
 1.321(c) . This rejection might also be overcome by showing that the
 reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a
 rejection under pre-AIA 35
 U.S.C. 103(a) .
 See
 MPEP §
 2146 et seq. [4] 

 Examiner Note:
 
 1. This paragraph is used to reject over a reference (patent or
 published application) that discloses the claimed invention, and that only qualifies as
 prior art under pre-AIA 35 U.S.C. 102(e) . If the reference qualifies as prior art
 under pre-AIA 35
 U.S.C. 102(a) or (b) , then this form paragraph should
 not be used (form paragraph 7.21.fti should be used instead). The reference must
 have either a common assignee, a common applicant ( 35 U.S.C. 118 ),
 or at least one common (joint) inventor. This form paragraph should not be used in
 applications when the reference is disqualified under pre-AIA 35 U.S.C.
 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
 See
 MPEP §
 2146.03 .
 

 2. Pre-AIA 35 U.S.C.
 102(e) as amended by the American Inventors Protection Act of 1999
 (AIPA) must be applied if the reference is by another and is one of the following: 
 a U.S. patent or a publication of a U.S. application for
 patent filed under 35 U.S.C. 111(a) ;
 

 a U.S. patent issued directly or indirectly from, or a U.S. or
 WIPO publication of, an international application (PCT) if the international
 application has an international filing date on or after November 29,
 2000 ;
 

 a U.S. patent issued from, or a WIPO publication of, an
 international design application that designates the United States.
 
 
 See the Examiner Notes for form paragraph
 7.12.fti 
 to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the
 reference.
 

 

 3. Pre-AIPA 35 U.S.C. 102(e) must be applied if the reference is a U.S. patent issued
 directly, or indirectly, from an international application filed prior to November 29,
 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the
 determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference. 
 

 4. In bracket 1, insert the claim number(s) which is/are under
 rejection.
 

 5. In bracket 2, insert the prior art reference(s) relied upon for
 the obviousness rejection.
 

 6. In bracket 3, insert --assignee--, --applicant--, or --joint
 inventor--.
 

 7. In bracket 4, insert an explanation of obviousness. See
 MPEP §
 2144 .
 
 
 

 

 
 804.04 Submission to Technology Center Director [R-07.2015]

 In order to promote uniform practice, every Office action containing a
 rejection on the ground of nonstatutory double patenting which relies on the parent
 application to reject the claims in a divisional application where the divisional
 application was filed because of a requirement to restrict made by the examiner under
 35 U.S.C.
 121 , including a requirement to elect species, must be submitted
 to the Technology Center Director for approval prior to mailing. If the rejection on the
 ground of double patenting is disapproved, it shall not be mailed but other appropriate
 action shall be taken. Note MPEP § 1003 .
 

 When a claimed invention that was the subject of a
 restriction requirement in one application is presented in a divisional application, a
 nonstatutory double patenting rejection cannot be applied to that claimed invention
 unless the restriction requirement was withdrawn. A nonstatutory double patenting
 rejection may be appropriate in situations in which the invention presented in the
 divisional is not the same invention that was the subject of the restriction
 requirement. “When the PTO requires an applicant to withdraw claims to a patentably
 distinct invention (a restriction requirement), § 121 shields those withdrawn claims
 in a later divisional application against rejection over a patent that issues from the
 original application…. [I]f an examiner issues a restriction requirement between
 patentably indistinct claims, two patents may issue and prolong patent protection beyond
 the statutory term on obvious variants of the same invention. This prolongation would
 occur because section 121 would immunize the restricted application against
 nonstatutory double patenting rejections.” Geneva Pharmaceuticals Inc. v.
 GlaxoSmithKline PLC, 349 F.3d 1373, 1381, 68 USPQ2d 1865, 1869 (Fed. Cir.
 2003). 
 

 “[W]hen the existence of multiple patents is due to the
 administrative requirements imposed by the Patent and Trademark Office,
 35 U.S.C.
 Section 121 provides that the inventor shall not be prejudiced by
 having complied with those requirements. Thus when two or more patents result from a PTO
 restriction requirement, whereby aspects of the original application must be divided
 into separate applications, Section 121 insulates the ensuing patents from the charge of
 double patenting.” Applied Materials Inc. v. Advanced Semiconductor
 Materials, 98 F.3d 1563, 1568, 40 USPQ2d 1481, 1484 (Fed. Cir. 1996)
 (citing Studiengesellschaft Kohle mbH v. Northern Petrochemical Co., 
 784 F.2d 351, 354, 228 USPQ 837, 840 (Fed. Cir. 1986)).
 

 “ Section 121 shields claims against a
 double patenting challenge if consonance exists between the divided groups of claims and
 an earlier restriction requirement. If a restriction requirement does not clearly set
 forth the line of demarcation, then challenged claims could not satisfy the consonance
 requirement.” Geneva Pharm, 349 F.3d at 1381, 68 USPQ2d at 1871. 
 

 “Consonance requires that the line of demarcation between
 the ‘independent and distinct inventions’ that prompted the restriction requirement be
 maintained ... Where that line is crossed the prohibition -[against double patenting in]
 the third sentence of Section 121 does not apply.”
 Symbol Techs, Inc. v. Opticon, Inc., 935 F.2d 1569, 1579, 19
 USPQ2d 1241, 1249 (Fed. Cir. 1991) (quoting Gerber Garment Technology Inc. v.
 Lectra Systems Inc., 916 F.2d 683, 688, 16 USPQ2d 1436, 1440 (Fed. Cir.
 1990)); see also MPEP §
 804.01 . “ However, even if such consonance is lost, double
 patenting does not follow if the requirements of Section 121 are met or if the claims
 are in fact patentably distinct.… The purpose of Section 121 is to accommodate
 administrative convenience and to protect the patentee from technical flaws based on
 this unappealable examination practice.” Applied Materials, 98 F.3d
 at 1568, 40 USPQ at 1484.
 

 

 
 804.05 Impact of Patent Term Extension under 35 U.S.C.
 156 on Nonstatutory Double Patenting [R-10.2019]
 

 Nonstatutory double patenting does not invalidate any
 patent term extension (PTE) granted under 35 U.S.C. 156 , if the claims are
 otherwise valid under its pre-PTE expiration date. See Novartis AG v. Ezra
 Ventures LLC, 909 F.3d 1367, 128 USPQ2d 1752 (Fed. Cir. 2018). “For
 example, if a patent, under its original expiration date without a PTE, should have been
 (but was not) terminally disclaimed because of obviousness-type double patenting, then
 this court’s obviousness-type double patenting case law would apply, and the patent
 could be invalidated. However, if a patent, under its pre-PTE expiration date, is valid
 under all other provisions of law, then it is entitled to the full term of its
 PTE.” Id. at 1374, 128 USPQ2d at 1757. The
 Novartis court upheld the validity of a PTE even when the PTE
 created a potential nonstatutory double patenting issue due to the later date of
 enforceability of applicable claims of the patent resulting from the PTE finding that
 the earlier-expired, patentably indistinct patent was “not a double patenting reference”
 to extended patent. Id. at 1375, 128 USPQ2d at 1757. Specifically,
 the court held “[b]y applying statutory construction principles, following this court’s
 precedent in [ Merck & Co. v. Hi-Tech Pharmacal Co., 482 F.3d
 1317, 82 USPQ2d 1203 (Fed. Cir. 2007)], and addressing traditional obviousness-type
 double patenting principles, we hold that a PTE pursuant to § 156 is valid so
 long as the extended patent is otherwise valid without the extension.”
 Id. Thus, the court declined to allow “a judge-made doctrine”
 regarding double patenting to “cut off a statutorily-authorized time extension.”
 Id. at 1375, 128 USPQ2d at 1757.
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 801-Introduction 

 802-Basis for Restriction Practice in Statute and Rules 
 802.01-Meaning of “Independent” and “Distinct” 

 802.02-Definition of Restriction 

 
 

 803-Restriction — When Proper 
 803.01-Review by Examiner with at Least Partial Signatory Authority 

 803.02-Election of Species Requirements – Markush Claims 

 803.03-Transitional Applications 
 803.03(a)-Transitional Application — Linking Claim Allowable 

 803.03(b)-Transitional Application — Generic Claim Allowable 

 
 

 803.04-Nucleotide Sequences 

 803.05-Reissue Application Practice 

 
 

 804-Definition of Double Patenting 
 804.01-Prohibition of Nonstatutory Double Patenting Rejections Under 35 U.S.C. 121 

 804.02-Avoiding a Double Patenting Rejection 

 804.03-Commonly Owned Inventions of Different Inventive Entities; Non-Commonly Owned Inventions Subject to a Joint Research Agreement 

 804.04-Submission to Technology Center Director 

 804.05-Impact of Patent Term Extension under 35 U.S.C. 156 on Nonstatutory Double Patenting 

 
 

 805-Effect of Improper Joinder in Patent 

 806-Determination of Distinctness or Independence of Claimed Inventions 
 806.01-Compare Claimed Subject Matter 

 806.02-[Reserved] 

 806.03-Single Embodiment, Claims Defining Same Essential Features 

 806.04-Genus and/or Species Inventions 
 806.04(a)-[Reserved] 

 806.04(b)-Species May Be Independent or Related Inventions 

 806.04(c)-[Reserved] 

 806.04(d)-Definition of a Generic Claim 

 806.04(e)-Claims Limited to Species 

 806.04(f)-Restriction Between Mutually Exclusive Species 

 806.04(g)-[Reserved] 

 806.04(h)-Species Must Be Patentably Distinct From Each Other 

 806.04(i)-Generic Claims Presented In a Separate Application After Issuance of Species Claims 

 
 

 806.05-Related Inventions 
 806.05(a)-Combination and Subcombination 

 806.05(b)-[Reserved] 

 806.05(c)-Criteria of Distinctness Between Combination and Subcombination 

 806.05(d)-Subcombinations Usable Together 

 806.05(e)-Process and Apparatus for Its Practice 

 806.05(f)-Process of Making and Product Made 

 806.05(g)-Apparatus and Product Made 

 806.05(h)-Product and Process of Using 

 806.05(i)-Product, Process of Making, and Process of Using 

 806.05(j)-Related Products; Related Processes 

 
 

 806.06-Independent Inventions 

 
 

 807-Patentability Report Practice Has No Effect on Restriction Practice 

 808-Reasons for Insisting Upon Restriction 
 808.01-Reasons for Holding of Independence or Distinctness 
 808.01(a)-Species 

 
 

 808.02-Establishing Burden 

 
 

 809-Linking Claims 
 809.01-[Reserved] 

 809.02-Election of Species Required 
 809.02(a)-Election of Species Required 

 
 

 809.03-Restriction Between Linked Inventions 

 
 

 810-Action on the Merits 

 811-Time for Making Requirement 
 811.01-[Reserved] 

 811.02-New Requirement After Compliance With Preceding Requirement 

 811.03-Repeating After Withdrawal Proper 

 811.04-Proper Even Though Grouped Together in Parent Application 

 
 

 812-Who Should Make the Requirement 
 812.01-Telephone Restriction Practice 

 
 

 813-[Reserved] 

 814-Indicate Exactly How Application Is To Be Restricted 

 815-Make Requirement Complete 

 816-[Reserved] 

 817-Outline of Letter for Restriction Requirement 

 818-Election and Reply 
 818.01-Election in Reply to a Restriction Requirement: Express 
 818.01(a)-Reply Must be Complete 

 818.01(b)-Election is Required, Even When Requirement Is Traversed 

 818.01(c)-Traverse is Required To Preserve Right of Petition 

 818.01(d)-Traverse of Restriction Requirement With Linking Claims 

 
 

 818.02-Election Other Than Express 
 818.02(a)-Election By Originally Presented Claims 

 818.02(b)-Generic Claims Only — No Election of Species; Linking Claims Only – No Election of Invention 

 818.02(c)-Election By Optional Cancelation of Claims 

 818.02(d)-Election By Cancelation of Claims, Lacking Express Election Statement 

 
 

 
 

 819-Office Generally Does Not Permit Shift 

 820-[Reserved] 

 821-Treatment of Claims Held To Be Drawn to Nonelected Inventions 
 821.01-After Election With Traverse 

 821.02-After Election Without Traverse 

 821.03-Claims for Different Invention Added After an Office Action 

 821.04-Rejoinder 
 821.04(a)-Rejoinder Between Product Inventions; Rejoinder Between Process Inventions 

 821.04(b)-Rejoinder of Process Requiring an Allowable Product 

 
 

 
 

 822-Claims to Inventions That Are Not Patentably Distinct in Plural Applications of Same Applicant or Assignee 

 823-Unity of Invention Under the Patent Cooperation Treaty 

 

 

 
 

 
 
 

 
 

 

 
 
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