How can an applicant overcome a nonstatutory double patenting rejection for a generic claim?
An applicant can overcome a nonstatutory double patenting rejection for a generic claim by filing a terminal disclaimer. This is explicitly stated in MPEP 806.04(i):
“Applicant may overcome such a rejection by filing a terminal disclaimer. See In re Goodman, 11 F.3d 1046, 1053, 29 USPQ2d 2010, 2016 (Fed. Cir. 1993); In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967).”
A terminal disclaimer is a statement filed by an applicant or patent owner in which they agree to limit the term of a later patent so that it expires at the same time as an earlier patent. This effectively prevents the extension of patent rights beyond the original patent term through subsequent applications.
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