How can I overcome a nonstatutory double patenting rejection?
To overcome a nonstatutory double patenting rejection, you can file a terminal disclaimer. The MPEP states: A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application.
However, it’s important to note that filing a terminal disclaimer alone is not sufficient. The MPEP clarifies: 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.
You can file a terminal disclaimer using the USPTO’s web-based eTerminal Disclaimer system, which provides immediate processing upon meeting all requirements.
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