What happens if consonance is lost in a divisional application?
If consonance is lost in a divisional application, it doesn’t automatically result in a double patenting rejection. The MPEP, citing Applied Materials Inc. v. Advanced Semiconductor Materials, states:
“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.”
This means that even if the strict line of demarcation between inventions is not maintained, an examiner must still consider whether the claims meet the requirements of 35 U.S.C. 121 or if they are patentably distinct before applying a double patenting rejection. The focus is on protecting inventors from unfair rejections due to administrative procedures while still ensuring that patent protection is not improperly extended.
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