What happens if an appellant doesn’t argue a non-statutory double patenting rejection in their appeal brief?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

If an appellant doesn’t argue a non-statutory double patenting (NSDP) rejection in their appeal brief, the examiner should:

• Maintain the rejection in the Examiner’s Answer
• Include a warning about potential consequences

The MPEP provides a form paragraph (FP 12.278) for this situation, which states in part:

“This appeal includes a rejection of claims [1] which are rejected on the ground of non-statutory double patenting. This rejection was not addressed in the appellant’s appeal brief. Should the Board either summarily affirm or not reach the rejection and the appellant should fail to overcome the rejection with a properly filed terminal disclaimer prior to seeking judicial review… the appeal may be dismissed by the Court for lack of jurisdiction because the claims on appeal are subject to the non-statutory double patenting rejection.“

This warning is important as it informs the appellant of potential procedural issues if the NSDP rejection is not addressed.