How does pre-AIA 35 U.S.C. 103(c) affect double patenting rejections?
Pre-AIA 35 U.S.C. 103(c) does not affect double patenting rejections. The MPEP clearly states:
“In addition, double patenting rejections, based on subject matter now disqualified as prior art in amended pre-AIA 35 U.S.C. 103(c), should still be made as appropriate. See 37 CFR 1.78(c) and MPEP ยง 804.”
This means that even if certain subject matter is disqualified as prior art under pre-AIA 35 U.S.C. 103(c) for obviousness rejections, it can still be used as the basis for a double patenting rejection. Double patenting rejections are based on different legal principles and are not affected by the prior art disqualification provisions of pre-AIA 35 U.S.C. 103(c).
Patent applicants and examiners should be aware that addressing prior art rejections through pre-AIA 35 U.S.C. 103(c) does not necessarily resolve potential double patenting issues.
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