The doctrine of nonstatutory double patenting also seeks to prevent the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982). The submission of a terminal disclaimer in compliance with 37 CFR 1.321(b) to overcome a double patenting rejection ensures that a patent owner with multiple patents claiming obvious variations of one invention retains all those patents or sells them as a group. Van Ornum, 686 F.2d at 944-45, 214 USPQ at 767. Nonstatutory double patenting includes rejections based on anticipation, a one-way determination of “obviousness,” or a two-way determination of “obviousness.” It is important to note that the “obviousness” analysis for nonstatutory double patenting is “similar to, but not necessarily the same as, that undertaken under 35 U.S.C. 103.” In re Braat, 937 F.2d 589, 592-93, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991) (citing In re Longi, 759 F.2d 887, 892 n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985)); Geneva Pharmaceuticals, 349 F.3d 1373, 1378 n.1, 68 USPQ2d 1865, 1869 n.1 (Fed Cir. 2003). In addition, nonstatutory double patenting also includes rejections based on the equitable principle against permitting an unjustified timewise extension of patent rights. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); see also MPEP § 804, subsection II.B.6.

The doctrine of nonstatutory double patenting also seeks to prevent the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982). The submission of a terminal disclaimer in compliance with 37 CFR 1.321(b) to overcome a double patenting rejection ensures that a patent owner with multiple patents claiming obvious variations of one invention retains all those patents or sells them as a group. Van Ornum, 686 F.2d at 944-45, 214 USPQ at 767. Nonstatutory double patenting includes rejections based on anticipation, a one-way determination of “obviousness,” or a two-way determination of “obviousness.” It is important to note that the “obviousness” analysis for nonstatutory double patenting is “similar to, but not necessarily the same as, that undertaken under 35 U.S.C. 103.” In re Braat, 937 F.2d 589, 592-93, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991) (citing In re Longi, 759 F.2d 887, 892 n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985)); Geneva Pharmaceuticals, 349 F.3d 1373, 1378 n.1, 68 USPQ2d 1865, 1869 n.1 (Fed Cir. 2003). In addition, nonstatutory double patenting also includes rejections based on the equitable principle against permitting an unjustified timewise extension of patent rights. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); see also MPEP § 804, subsection II.B.6.

The doctrine of nonstatutory double patenting also seeks to prevent the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982). The submission of a terminal disclaimer in compliance with 37 CFR 1.321(b) to overcome a double patenting rejection ensures that a patent owner with multiple patents claiming obvious variations of one invention retains all those patents or sells them as a group. Van Ornum, 686 F.2d at 944-45, 214 USPQ at 767. Nonstatutory double patenting includes rejections based on anticipation, a one-way determination of “obviousness,” or a two-way determination of “obviousness.” It is important to note that the “obviousness” analysis for nonstatutory double patenting is “similar to, but not necessarily the same as, that undertaken under 35 U.S.C. 103.” In re Braat, 937 F.2d 589, 592-93, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991) (citing In re Longi, 759 F.2d 887, 892 n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985)); Geneva Pharmaceuticals, 349 F.3d 1373, 1378 n.1, 68 USPQ2d 1865, 1869 n.1 (Fed Cir. 2003). In addition, nonstatutory double patenting also includes rejections based on the equitable principle against permitting an unjustified timewise extension of patent rights. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); see also MPEP § 804, subsection II.B.6.

The doctrine of nonstatutory double patenting also seeks to prevent the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982). The submission of a terminal disclaimer in compliance with 37 CFR 1.321(b) to overcome a double patenting rejection ensures that a patent owner with multiple patents claiming obvious variations of one invention retains all those patents or sells them as a group. Van Ornum, 686 F.2d at 944-45, 214 USPQ at 767. Nonstatutory double patenting includes rejections based on anticipation, a one-way determination of “obviousness,” or a two-way determination of “obviousness.” It is important to note that the “obviousness” analysis for nonstatutory double patenting is “similar to, but not necessarily the same as, that undertaken under 35 U.S.C. 103.” In re Braat, 937 F.2d 589, 592-93, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991) (citing In re Longi, 759 F.2d 887, 892 n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985)); Geneva Pharmaceuticals, 349 F.3d 1373, 1378 n.1, 68 USPQ2d 1865, 1869 n.1 (Fed Cir. 2003). In addition, nonstatutory double patenting also includes rejections based on the equitable principle against permitting an unjustified timewise extension of patent rights. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); see also MPEP § 804, subsection II.B.6.

The doctrine of nonstatutory double patenting also seeks to prevent the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982). The submission of a terminal disclaimer in compliance with 37 CFR 1.321(b) to overcome a double patenting rejection ensures that a patent owner with multiple patents claiming obvious variations of one invention retains all those patents or sells them as a group. Van Ornum, 686 F.2d at 944-45, 214 USPQ at 767. Nonstatutory double patenting includes rejections based on anticipation, a one-way determination of “obviousness,” or a two-way determination of “obviousness.” It is important to note that the “obviousness” analysis for nonstatutory double patenting is “similar to, but not necessarily the same as, that undertaken under 35 U.S.C. 103.” In re Braat, 937 F.2d 589, 592-93, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991) (citing In re Longi, 759 F.2d 887, 892 n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985)); Geneva Pharmaceuticals, 349 F.3d 1373, 1378 n.1, 68 USPQ2d 1865, 1869 n.1 (Fed Cir. 2003). In addition, nonstatutory double patenting also includes rejections based on the equitable principle against permitting an unjustified timewise extension of patent rights. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); see also MPEP § 804, subsection II.B.6.

The doctrine of nonstatutory double patenting also seeks to prevent the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982). The submission of a terminal disclaimer in compliance with 37 CFR 1.321(b) to overcome a double patenting rejection ensures that a patent owner with multiple patents claiming obvious variations of one invention retains all those patents or sells them as a group. Van Ornum, 686 F.2d at 944-45, 214 USPQ at 767. Nonstatutory double patenting includes rejections based on anticipation, a one-way determination of “obviousness,” or a two-way determination of “obviousness.” It is important to note that the “obviousness” analysis for nonstatutory double patenting is “similar to, but not necessarily the same as, that undertaken under 35 U.S.C. 103.” In re Braat, 937 F.2d 589, 592-93, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991) (citing In re Longi, 759 F.2d 887, 892 n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985)); Geneva Pharmaceuticals, 349 F.3d 1373, 1378 n.1, 68 USPQ2d 1865, 1869 n.1 (Fed Cir. 2003). In addition, nonstatutory double patenting also includes rejections based on the equitable principle against permitting an unjustified timewise extension of patent rights. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); see also MPEP § 804, subsection II.B.6.

The doctrine of nonstatutory double patenting also seeks to prevent the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982). The submission of a terminal disclaimer in compliance with 37 CFR 1.321(b) to overcome a double patenting rejection ensures that a patent owner with multiple patents claiming obvious variations of one invention retains all those patents or sells them as a group. Van Ornum, 686 F.2d at 944-45, 214 USPQ at 767. Nonstatutory double patenting includes rejections based on anticipation, a one-way determination of “obviousness,” or a two-way determination of “obviousness.” It is important to note that the “obviousness” analysis for nonstatutory double patenting is “similar to, but not necessarily the same as, that undertaken under 35 U.S.C. 103.” In re Braat, 937 F.2d 589, 592-93, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991) (citing In re Longi, 759 F.2d 887, 892 n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985)); Geneva Pharmaceuticals, 349 F.3d 1373, 1378 n.1, 68 USPQ2d 1865, 1869 n.1 (Fed Cir. 2003). In addition, nonstatutory double patenting also includes rejections based on the equitable principle against permitting an unjustified timewise extension of patent rights. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); see also MPEP § 804, subsection II.B.6.

A nonstatutory double patenting rejection may be made between a patent and an application or provisionally between applications. Such rejection over a patent may only be necessary if the patent issued less than a year before the filing date of the application. If the patent is more than a year older than the application, the patent is considered to be “prior art” under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(b) which may be applied in an anticipation or obviousness rejection as applicable. The purpose of a terminal disclaimer is to obviate a nonstatutory double patenting rejection by removing potential harm to the public by issuing a second patent. See MPEP § 804.

A nonstatutory double patenting rejection may be made between a patent and an application or provisionally between applications. Such rejection over a patent may only be necessary if the patent issued less than a year before the filing date of the application. If the patent is more than a year older than the application, the patent is considered to be “prior art” under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(b) which may be applied in an anticipation or obviousness rejection as applicable. The purpose of a terminal disclaimer is to obviate a nonstatutory double patenting rejection by removing potential harm to the public by issuing a second patent. See MPEP § 804.

A nonstatutory double patenting rejection may be made between a patent and an application or provisionally between applications. Such rejection over a patent may only be necessary if the patent issued less than a year before the filing date of the application. If the patent is more than a year older than the application, the patent is considered to be “prior art” under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(b) which may be applied in an anticipation or obviousness rejection as applicable. The purpose of a terminal disclaimer is to obviate a nonstatutory double patenting rejection by removing potential harm to the public by issuing a second patent. See MPEP § 804.

There are generally two types of double patenting rejections. One is the same invention type or “statutory” double patenting rejection based on 35 U.S.C. 171 which states in the singular that an inventor may obtain “a patent.” The second is the “nonstatutory” double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from claims in a first patent.

Double patenting rejections are based on a comparison of the claims in a patent and an application or between two applications which have at least one common inventor, common applicant, and/or are commonly assigned/owned or non-commonly assigned/owned but subject to a joint research agreement as set forth in 35 U.S.C. 102(c) or in pre-AIA 35 U.S.C. 103(c)(2) and (3). Notably, 35 U.S.C. 171 specifically states that “a patent” may be obtained if certain conditions are met; this use of the singular makes it clear that only one patent may issue for a design and is the basis for the statutory double patenting rejections.

Determining if a double patenting rejection is appropriate involves answering the following inquiries: Is the same design being claimed twice? If the answer is yes, then a rejection under 35 U.S.C. 171 should be made on the grounds of “same invention” type or statutory double patenting. If not, are the designs directed to patentably indistinct variations of the same inventive concept? If the answer is yes, then a rejection based on the nonstatutory double patenting should be made.

Double patenting rejections are based on a comparison of claims. In double patenting rejections, the disclosure of the patent or application may be relied upon only to define the claim. While there is a direct correlation between the drawings in a design application and the claim, examiners must be aware that no such correlation is necessary in a utility application or patent. Several utility patents may issue with the identical drawing disclosure but with claims directed to different inventions. So any consideration of possible double patenting rejections between a utility application or patent with a design application cannot be based on the utility drawing disclosure alone. See Anchor Hocking Corp. v. Eyelet Specialty Co., 377 F. Supp. 98, 183 USPQ 87 (D. Del. 1974). The examiner must be able to recreate the design claimed from the utility claims without reliance on the drawings.

A design – design statutory double patenting rejection based on 35 U.S.C. 171 prevents the issuance of a second patent for a design already patented. For this type of double patenting rejection to be proper, identical designs with identical scope must be twice claimed. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). A design – utility “same invention” double patenting rejection is based on judicial doctrine as there is no statutory basis for this rejection because neither 35 U.S.C. 101 nor 35 U.S.C. 171 can be applied against both claims. See In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A “same invention” type double patenting rejection, whether statutory or nonstatutory, cannot be overcome by a terminal disclaimer. See In re Swett, 451 F.2d 631, 172 USPQ 72 (CCPA 1971).

A design – design statutory double patenting rejection based on 35 U.S.C. 171 prevents the issuance of a second patent for a design already patented. For this type of double patenting rejection to be proper, identical designs with identical scope must be twice claimed. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). A design – utility “same invention” double patenting rejection is based on judicial doctrine as there is no statutory basis for this rejection because neither 35 U.S.C. 101 nor 35 U.S.C. 171 can be applied against both claims. See In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A “same invention” type double patenting rejection, whether statutory or nonstatutory, cannot be overcome by a terminal disclaimer. See In re Swett, 451 F.2d 631, 172 USPQ 72 (CCPA 1971).

A design – design statutory double patenting rejection based on 35 U.S.C. 171 prevents the issuance of a second patent for a design already patented. For this type of double patenting rejection to be proper, identical designs with identical scope must be twice claimed. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). A design – utility “same invention” double patenting rejection is based on judicial doctrine as there is no statutory basis for this rejection because neither 35 U.S.C. 101 nor 35 U.S.C. 171 can be applied against both claims. See In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A “same invention” type double patenting rejection, whether statutory or nonstatutory, cannot be overcome by a terminal disclaimer. See In re Swett, 451 F.2d 631, 172 USPQ 72 (CCPA 1971).

There are generally two types of double patenting rejections. One is the same invention type or “statutory” double patenting rejection based on 35 U.S.C. 171 which states in the singular that an inventor may obtain “a patent.” The second is the “nonstatutory” double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from claims in a first patent.

Determining if a double patenting rejection is appropriate involves answering the following inquiries: Is the same design being claimed twice? If the answer is yes, then a rejection under 35 U.S.C. 171 should be made on the grounds of “same invention” type or statutory double patenting. If not, are the designs directed to patentably indistinct variations of the same inventive concept? If the answer is yes, then a rejection based on the nonstatutory double patenting should be made.

Determining if a double patenting rejection is appropriate involves answering the following inquiries: Is the same design being claimed twice? If the answer is yes, then a rejection under 35 U.S.C. 171 should be made on the grounds of “same invention” type or statutory double patenting. If not, are the designs directed to patentably indistinct variations of the same inventive concept? If the answer is yes, then a rejection based on the nonstatutory double patenting should be made.

A design – design statutory double patenting rejection based on 35 U.S.C. 171 prevents the issuance of a second patent for a design already patented. For this type of double patenting rejection to be proper, identical designs with identical scope must be twice claimed. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). A design – utility “same invention” double patenting rejection is based on judicial doctrine as there is no statutory basis for this rejection because neither 35 U.S.C. 101 nor 35 U.S.C. 171 can be applied against both claims. See In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A “same invention” type double patenting rejection, whether statutory or nonstatutory, cannot be overcome by a terminal disclaimer. See In re Swett, 451 F.2d 631, 172 USPQ 72 (CCPA 1971).

A design – design statutory double patenting rejection based on 35 U.S.C. 171 prevents the issuance of a second patent for a design already patented. For this type of double patenting rejection to be proper, identical designs with identical scope must be twice claimed. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). A design – utility “same invention” double patenting rejection is based on judicial doctrine as there is no statutory basis for this rejection because neither 35 U.S.C. 101 nor 35 U.S.C. 171 can be applied against both claims. See In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A “same invention” type double patenting rejection, whether statutory or nonstatutory, cannot be overcome by a terminal disclaimer. See In re Swett, 451 F.2d 631, 172 USPQ 72 (CCPA 1971).

A design – design statutory double patenting rejection based on 35 U.S.C. 171 prevents the issuance of a second patent for a design already patented. For this type of double patenting rejection to be proper, identical designs with identical scope must be twice claimed. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). A design – utility “same invention” double patenting rejection is based on judicial doctrine as there is no statutory basis for this rejection because neither 35 U.S.C. 101 nor 35 U.S.C. 171 can be applied against both claims. See In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A “same invention” type double patenting rejection, whether statutory or nonstatutory, cannot be overcome by a terminal disclaimer. See In re Swett, 451 F.2d 631, 172 USPQ 72 (CCPA 1971).

A design – design statutory double patenting rejection based on 35 U.S.C. 171 prevents the issuance of a second patent for a design already patented. For this type of double patenting rejection to be proper, identical designs with identical scope must be twice claimed. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). A design – utility “same invention” double patenting rejection is based on judicial doctrine as there is no statutory basis for this rejection because neither 35 U.S.C. 101 nor 35 U.S.C. 171 can be applied against both claims. See In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A “same invention” type double patenting rejection, whether statutory or nonstatutory, cannot be overcome by a terminal disclaimer. See In re Swett, 451 F.2d 631, 172 USPQ 72 (CCPA 1971).

In determining whether a nonstatutory double patenting rejection is appropriate, the examiner must compare the overall appearance of the claimed design in the application with the overall appearance of the claimed design in the conflicting application or patent. The claim in the patent or conflicting application must be considered as a whole, i.e., the elements of the claimed design of the reference are not considered individually as they may be when establishing a prima facie case of anticipation under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103. See MPEP § 804, subsection II.B. (information on the analysis for nonstatutory double patenting rejections). For example, in an obviousness analysis, after the factual inquiries mandated under Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), have been made (as with a rejection under 35 U.S.C. 103, the examiner must then determine whether the results of the inquiries support a conclusion nonstatutory double patenting. To establish nonstatutory double patenting under an obviousness analysis: (A) the conflicting design claims must have overall appearances with basically the same design characteristics; and (B) the differences between the two designs must be insufficient to patentably distinguish one design from the other. Differences may be considered patentably insufficient when they are de minimis or obvious to a designer of ordinary skill in the art. While the conflicting application or patent (if less than a year older than the application) used to establish nonstatutory double patenting is not considered “prior art,” the principle involved is basically the same. See In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963)(see concurring opinion of Judge Rich).

In determining whether a nonstatutory double patenting rejection is appropriate, the examiner must compare the overall appearance of the claimed design in the application with the overall appearance of the claimed design in the conflicting application or patent. The claim in the patent or conflicting application must be considered as a whole, i.e., the elements of the claimed design of the reference are not considered individually as they may be when establishing a prima facie case of anticipation under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103. See MPEP § 804, subsection II.B. (information on the analysis for nonstatutory double patenting rejections). For example, in an obviousness analysis, after the factual inquiries mandated under Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), have been made (as with a rejection under 35 U.S.C. 103, the examiner must then determine whether the results of the inquiries support a conclusion nonstatutory double patenting. To establish nonstatutory double patenting under an obviousness analysis: (A) the conflicting design claims must have overall appearances with basically the same design characteristics; and (B) the differences between the two designs must be insufficient to patentably distinguish one design from the other. Differences may be considered patentably insufficient when they are de minimis or obvious to a designer of ordinary skill in the art. While the conflicting application or patent (if less than a year older than the application) used to establish nonstatutory double patenting is not considered “prior art,” the principle involved is basically the same. See In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963)(see concurring opinion of Judge Rich).

In determining whether a nonstatutory double patenting rejection is appropriate, the examiner must compare the overall appearance of the claimed design in the application with the overall appearance of the claimed design in the conflicting application or patent. The claim in the patent or conflicting application must be considered as a whole, i.e., the elements of the claimed design of the reference are not considered individually as they may be when establishing a prima facie case of anticipation under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103. See MPEP § 804, subsection II.B. (information on the analysis for nonstatutory double patenting rejections). For example, in an obviousness analysis, after the factual inquiries mandated under Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), have been made (as with a rejection under 35 U.S.C. 103, the examiner must then determine whether the results of the inquiries support a conclusion nonstatutory double patenting. To establish nonstatutory double patenting under an obviousness analysis: (A) the conflicting design claims must have overall appearances with basically the same design characteristics; and (B) the differences between the two designs must be insufficient to patentably distinguish one design from the other. Differences may be considered patentably insufficient when they are de minimis or obvious to a designer of ordinary skill in the art. While the conflicting application or patent (if less than a year older than the application) used to establish nonstatutory double patenting is not considered “prior art,” the principle involved is basically the same. See In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963)(see concurring opinion of Judge Rich).

In determining whether a nonstatutory double patenting rejection is appropriate, the examiner must compare the overall appearance of the claimed design in the application with the overall appearance of the claimed design in the conflicting application or patent. The claim in the patent or conflicting application must be considered as a whole, i.e., the elements of the claimed design of the reference are not considered individually as they may be when establishing a prima facie case of anticipation under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103. See MPEP § 804, subsection II.B. (information on the analysis for nonstatutory double patenting rejections). For example, in an obviousness analysis, after the factual inquiries mandated under Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), have been made (as with a rejection under 35 U.S.C. 103, the examiner must then determine whether the results of the inquiries support a conclusion nonstatutory double patenting. To establish nonstatutory double patenting under an obviousness analysis: (A) the conflicting design claims must have overall appearances with basically the same design characteristics; and (B) the differences between the two designs must be insufficient to patentably distinguish one design from the other. Differences may be considered patentably insufficient when they are de minimis or obvious to a designer of ordinary skill in the art. While the conflicting application or patent (if less than a year older than the application) used to establish nonstatutory double patenting is not considered “prior art,” the principle involved is basically the same. See In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963)(see concurring opinion of Judge Rich).

There are generally two types of double patenting rejections. One is the same invention type or “statutory” double patenting rejection based on 35 U.S.C. 171 which states in the singular that an inventor may obtain “a patent.” The second is the “nonstatutory” double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from claims in a first patent.

Determining if a double patenting rejection is appropriate involves answering the following inquiries: Is the same design being claimed twice? If the answer is yes, then a rejection under 35 U.S.C. 171 should be made on the grounds of “same invention” type or statutory double patenting. If not, are the designs directed to patentably indistinct variations of the same inventive concept? If the answer is yes, then a rejection based on the nonstatutory double patenting should be made.

Double patenting rejections are based on a comparison of claims. In double patenting rejections, the disclosure of the patent or application may be relied upon only to define the claim. While there is a direct correlation between the drawings in a design application and the claim, examiners must be aware that no such correlation is necessary in a utility application or patent. Several utility patents may issue with the identical drawing disclosure but with claims directed to different inventions. So any consideration of possible double patenting rejections between a utility application or patent with a design application cannot be based on the utility drawing disclosure alone. See Anchor Hocking Corp. v. Eyelet Specialty Co., 377 F. Supp. 98, 183 USPQ 87 (D. Del. 1974). The examiner must be able to recreate the design claimed from the utility claims without reliance on the drawings.

Double patenting rejections are based on a comparison of claims. In double patenting rejections, the disclosure of the patent or application may be relied upon only to define the claim. While there is a direct correlation between the drawings in a design application and the claim, examiners must be aware that no such correlation is necessary in a utility application or patent. Several utility patents may issue with the identical drawing disclosure but with claims directed to different inventions. So any consideration of possible double patenting rejections between a utility application or patent with a design application cannot be based on the utility drawing disclosure alone. See Anchor Hocking Corp. v. Eyelet Specialty Co., 377 F. Supp. 98, 183 USPQ 87 (D. Del. 1974). The examiner must be able to recreate the design claimed from the utility claims without reliance on the drawings.

Double patenting rejections are based on a comparison of claims. In double patenting rejections, the disclosure of the patent or application may be relied upon only to define the claim. While there is a direct correlation between the drawings in a design application and the claim, examiners must be aware that no such correlation is necessary in a utility application or patent. Several utility patents may issue with the identical drawing disclosure but with claims directed to different inventions. So any consideration of possible double patenting rejections between a utility application or patent with a design application cannot be based on the utility drawing disclosure alone. See Anchor Hocking Corp. v. Eyelet Specialty Co., 377 F. Supp. 98, 183 USPQ 87 (D. Del. 1974). The examiner must be able to recreate the design claimed from the utility claims without reliance on the drawings.

Double patenting rejections are based on a comparison of claims. In double patenting rejections, the disclosure of the patent or application may be relied upon only to define the claim. While there is a direct correlation between the drawings in a design application and the claim, examiners must be aware that no such correlation is necessary in a utility application or patent. Several utility patents may issue with the identical drawing disclosure but with claims directed to different inventions. So any consideration of possible double patenting rejections between a utility application or patent with a design application cannot be based on the utility drawing disclosure alone. See Anchor Hocking Corp. v. Eyelet Specialty Co., 377 F. Supp. 98, 183 USPQ 87 (D. Del. 1974). The examiner must be able to recreate the design claimed from the utility claims without reliance on the drawings.

A provisional double patenting rejection will be converted into a double patenting rejection when the first application, which is the basis for the rejection, publishes as an application publication or issues as a patent. If more than two applications conflict with each other and one is allowed, the remaining applications should be cross rejected against the others as well as the allowed application. For this type of rejection to be appropriate, there must be either at least one inventor in common, common applicant, or a common owner/assignee. If the claims in copending design applications or a design patent and design applications have a common assignee but different inventive entities, anticipation and/or obviousness rejections based on the other application or patent as prior art under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e), (f) and (g), as applicable, must be considered in addition to the double patenting rejection. See MPEP § 804, § 2136, § 2137, § 2138, and § 2154.

A provisional double patenting rejection will be converted into a double patenting rejection when the first application, which is the basis for the rejection, publishes as an application publication or issues as a patent. If more than two applications conflict with each other and one is allowed, the remaining applications should be cross rejected against the others as well as the allowed application. For this type of rejection to be appropriate, there must be either at least one inventor in common, common applicant, or a common owner/assignee. If the claims in copending design applications or a design patent and design applications have a common assignee but different inventive entities, anticipation and/or obviousness rejections based on the other application or patent as prior art under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e), (f) and (g), as applicable, must be considered in addition to the double patenting rejection. See MPEP § 804, § 2136, § 2137, § 2138, and § 2154.

A provisional double patenting rejection will be converted into a double patenting rejection when the first application, which is the basis for the rejection, publishes as an application publication or issues as a patent. If more than two applications conflict with each other and one is allowed, the remaining applications should be cross rejected against the others as well as the allowed application. For this type of rejection to be appropriate, there must be either at least one inventor in common, common applicant, or a common owner/assignee. If the claims in copending design applications or a design patent and design applications have a common assignee but different inventive entities, anticipation and/or obviousness rejections based on the other application or patent as prior art under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e), (f) and (g), as applicable, must be considered in addition to the double patenting rejection. See MPEP § 804, § 2136, § 2137, § 2138, and § 2154.

Double patenting rejections are based on a comparison of the claims in a patent and an application or between two applications which have at least one common inventor, common applicant, and/or are commonly assigned/owned or non-commonly assigned/owned but subject to a joint research agreement as set forth in 35 U.S.C. 102(c) or in pre-AIA 35 U.S.C. 103(c)(2) and (3). Notably, 35 U.S.C. 171 specifically states that “a patent” may be obtained if certain conditions are met; this use of the singular makes it clear that only one patent may issue for a design and is the basis for the statutory double patenting rejections.

A provisional double patenting rejection will be converted into a double patenting rejection when the first application, which is the basis for the rejection, publishes as an application publication or issues as a patent. If more than two applications conflict with each other and one is allowed, the remaining applications should be cross rejected against the others as well as the allowed application. For this type of rejection to be appropriate, there must be either at least one inventor in common, common applicant, or a common owner/assignee. If the claims in copending design applications or a design patent and design applications have a common assignee but different inventive entities, anticipation and/or obviousness rejections based on the other application or patent as prior art under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e), (f) and (g), as applicable, must be considered in addition to the double patenting rejection. See MPEP § 804, § 2136, § 2137, § 2138, and § 2154.

Double patenting rejections are based on a comparison of claims. In double patenting rejections, the disclosure of the patent or application may be relied upon only to define the claim. While there is a direct correlation between the drawings in a design application and the claim, examiners must be aware that no such correlation is necessary in a utility application or patent. Several utility patents may issue with the identical drawing disclosure but with claims directed to different inventions. So any consideration of possible double patenting rejections between a utility application or patent with a design application cannot be based on the utility drawing disclosure alone. See Anchor Hocking Corp. v. Eyelet Specialty Co., 377 F. Supp. 98, 183 USPQ 87 (D. Del. 1974). The examiner must be able to recreate the design claimed from the utility claims without reliance on the drawings.

In determining whether a nonstatutory double patenting rejection is appropriate, the examiner must compare the overall appearance of the claimed design in the application with the overall appearance of the claimed design in the conflicting application or patent. The claim in the patent or conflicting application must be considered as a whole, i.e., the elements of the claimed design of the reference are not considered individually as they may be when establishing a prima facie case of anticipation under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103. See MPEP § 804, subsection II.B. (information on the analysis for nonstatutory double patenting rejections). For example, in an obviousness analysis, after the factual inquiries mandated under Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), have been made (as with a rejection under 35 U.S.C. 103, the examiner must then determine whether the results of the inquiries support a conclusion nonstatutory double patenting. To establish nonstatutory double patenting under an obviousness analysis: (A) the conflicting design claims must have overall appearances with basically the same design characteristics; and (B) the differences between the two designs must be insufficient to patentably distinguish one design from the other. Differences may be considered patentably insufficient when they are de minimis or obvious to a designer of ordinary skill in the art. While the conflicting application or patent (if less than a year older than the application) used to establish nonstatutory double patenting is not considered “prior art,” the principle involved is basically the same. See In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963)(see concurring opinion of Judge Rich).

In determining whether a nonstatutory double patenting rejection is appropriate, the examiner must compare the overall appearance of the claimed design in the application with the overall appearance of the claimed design in the conflicting application or patent. The claim in the patent or conflicting application must be considered as a whole, i.e., the elements of the claimed design of the reference are not considered individually as they may be when establishing a prima facie case of anticipation under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103. See MPEP § 804, subsection II.B. (information on the analysis for nonstatutory double patenting rejections). For example, in an obviousness analysis, after the factual inquiries mandated under Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), have been made (as with a rejection under 35 U.S.C. 103, the examiner must then determine whether the results of the inquiries support a conclusion nonstatutory double patenting. To establish nonstatutory double patenting under an obviousness analysis: (A) the conflicting design claims must have overall appearances with basically the same design characteristics; and (B) the differences between the two designs must be insufficient to patentably distinguish one design from the other. Differences may be considered patentably insufficient when they are de minimis or obvious to a designer of ordinary skill in the art. While the conflicting application or patent (if less than a year older than the application) used to establish nonstatutory double patenting is not considered “prior art,” the principle involved is basically the same. See In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963)(see concurring opinion of Judge Rich).

In determining whether a nonstatutory double patenting rejection is appropriate, the examiner must compare the overall appearance of the claimed design in the application with the overall appearance of the claimed design in the conflicting application or patent. The claim in the patent or conflicting application must be considered as a whole, i.e., the elements of the claimed design of the reference are not considered individually as they may be when establishing a prima facie case of anticipation under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103. See MPEP § 804, subsection II.B. (information on the analysis for nonstatutory double patenting rejections). For example, in an obviousness analysis, after the factual inquiries mandated under Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), have been made (as with a rejection under 35 U.S.C. 103, the examiner must then determine whether the results of the inquiries support a conclusion nonstatutory double patenting. To establish nonstatutory double patenting under an obviousness analysis: (A) the conflicting design claims must have overall appearances with basically the same design characteristics; and (B) the differences between the two designs must be insufficient to patentably distinguish one design from the other. Differences may be considered patentably insufficient when they are de minimis or obvious to a designer of ordinary skill in the art. While the conflicting application or patent (if less than a year older than the application) used to establish nonstatutory double patenting is not considered “prior art,” the principle involved is basically the same. See In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963)(see concurring opinion of Judge Rich).

If double patenting is raised between a patent and a continuing application, examiners are reminded that this ground of rejection can only be made when the filing of the continuing application is voluntary and not the direct, unmodified result of restriction requirement under 35 U.S.C. 121. See MPEP § 804.01.