Can the 35 U.S.C. 102(b)(2)(C) exception be used to overcome a double patenting rejection?

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.

No, the 35 U.S.C. 102(b)(2)(C) exception cannot be used to overcome a double patenting rejection. The MPEP clearly states:

The 35 U.S.C. 102(b)(2)(C) exception is not effective to remove a disclosure applied as a basis for a double patenting rejection.

This means that even if subject matter is excepted as prior art under 35 U.S.C. 102(b)(2)(C), it can still be used as the basis for a double patenting rejection, either statutory or nonstatutory (obviousness-type).

It’s important to note that if an amendment under 37 CFR 1.71(g) is submitted to overcome a prior art rejection based on excepted subject matter, the examiner may need to issue a new double patenting rejection. In such cases, the Office action can be made final if no other new grounds of rejection are introduced.