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 § 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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