How does the USPTO determine if a nonstatutory double patenting rejection is appropriate?
The USPTO determines if a nonstatutory double patenting rejection is appropriate by comparing the overall appearance of the claimed designs. The MPEP states:
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.
The examiner will consider whether:
- The conflicting design claims have overall appearances with basically the same design characteristics
- The differences between the two designs are 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.
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