What are the requirements for a proper obviousness-type double patenting rejection?
What are the requirements for a proper obviousness-type double patenting rejection?
An obviousness-type double patenting (OTDP) rejection is used to prevent the unjustified extension of patent rights. The MPEP outlines the requirements for a proper OTDP rejection:
A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s).
(MPEP 804)
To make a proper OTDP rejection, the examiner must:
- Identify the conflicting claims in the application and the reference patent or application
- Explain why the claims are not patentably distinct
- Provide reasoning for why the claims would have been obvious over each other
The applicant can overcome an OTDP rejection by filing a terminal disclaimer or by amending the claims to be patentably distinct.
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