What is the Ex parte Whitelaw doctrine in patent examination?
The Ex parte Whitelaw doctrine is a specific ground for rejecting patent claims that are substantially duplicative. As explained in MPEP 2173.05(n):
“Also, it is possible to reject one claim over an allowed claim if they differ only by subject matter old in the art. This ground of rejection is set forth in Ex parte Whitelaw, 1915 C.D. 18, 219 O.G. 1237 (Comm’r Pat. 1914). The Ex parte Whitelaw doctrine is restricted to cases where the claims are unduly multiplied or are substantial duplicates.”
This doctrine allows examiners to reject a claim that is substantially similar to an already allowed claim, differing only in elements that are well-known in the prior art. However, its application is limited to situations where claims are either unduly multiplied or are substantial duplicates of each other.
It’s important to note that this doctrine is distinct from, but related to, the concept of undue multiplicity. While undue multiplicity deals with an excessive number of claims that create confusion, the Ex parte Whitelaw doctrine specifically addresses the relationship between individual claims.
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