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822.01 Copending Before the Examiner [R-3] - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
822.01 Copending Before the Examiner [R-3]
37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
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(b) Where two or more applications filed by the same applicant contain conflicting claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.
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**Where claims in one application are unpatent-able over claims of another application of the same inventive entity (or different inventive entity with common ownership) because they **>contain conflicting claims<, a complete examination should be made of the claims of each application and all appropriate rejections should be entered in each application, including rejections based upon prior art. The claims of each application may also be rejected on the grounds of "provisional" double patenting on the claims of the other application whether or not any claims avoid the prior art. Where appropriate, the same prior art may be relied upon in each of the applications. See also MPEP § 804.01 and § 822.
**The "provisional" double patenting rejection should continue to be made by the examiner in each application as long as there are conflicting claims in more than one application unless that "provisional" double patenting rejection is the only rejection remaining in one of the applications. **>See MPEP § 804, subsection I.B. when the "provisional" double patenting rejection is the only rejection remaining in at least one application.<
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