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1504.06 Double Patenting [R-5] - 1500 Design Patents
1504.06 Double Patenting [R-5]
There are generally two types of double patenting rejections. One is the "same invention" type double patenting rejection based on 35 U.S.C. 171 which states in the singular that an inventor "may obtain a patent." The second is the "nonstatutory-type" double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from claims in a first patent. Nonstatutory double patenting includes rejections based on one-way determination of obviousness, and two-way determination of obviousness.
The charts in MPEP § 804 outline the procedure for handling all double patenting rejections.
Double patenting rejections are based on a comparison of the claims in a patent and an application or between two applications; the disclosure of the patent or application may be relied upon only to define the claim. 35 U.S.C. 171 specifically states that "a patent" may be obtained if certain conditions are met; this use of the singular makes it clear that only one patent may issue for a design.
Determining if a double patenting rejection is appropriate involves answering the following inquiries: Is the same design being claimed twice? If the answer is yes, then a rejection under 35 U.S.C. 171 should be given on the grounds of "same invention" type double patenting. If not, are the designs directed to patentably indistinct variations of the same inventive concept? If the answer is yes, then a rejection based on the nonstatutory type double patenting should be given.
Double patenting rejections are based on a comparison of claims. While there is a direct correlation between the drawings in a design application and the claim, examiners must be aware that no such correlation is necessary in a utility application or patent. Several utility patents may issue with the identical drawing disclosure but with claims directed to different inventions. So any consideration of possible double patenting rejections between a utility application or patent with a design application cannot be based on the utility drawing disclosure alone. Anchor Hocking Corp. v. Eyelet Specialty Co., 377 F. Supp. 98, 183 USPQ 87 (D. Del. 1974). The examiner must be able to recreate the design claimed from the utility claims without any reliance whatsoever on the drawings.
If a provisional double patenting rejection (of any type) is the only rejection remaining in two conflicting applications, the examiner should withdraw that rejection in one of the applications (e.g., the application with the earlier filing date) and permit the application to issue as a patent. The examiner should maintain the provisional double patenting rejection in the other application which rejection will be converted into a double patenting rejection when the first application issues as a patent. If more than two applications conflict with each other and one is allowed, the remaining applications should be cross rejected against the others as well as the allowed application. For this type of rejection to be appropriate, there must be either at least one inventor in common, or a common assignee. If the claims in copending design applications or a design patent and design applications have a common assignee but different inventive entities, rejections under 35 U.S.C. 102(e), (f) and (g)/ 103(a) must be considered in addition to the double patenting rejection. See MPEP § 804, § 2136, § 2137 and § 2138.
I. "SAME INVENTION" DOUBLE PATENTING REJECTIONS
A design - design statutory double patenting rejection based on 35 U.S.C. 171 prevents the issuance of a second patent for a design already patented. For this type of double patenting rejection to be proper, identical designs with identical scope must be twice claimed. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). A design - utility "same invention" double patenting rejection is based on judicial doctrine as there is no statutory basis for this rejection because neither 35 U.S.C. 101 nor 35 U.S.C. 171 can be applied against both claims. In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). The "same invention" type of double patenting rejection, whether statutory or nonstatutory, cannot be overcome by a terminal disclaimer. In re Swett, 145 F.2d 631, 172 USPQ 72 (CCPA 1971).
¶ 15.23.02 Summary for "Same Invention" - Type Double Patenting Rejections
Applicant is advised that a terminal disclaimer may not be used to overcome a "same invention" type double patenting rejection. In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969); MPEP § 804.02.
Examiner Note
This form paragraph should follow all "same invention" type double patenting rejections.
¶ 15.23 35 U.S.C. 171 Double Patenting Rejection (Design-Design)
The claim is rejected under 35 U.S.C. 171 on the ground of double patenting since it is claiming the same design as that claimed in United States Design Patent No. [1].
Examiner Note
Form paragraph 15.23.02 should follow all "same invention" type double patenting rejections.
¶ 15.23.01 3 5 U.S.C. 171 Provisional Double Patenting Rejection (Design-Design)
The claim is provisionally rejected under 35 U.S.C. 171 on the ground of double patenting since it is claiming the same design as that claimed in copending Application No. [1]. This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
Examiner Note
Form paragraph 15.23.02 should follow all "same invention" type double patenting rejections.
¶ 15.24.07 Double Patenting Rejection (Design-Utility)
The claim is rejected under the judicially created doctrine of double patenting as being directed to the same invention as that set forth in claim [1] of United States Patent No. [2]. See In re Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969).
Examiner Note
Form paragraph 15.23.02 should follow all "same invention" type double patenting rejections.
¶ 15.24.08 Provisional Double Patenting Rejection (Design-Utility)
The claim is provisionally rejected under the judicially created doctrine of double patenting as being directed to the same invention as that set forth in claim [1] of copending Application No. [2]. See In re Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969).
This is a provisional double patenting rejection because the claims have not in fact been patented.
Examiner Note
Form paragraph 15.23.02 should follow all "same invention" type double patenting rejections.
II. NONSTATUTORY DOUBLE PATENTING REJECTIONS
A rejection based on nonstatutory double patenting is based on a judicially created doctrine grounded in public policy so as to prevent the unjustified or improper timewise extension of the right to exclude granted by a patent. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).
A nonstatutory double patenting rejection of the obviousness-type applies to claims directed to the same inventive concept with different appearances or differing scope which are patentably indistinct from each other. Nonstatutory categories of double patenting rejections which are not the "same invention" type may be overcome by the submission of a terminal disclaimer.
**>In determining whether an obviousness-type 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 obviousness under 35 U.S.C. 103(a). After the factual inquiries mandated under Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), have been made, as with a rejection under 35 U.S.C. 103(a), the examiner must then determine whether the results of the inquiries support a conclusion of prima facie obviousness-type double patenting. To establish a prima facie case of obviousness-type double patenting: (A) the conflicting design claims must have overall appearances with basically the same design characteristics; and (B) the differences between the two designs must be 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. While the conflicting application or patent (if less than a year older than the application) used to establish a prima facie case of obviousness-type double patenting is not considered "prior art,"< the principle involved is the same. In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963)(see concurring opinion of Judge Rich).
In determining whether to make an obviousness-type double patenting rejection between designs having differing scope, the examiner should compare the reference claim with the application claim. A rejection is appropriate if:
(A) The difference in scope is minor and patentably indistinct between the claims being compared;
(B) Patent protection for the design, fully disclosed in and covered by the claim of the reference, would be extended by the allowance of the claim in the later filed application; and
(C) No terminal disclaimer has been filed.
This kind of obviousness-type double patenting rejection in designs will occur between designs which may be characterized as a combination (narrow claim) and a subcombination/element thereof (broad claim). See discussion in MPEP § 1504.05, subsection II, B. If the designs are patentably indistinct and are directed to the same inventive concept the examiner must determine whether the subject matter of the narrower claim is fully disclosed in and covered by the broader claim of the reference. If the reference does not fully disclose the narrower claim, then a double patenting rejection should not be made. The additional disclosure necessary to establish that the applicant was in possession of the narrower claim at the time the broader claim was filed may be in a title or **>descriptive statement< as well as in a broken line showing in the drawings. If the broader claim of the reference does not disclose the additional subject matter claimed in the narrower claim, then applicant could not have claimed the narrower claim at the time the application with the broader claim was filed and a rejection under nonstatutory double patenting would be inappropriate.
A nonstatutory double patenting rejection may be made between a patent and an application or provisionally between applications. Such rejection over a patent should only be given if the patent issued less than a year before the filing date of the application. If the patent is more than a year older than the application, the patent is considered to be "prior art" which may be applied in a rejection under 35 U.S.C. 102(b)/ 103(a). The purpose of a terminal disclaimer is to obviate a double patenting rejection by removing potential harm to the public by issuing a second patent. See MPEP § 804.
If the issue of double patenting is raised between a patent and a continuing application, examiners are reminded that this ground of rejection can only be made when the filing of the continuing application is voluntary and not the direct, unmodified result of restriction requirement under 35 U.S.C. 121. See MPEP § 804.01.
Examiners should particularly note that a design-design nonstatutory double patenting rejection does not always have to be made in both of the conflicting applications. For the most part, these rejections will be made in each of the conflicting applications; but, if the rejection is only appropriate in one direction, it is proper to reject only one application. The criteria for determining whether a one-way obviousness determination is necessary or a two-way obviousness determination is necessary is set forth in MPEP § 804. However, in design-utility situations, a two-way obviousness determination is necessary for the rejection to be proper. In re Dembiczak, 175 F.3d 994, 50 USPQ2d 1614 (Fed. Cir. 1999).
The following form paragraphs may be used in making a double patenting rejection. Explanation should be provided in the appropriate brackets.
¶ 15.24.06 Basis for Nonstatutory Double Patenting, "Heading Only"
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Examiner Note
This form paragraph must precede all nonstatutory double patenting rejections as a heading, except "same invention" type.
¶ 15.24 Obviousness-type Double Patenting Rejection (Single Reference)
The claim is rejected under the judicially created doctrine of the obviousness-type double patenting of the claim in United States Patent No. [1]. Although the conflicting claims are not identical, they are not patentably distinct from each other because [2].
Examiner Note
1. In bracket 1, insert prior U.S. Patent Number.
2. In bracket 2, the differences between the conflicting claims must be identified and indicated as being minor and not distinguishing the overall appearance of one over the other.
3. This form paragraph must be preceded by form paragraph 15.24.06 and followed by form paragraph 15.67.
¶ 15.24.03 Provisional Obviousness-Type Double Patenting Rejection (Single Reference)
The claim is provisionally rejected under the judicially created doctrine of the obviousness-type double patenting of the claim of copending Application No. [1]. Although the conflicting claims are not identical, they are not patentably distinct from each other because [2]. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Examiner Note
1. In bracket 1, insert conflicting application number.
2. In bracket 2, the differences between the conflicting claims must be identified and indicated as being minor and not distinguishing the overall appearance of one over the other.
3. This form paragraph must be preceded by form paragraph 15.24.06 and followed by form paragraph 15.67.
¶ 15.67 Rationale for 35 U.S.C. 103(a) Rejection (Single Reference)
It is well settled that it is unobviousness in the overall appearance of the claimed design, when compared with the prior art, rather than minute details or small variations in design as appears to be the case here, that constitutes the test of design patentability. See In re Frick, 275 F.2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).
¶ 15.25 Obviousness-Type Double Patenting Rejection (Multiple References)
The claim is rejected under the judicially created doctrine of the obviousness-type double patenting of the claim(s) in United States Patent No. [1] in view of [2]. At the time applicant made the design, it would have been obvious to a designer of ordinary skill in the art to [3] as demonstrated by [4].
Examiner Note
1. In bracket 1, insert conflicting patent number.
2. In bracket 2, insert secondary reference(s).
3. In bracket 3, insert an explanation of how the conflicting claim in the patent is modified.
4. In bracket 4, identify the secondary reference(s) teaching the modification(s).
5. This form paragraph must be preceded by form paragraph 15.24.06 and followed by form paragraph 15.68.
¶ 15.24.04 Provisional Obviousness-Type Double Patenting Rejection (Multiple References)
The claim is provisionally rejected under the judicially created doctrine of the obviousness-type double patenting of the claim of copending Application No. [1] in view of [2]. At the time applicant made the design, it would have been obvious to a designer of ordinary skill in the art to [3] as demonstrated by [4]. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Examiner Note
1. In bracket 1, insert conflicting application number.
2. In bracket 2, insert secondary reference(s).
3. In bracket 3, insert an explanation of how the conflicting claim in the copending application is modified.
4. In bracket 4, identify the secondary reference(s) teaching the modification(s).
5. This form paragraph must be preceded by form paragraph 15.24.06 and followed by form paragraph 15.68.
¶ 15.68 Rationale for 35 U.S.C. 103(a) Rejection (Multiple References)
This modification of the primary reference in light of the secondary reference is proper because the applied references are so related that the appearance of features shown in one would suggest the application of those features to the other. See In re Rosen, 673 F.2d 388, 213 USPQ 347 (CCPA 1982); In re Carter, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982), and In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956). Further, it is noted that case law has held that a designer skilled in the art is charged with knowledge of the related art; therefore, the combination of old elements, herein, would have been well within the level of ordinary skill. See In re Antle, 444 F.2d 1168,170 USPQ 285 (CCPA 1971) and In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).
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