Editing MPEP 800
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{{Statute|35 U.S.C. 101. Inventions Patentable.}} | {{Statute|35 U.S.C. 101. Inventions Patentable.}} | ||
Whoever invents or discovers any new and useful process, | Whoever invents or discovers any new and useful process, | ||
machine, manufacture, or composition of matter or any new and | machine, manufacture, or composition of matter or any new and | ||
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doctrine is that: | doctrine is that: | ||
The public should . . . be able to act on the assumption that upon the expiration of the patent it will be free to use not only the invention claimed in the patent but also modifications | The public should . . . be able to act on the assumption that upon the expiration of the patent it will be free to use not only the invention claimed in the patent but also modifications | ||
or variants which would have been obvious to those | or variants which would have been obvious to those | ||
of ordinary skill in the art at the time the invention was | of ordinary skill in the art at the time the invention was | ||
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Chart II-B. Conflicting Claims Between: Application and a PatentChart II-B. Conflicting Claims Between: Application and a Patent | Chart II-B. Conflicting Claims Between: Application and a PatentChart II-B. Conflicting Claims Between: Application and a Patent | ||
I.INSTANCES WHERE DOUBLE PATENTING | |||
ISSUE CAN BE RAISED | |||
A double patenting issue may arise between two or | A double patenting issue may arise between two or | ||
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stage in the United States. | stage in the United States. | ||
A.Between Issued Patent and One or More | |||
Applications | |||
Double patenting may exist between an issued | Double patenting may exist between an issued | ||
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of the rights granted in the first patent. | of the rights granted in the first patent. | ||
B.Between Copending Applications—Provisional | |||
Rejections | |||
Occasionally, the examiner becomes aware of two | Occasionally, the examiner becomes aware of two | ||
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link the other two applications to each other. | link the other two applications to each other. | ||
2. Statutory Double Patenting Rejections (35 U.S.C. 101) | 2.Statutory Double Patenting Rejections (35 | ||
U.S.C. 101) | |||
A terminal disclaimer cannot be filed to obviate a | A terminal disclaimer cannot be filed to obviate a | ||
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patent. | patent. | ||
C.Between One or More Applications and a | |||
Published Application - Provisional Rejections | |||
Double patenting may exist where a published | Double patenting may exist where a published | ||
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double patenting rejections in subsection B. above. | double patenting rejections in subsection B. above. | ||
D.Reexamination Proceedings | |||
A double patenting issue may raise a substantial | A double patenting issue may raise a substantial | ||
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patenting rejection. | patenting rejection. | ||
II.REQUIREMENTS OF A DOUBLE PATENTING | |||
REJECTION (INCLUDING PROVISIONAL | |||
REJECTIONS) | |||
When a double patenting rejection is appropriate, it | When a double patenting rejection is appropriate, it | ||
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determine the following: | determine the following: | ||
(A) Whether a double patenting rejection is prohibited | (A)Whether a double patenting rejection is prohibited | ||
by the third sentence of 35 U.S.C. 121 (see | by the third sentence of 35 U.S.C. 121 (see | ||
MPEP § 804.01; if such a prohibition applies, a double | MPEP § 804.01; if such a prohibition applies, a double | ||
patenting rejection cannot be made); | patenting rejection cannot be made); | ||
(B) Whether a statutory basis exists; and | (B)Whether a statutory basis exists; and | ||
(C) Whether a nonstatutory basis exists. | (C)Whether a nonstatutory basis exists. | ||
Each determination must be made on the basis of | Each determination must be made on the basis of | ||
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1968). | 1968). | ||
A. Statutory Double Patenting — 35 U.S.C. 101 | A.Statutory Double Patenting — 35 U.S.C. 101 | ||
In determining whether a statutory basis for a double | In determining whether a statutory basis for a double | ||
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granted by a patent. | granted by a patent. | ||
1. Obviousness-Type | 1.Obviousness-Type | ||
A nonstatutory obviousness-type double patenting | A nonstatutory obviousness-type double patenting | ||
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(b)Two-Way Obviousness | (b)Two-Way Obviousness | ||
If the patent is the later filed application, the question | If the patent is the later filed application, the question | ||
of whether the timewise extension of the right to | of whether the timewise extension of the right to | ||
exclude granted by a patent is justified or unjustified | exclude granted by a patent is justified or unjustified | ||
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extended, albeit in somewhat different form, for several | extended, albeit in somewhat different form, for several | ||
years beyond the expiration of his patent, were we to | years beyond the expiration of his patent, were we to | ||
reverse. 397 F.2d at 355-56, 158 USPQ at 216 (emphasis in | reverse. | ||
397 F.2d at 355-56, 158 USPQ at 216 (emphasis in | |||
original). | original). | ||
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397 F.2d at 355, 158 USPQ at 215. | 397 F.2d at 355, 158 USPQ at 215. | ||
The decision in In re Schneller did not establish a | The decision in In re Schneller did not establish a | ||
rule of general application and thus is limited to the | rule of general application and thus is limited to the | ||
particular set of facts set forth in that decision. The | particular set of facts set forth in that decision. The | ||
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418 F.2d 528, 163 USPQ 644 (CCPA 1969). | 418 F.2d 528, 163 USPQ 644 (CCPA 1969). | ||
In Carman Indus., the court held that no double | In Carman Indus., the court held that no double | ||
patenting existed between a design and utility patent | patenting existed between a design and utility patent | ||
since the claims in the utility patent, drawn to the interior | since the claims in the utility patent, drawn to the interior |