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<font face="Times New Roman">Kathy you said the "</font>ejection was
cobbled together with the applicant’s application...." Did you
really mean application, and not pending claims in the other
application (or patent)? <br>
<br>
In the normal situation, “the examiner asks whether the application
claims are obvious over the patent claims,” see In re Janssen,
2017-1257 (Fed. Cir. 1/23/2018), and the patent's disclosure is
irrelevant but for construing the patent's claims. <br>
<br>
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<p>Best regards, Rick Neifeld, Ph.D., Patent Attorney<br>
Neifeld IP Law PLLC<br>
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<div class="moz-cite-prefix">On 12/20/2023 12:17 PM, Katherine
Koenig via Patentpractice wrote:<br>
</div>
<blockquote type="cite"
cite="mid:SA1PR15MB4808CF12426F0E64DE527F21BC96A@SA1PR15MB4808.namprd15.prod.outlook.com">eeing
an increase in obviousness-type double patenting rejections. This
was confirmed during an interview with an Examiner last week, who
said the internal guidance/training they’ve been receiving is to
issue them wherever possible, even if it’s a stretch. It seems
the policy reason is to reduce the occurrence/size of patent
families. It’s frustrating that this is the motivation and
outcome we’re seeing. I understand the policy of not extending
patent term for the same (or a truly obvious) invention, but in
one case an OTDP rejection was issued in light of applicant’s
unrelated, older patent that had absolutely nothing to do with the
current application. The rejection was cobbled together with the
applicant’s application + 2 prior art references, which also had
nothing to do with the current invention, but each disclosed the
use of one of the ingredients in the invention. The Examiner
didn’t agree with non-analogous art or motivation to combine
arguments, and we’re stuck trying to argue over our own reference
or accept a patent term that would expire in 2029.
</blockquote>
<br>
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