[Patentpractice] Double patenting rejections

[Katherine Koenig]

Happy holidays, everyone!

I've been seeing 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.

I've seen some of David Boundy's very helpful discussions about OTDP rejections (thank you, David!), but am still having trouble coming up with a solution when the Examiners are instructed to make the refusal.  Has anyone seen a similar trend, and have you had any luck in overcoming?

Best regards,

Katherine

Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>

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