[Patentpractice] Double patenting rejections

[Dan Feigelson]

How are they making OTDP rejections using prior art? Such rejections are to
be based on comparison of *claims*. Sounds like this examiner doesn't
understand how OTDP works.

On Wed, Dec 20, 2023 at 7:20 PM Katherine Koenig via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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
>
>
>

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