[Patentpractice] Double patenting rejections

[Rick Neifeld]

Kathy you said the "ejection was cobbled together with the applicant’s 
application...."  Did you really mean application, and not pending 
claims in the other application (or patent)?

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.

Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Office: 1-7034150012
Mobile: 1-7034470727
Fax: 1-5712810045
Email: rneifeld at neifeld.com
and richardneifeld at gmail.com
Web: https://neifeld.com/
This is a confidential communication of counsel. If you are not the 
intended recipient, delete this email and notify the sender that you did so.

On 12/20/2023 12:17 PM, Katherine Koenig via Patentpractice wrote:
> 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. 
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