[Patentpractice] Odd Obviousness-Type Double Patenting Rejection

[Richard Straussman]

All,

     I have an atypical obviousness-type double patenting rejection that 
I can't seem to wrap my head around as being proper.  The Office Action 
notes a specific aspect that is recited in the later claims and absent 
from the applicant's prior patent that is the basis for the rejection.  
But then the Examiner cites a generic third-party reference and states 
that it would have been obvious to combine them so that the later claims 
are not patentably distinct. The problem is, that the cited third-party 
reference does not suggest use in the current claimed context  and, even 
if it did, it does not meet the limitation of the current claims.

     By analogous example, the later claim specifically recites a 
"single layer, non-laminated, homogeneous sheet" and the third-party 
reference only discloses various multi-layer, homogeneous laminated 
sheets.  The office action states that it is known in the art to make 
sheets that are homogeneous and non-homogeneous and so it would have 
been obvious to produce the claimed invention using  the sheets as 
disclosed by the third-party reference (ignoring the single 
layer/multi-layer and non-laminated/laminated express differences).

     My questions are:
         (1) Is the rejection referencing the third party reference 
proper at all (other than for something trivial), particularly when the 
context is different and all the missing element aspects are not met?
         (2) Is it proper to argue against the obviousness-type double 
patenting as if this was a simple obviousness rejection, i.e., not every 
element is disclosed and so even if the two were combined, it would not 
result in the claimed invention due to the absence of any teaching or 
suggestion of specifically having either or both of a single layer 
and/or a non-laminated sheet?

     Thanks in advance.

-- 
*Richard Straussman**
* *Senior Counsel*
* Registered Patent Attorney
* Member NY, NJ & CT Bars
*. . . . . . . . . . . . . .*
*Weitzman Law Offices, LLC*
*Intellectual Property Law*
425 Eagle Rock Avenue, Suite 401
Roseland, NJ 07068
*direct line* 973.403.9943
*main* 973.403.9940
*fax*973.403.9944
*e-mail*rstraussman at weitzmanip.com

*http://www.weitzmanip.com
*


-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250624/2eed3cc2/attachment.html>