[Patentpractice] Odd Obviousness-Type Double Patenting Rejection

Tue Jun 24 15:22:32 UTC 2025

I think some examiners recently had OTDP training.  I have a bizarre incorrect OTDP from a junior examiner…

The prior patent (neither the claims nor the specification) disclose a key limitation of our claimed compound.  The Examiner then cites to other npl (for treatment methods using the compound), but none of the references teach or suggest the key limitation.

In the straight up 103 rejection, the examiner did hobble together an obviousness rejection and cited to a reference that disclosed the key limitation for an obvious to modify the primary reference invention to have the key limitation, but that reference was not part of the OTDP…

So it seems like the examiner was just throwing crap on the wall and the SPE signed off on it.

Me thinks most examiners don’t understand OTDP rejections because they are not properly trained on OTDP… and I suspect they do OTDP rejections (even if it’s laughable) or else they might get a ‘ding’ if QC (who also don’t understand OTDP) finds another application/patent by one of the same inventors which is somewhat related in subject matter and thinks an OTDP rejection should have been made.

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of David Boundy via Patentpractice
Sent: Tuesday, June 24, 2025 10:42 AM
To: Richard Straussman <rstraussman at weitzmanip.com>
Cc: David Boundy <DavidBoundyEsq at gmail.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Odd Obviousness-Type Double Patenting Rejection

    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?

NO.  Obviousness-type double patenting is about the claims and only the claims.   A later claim with omitted elements can be obviously double-patenting over an earlier narrow claim, and a claim can be "obvious" over another f elements are substituted, and there's Schneller-type double patenting where the specification says that elements added in the later claim are essential to practice of the earlier broader claim.  But those three circumstances are the only ones I know of that permit difference between two claims.  Remember that obviousness-type double patenting was joined at the hip to same-invention double patenting until the mid-1960s.  They haven't diverged very far from each other.

        (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?

There's no such thing as "obvious to combine" in obviousness-type double patenting.   Obvious to modify, yes.  To combine, no.

Here's my form argument.  The case with the bad dicta is In re Longi--before you use this, you should Shepardize Longi abd AbbVie to make sure my understanding of the law from several years ago is still sound    Adapt to your circumstances.

            The Action then errs in introducing prior art into a double patenting issue to show a claim limitation.  Double patenting considers the claims, not claims in combination with prior art.  The specification of the reference patent may be considered for claim construction, and may be considered for a showing of “patentably indistinct,” but those situations are extremely narrow, and require specific showings and approval of a T.C. Director.[1]  The Action does not invoke those exceptions, does not make the required showings, and does not bear TC Director approval.  But, to Applicant’s knowledge, the reasoning in the Action—to add a limitation from another reference, without grounding in specific language of a specific reference claim—is not authorized in any Federal Circuit case nor in the MPEP.  Applicant's Reply of [date] requested that, if the Examiner is aware of a case or guidance to the contrary, a copy of that case or guidance would be helpful.  No such case or guidance has been supplied.  Appellant is aware of none.  In absence of any such case or guidance, the Examiner acted beyond his authority.
            In AbbVie Inc. v. Kennedy Institute of Rheumatology, 764 F.3d 1366, 1379, 112 USPQ2d 1001, 1010-11 (Fed Cir. 2014), the Federal Circuit considered a case much like this one—the challenge relied on external prior art to supplement the claims of the reference patent, instead of a comparison of only the claims.  The Federal Circuit rejected that attempt, though acknowledged a few exceptions.  AbbVie reiterates the general rule, “narrow species can be non-obvious and [patentable] despite a patent on its genus,” though with exceptions.  AbbVie, 764 F.3d at 1379, 112 USPQ2d at 1010.  This Action makes no showing that any of those exceptions apply.
            MPEP § 804(B)(1) instructs that when making an obvious-type double patenting analysis, the Action must consider two specific claims: an Action must select one specific pair of claims (one from the reference patent and one from this application), and make specific showings, including matching them up element-to-element, and show that those two specific claims are “not patentably distinct” from each other (for example, using one of the form paragraphs from MPEP Chapter 800).  An obviousness showing based on combination of the reference claim with other prior art is not an authorized approach.
            The Action makes no showing that any pair of claims (one in this application, one in any one of the ’927, ’397, ’786, ’748, or ’548 patent) are patentably indistinct from each other.  Note that it’s not required to address each and every claim, but MPEP § 804(II)(B) does require specific showings with respect to one claim pair.  The Action is insufficient to raise any rejection.

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            [1]  The most common fact pattern is analogous to In re Schneller, discussed in MPEP § 804(II)(B)(6).  In these cases, the earlier-to-issue patent discloses and claims a compound, and discloses either a small genus of methods of use, or identifies one specific method of use as being especially pertinent.  MPEP § 804(II)(B)(6) uses bold face to stress that Schneller situations “will be rare” and “The Technology Center (TC) Director must approve.”  In evaluating an earlier patent for obviousness-type double patenting, the disclosure of the reference patent may be evaluated to establish that the later claim is “not patentably distinct” from the earlier, as an exception to the general rule that double patenting requires claim limitations that are not in one-for-one identical-or-obvious relationship.  E.g., UCB, Inc. v. Accord Healthcare, Inc., 890 F.3d 1313, 1323-25 (Fed. Cir. 2018); Eli Lilly and Co. v. Teva Parenteral Medicines, Inc., 689 F.3d 1368, 1378-80, 104 USPQ2d 1134, 1141-43 (Fed. Cir. 2012).  But none of these cases permits what the Examiner attempts here—introducing external prior art to gap-fill differences between the present claim and the reference claim.  No case offers license to look outside the reference patent to external prior art.

            One early Federal Circuit case suggested in dicta that external prior art (outside the reference claim) could be considered in obviousness type double patenting, but did not explain the factual circumstances in which this might arise.  After several hours of searching in Westlaw, the undersigned attorney identified no Federal Circuit or PTAB case that had ever done so.  The only relevant case was AbbVie, which explains that there may be no situations that actually meet the earlier dicta.  No case was located that allowed for “motivation to combine” other references, only use of the reference patent’s specification as motivation to modify the reference claim.

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