[Patentpractice] Odd Obviousness-Type Double Patenting Rejection

[Richard Straussman]

David,

I think the issue is from the below section (I have bolded) of MPEP 804 
whihc seems to allow for a secondary reference to be used (it seems like 
for purposes of interpreting a term in one or the other of the two items 
being considered (i.e., what a PHOSITA would understand the term to 
mean/encompass):

    3.    Obviousness Analysis

    A nonstatutory double patenting rejection, if not based on an
    anticipation rationale or an "unjustified timewise extension"
    rationale, is "analogous to [a failure to meet] the nonobviousness
    requirement of 35 U.S.C. 103
    <https://www.bitlaw.com/source/35usc/103.html> " except that the
    patent disclosure principally underlying the double patenting
    rejection is not considered prior art. In re Braithwaite, 379 F.2d
    594, 154 USPQ 29 (CCPA 1967). Even though the specification of the
    applied patent or copending application is not prior art, it may
    still be used to interpret the applied claims. See paragraph II.B.1,
    above. The analysis employed with regard to nonstatutory double
    patenting is "similar to, but not necessarily the same as that
    undertaken under 35 USC § 103." In re Braat, 937 F.2d 589, 592-93,
    19 USPQ2d 1289, 1292 (Fed. Cir. 1991) (citing In re Longi, 759 F.2d
    887, 892 n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985)); see also
    Geneva Pharmaceuticals, 349 F.3d at 1378 n.1, 68 USPQ2d at 1869 n.1
    (Fed. Cir. 2003); In re Basell Poliolefine, 547 F.3d 1371, 1379, 89
    USPQ2d 1030, 1036 (Fed. Cir. 2008).

    In view of the similarities, the factual inquiries set forth in
    Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966) that are
    applied for establishing a background for determining obviousness
    under 35 U.S.C. 103 <https://www.bitlaw.com/source/35usc/103.html>
    should be considered when making a nonstatutory double patenting
    analysis based on "obviousness." See MPEP § 2141
    <https://www.bitlaw.com/source/mpep/2141.html> for guidelines for
    determining obviousness. These factual inquiries are summarized as
    follows:

      * (A) Determine the scope and content of a patent claim relative
        to a claim in the application at issue;
      * (B) Determine the differences between the scope and content of
        the patent claim as determined in (A) and the claim in the
        application at issue;
      * (C) Determine the level of ordinary skill in the pertinent art; and
      * (D) Evaluate any objective indicia of nonobviousness.

    Any nonstatutory double patenting rejection made under the
    obviousness analysis should make clear:

      * (A) The differences between the inventions defined by the
        conflicting claims — a claim in the patent compared to a claim
        in the application; and
      * (B) The reasons why a person of ordinary skill in the art would
        conclude that the invention defined in the claim at issue would
        have been an obvious variation of the invention defined in a
        claim in the patent.

    *Any secondary reference used to support an obviousness analysis for
    a nonstatutory double patenting rejection must be prior art under 35
    U.S.C. 102 <https://www.bitlaw.com/source/35usc/102.html> or pre-AIA
    35 U.S.C. 102*. See MPEP § 2120
    <https://www.bitlaw.com/source/mpep/2120.html> et seq. for more
    information on determining if a reference is prior art and MPEP §
    2141 <https://www.bitlaw.com/source/mpep/2141.html>, subsection
    II.A, for determining the scope and content of the prior art.



*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

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*



On 6/24/2025 10:41 AM, David Boundy wrote:
> MPEP § 804(II)(B)(6)
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