[Patentpractice] Odd Obviousness-Type Double Patenting Rejection

David Boundy DavidBoundyEsq at gmail.com
Tue Jun 24 15:42:17 UTC 2025 

Could you check for me -- I'll bet that sentence wasn't in the MPEP six
years ago.  Last time I looked (three or four years ago) there was no
mention of third-party art.  I'll be this was added recently.  Notice that
there's no cite on it.

Prior art would be usable to show that two alternatives (in the two claims)
are substitutable for each other (in the manner of a *Donohue*
two-reference anticipation), or for claim construction.  I can't think of
any circumstance in which an external reference could be *combinable *in a
double patenting rejection.

The important parts of are these


   - (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.
   - [no mention of third-party prior art here]

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.
   - [no mention of third-party prior art here either]

Another goodie sentence in MPEP 804(II))(B)(1):

When considering whether the invention defined in a claim of an application
would have been anticipated by or is an obvious variation of the invention
defined in the claim of a patent or copending application, no part of the
reference patent or application may be used as if it were prior art. *General
Foods Corp. v. Studiengesellschaft Kohle mbH*, 972 F.2d 1272, 1281, 23
USPQ2d 1839, 1846 (Fed. Cir. 1992) (“Our precedent makes clear that the
disclosure of a patent cited in support of a double patenting rejection
cannot be used as though it were prior art, even where the disclosure is
found in the claims”).

If the disclosure of the reference patent can't be relied on, certainly no
third-party reference can come in.

On Tue, Jun 24, 2025 at 11:25 AM Richard Straussman <
rstraussman at weitzmanip.com> wrote:

> 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
>
>
> *http://www.weitzmanip.com <http://www.weitzmanip.com/> *
>
>
>
> On 6/24/2025 10:41 AM, David Boundy wrote:
>
> MPEP § 804(II)(B)(6)
>
>
>

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