[Patentpractice] Odd Obviousness-Type Double Patenting Rejection

[Dan Feigelson]

David, I made the comparison. That bit about "second reference used to
support" an OTDP rejection was added in the 2022 version of the MPEP, and
as you note it was added without citation to authority.

For anyone who cares, I attach a table showing the last three version of
MPEP 804 II B, with differences between the 2019 and 2022 versions
highlighted. The "second reference" language appears to be the most
significant change, and it doesn't appear that the section was further
revised in the 2024 version.

Dan

On Tue, Jun 24, 2025 at 6:44 PM David Boundy via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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.
>>
>>
>>
>>

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