Double patenting

8. The MPEP and USPTO rules and procedure provide for ways that a nonstatutory double patenting rejection

can be overcome. Which of the following is an effective way to overcome a nonstatutory double patenting rejection?

(A) Filing a 37 CFR 1.131 affidavit to swear behind the patent on which the rejection is based.

(B) Filing a terminal disclaimer under 37 CFR 1.321(c).

(C) Filing a 37 CFR 1.131 affidavit arguing that the claims are for different inventions

that are not patentably distinct.

(D) Filing a reply arguing that there is only one common inventor regarding the claims of the application

and the claims of the patent.

(E) All of the above.

8. ANSWER: Choice (B) is the correct answer. MPEP § 804.02, subpart (II) reads, “A rejection based on a

nonstatutory type of double patenting can be avoided by filing a terminal disclaimer in the application

or proceeding in which the rejection is made.” Choices (A) and (C) are each incorrect. MPEP § 804.02,

reads, “The use of a 37 C.F.R. § 1.131 affidavit in overcoming a double patenting rejection is

inappropriate…37 C.F.R. § 1.131 is inapplicable if the claims of the application and the patent are

‘directed to substantially the same invention.’ It is also inapplicable if there is a lack of ‘patentable

distinctness’ between the claimed subject matter.” Choice (C) is further incorrect since a nonstatutory

double patenting rejection can be based on the claims not being patentably distinct. MPEP § 804, subpart

(II)(B)(1). Choice (D) is incorrect because MPEP § 804, subpart (I)(A) reads, “Double patenting may exist

between an issued patent and an application filed by the same inventive entity, or by an inventive entity

having a common inventor with the patent.” Choice (E) is incorrect because choices (A), (C), and (D) are

each incorrect.