Author: Stephanie M. Sanders
Editor: Adriana L. Burgy
It has been common practice for an applicant to request that a provisional non-statutory double patenting rejection (also called an obviousness-type double patenting rejection) be held in abeyance until the claims are otherwise found to be allowable. The USPTO, however, recently begun rejecting such requests based on 37 CFR § 1.111(b), which, despite not being enforced, has been in existence for more than a decade.
Section 1.111(b), entitled “Reply by applicant or patent owner to a non-final Office action,” states that “to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action… If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated” (emphasis added). Because a double patenting rejection is not “as to form,” the USPTO argues such a rejection should not be held in abeyance. Continue reading