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.
The USPTO sets forth its intention to now enforce this portion of the rules by amending the text of MPEP 804 as of the Ninth Edition, Revision 07.2015 (October publication). MPEP 804 states that:
As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance.Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. Therefore, an application must not be allowed unless the required compliant terminal disclaimer(s) is/are filed and/or the withdrawal of the nonstatutory double patenting rejection(s) is made of record by the examiner. See MPEP § 804.02, subsection VI., for filing terminal disclaimers required to overcome nonstatutory double patenting rejections in applications filed on or after June 8, 1995. (Emphasis added.)
Thus, in order for a reply to an Office Action that includes a provisional non-statutory double patenting rejection to be considered responsive, “filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary.”