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1504.06 MANUAL OF PATENT EXAMINING PROCEDURE
proper to reject only one application. The criteria for
determining whether a one-way obviousness determination
is necessary or a two-way obvionsness determination
is necessary is set forth in MPEP § 804.
However, in design-utility situations, a two-way obviousness
determination is necessary for the rejection to
be proper. In re Dembiczak, 175 F.3d 994,
50 USPQ2d 1614 (Fed. Cir. 1999).
The following form paragraphs may be used in
making a double patenting rejection.
'If I5.24.06Basis for Nonstatutory Double Patenting,
"Heading Only"
The non-statutory double patenting rejection is based on a judidally
created doctrine grounded in public policy (a policy
reflected in the statute) so as to prevent the unjustified or improper
timewise extension of the "right to exclude" granted by a patent
and to prevent possible harassment by multiple assignees. .See In
re Goodman, 11 E3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In
reLongi, 759 E2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van
Ornum, 686 E2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel,
422 E2d438, 164 USPQ 619 (CCPA 1970); and In reThorington,
418 E2d 528,163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CPR
1.321(c) may be used to overcome an actual or provisional rejection
based on a nonstatutory double patenting ground provided the
conflicting application or patent is shown to be commonly owned
with this application. See 37 CPR 1.l30(b).
Effective January 1, 1994, a registered attorney or agent of
record may sign a terminal disclaimer. A terminal disclaimer
signed by the assignee must fully comply with 37 CPR 3.73(b).
Examiner Note:
This formparagraph must precede all nonstatutory double patenting
rejections as a heading, except "same invention" type.
'If 15.24 Obviousness-type Double Patenting Rejection
(Single Reference)
The claim is rejected under the judicially created doctrine of
the 'obviousness-type double patenting of the claim in United
States Patent No. [1] .. Although the conflicting claims are not
identical, they are not patentably distinct from each other because
[2].
Examiner Note:
1. In bracket 1, insert prior U.S. Patent Number.
2. In bracket 2, an explanation is necessary.
3. This form paragraph must be preceded by form paragraph
15.24.06 and followed by form paragraph 15.67.
'f[ 15.24.03 Provisional Obviousness-Type Double
Patenting Rejection (Single Reference)
The claim is provisionally rejected under the judicially created
doctrine of the obviousness-type double patenting of the claim of
copending Application No, [1]. Although the conflicting claims
are not identical, they are not patentably distinct from each other
because [2]. This is a provisional obviousness-type double pat-
August2001 1500-44
enting rejection because the conflicting claims have not in fact
been patented.
Examiner Note:
1. In bracket 1, insert conflicting application number.
2. In bracket 2, an explanation is necessary.
3. This form paragraph must be preceded by form paragraph
15.24.06 and followed by form paragraph 15.67.
'If 15.67 Rationale for 35 U.S.c. 103(a) Rejection (Single
Reference)
It is well settled that it is unobviousness in the overall appearance
of the claimed design, when compared with the prior art,
rather than minute details or small variations in design as appears
to be the case here, that constitutes the test of design patentability,
See In reFrick, 275 F.2d 741, 125 USPQ 191 (CCPA 1960) and In
reLomb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).
'If 15.25 Obviousness-Type Double Patenting Rejection
(Multiple References)
The claim is rejected under the judicially created doctrine of
the obviousness-type double patenting of the claim(s) in United
States Patent No. [1] in view of [2]. At the time applicant made
the design, it would have been obvious to a designer of ordinary
skill in the art to [3] as demonstrated by [4].
Examiner Note:
1. In bracket 1, insert conflicting patent number.
2. In bracket 2, insert secondary referencers).
3, In brackets 3 and 4, insert explanationof basis for rejection.
4. This form paragraph must be preceded by form paragraph
15.24.06 and followed by form paragraph 15.68.
'If 15.24.04 Provisional Obviousness-Type Double
Patenting Rejection (MUltiple References)
The claim is provisionally rejected under the judicially created
doctrine of the obviousness-type double patenting of the claim of
copending Application No. [1] in view of [2]. At the time applicant
made the design; it would have been obvious to a designer of
ordinary skill in the art to [3] as demonstrated by [4]. This is a
provisional obviousness-type double patenting rejection because
the conflicting claims have not in fact been patented.
Examiner Note:
1. In bracket 1, insert conflicting application number.
2. Inbracket 2, insert secondaryreference(s).
3. In bracket 3, insert an explanation.
4. This form paragraph must be preceded by form paragraph
15.24.06 and followed by form paragraph 15.68.
'f[ 15.68 Rationalefor 35 U.S.c. 103(a) Rejection (Multiple
References)
This modification of the basic reference in light of the secondary
prior art is proper because the applied references are so related
that the appearance of features shown in one would suggest the
application of those features to the other. See In re Rosen, 673
F.2d 388, 213 USPQ 347 (CCPA 1982); In re Carter, 673 F.2d
1378, 213 USPQ 625 (CCPA 1982), and In re Glavas, 230 F.2d
447,109 USPQ 50 (CCPA 1956). Further, ilis noted that case law