822 Claims to Inventions That Are Not Patentably Distinct in Plural Applications of Same Applicant or Assignee [R-07.2022]
37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
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- (f) Applications containing patentably indistinct claims. Where two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.
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Where claims in two or more applications filed by the same applicant or assignee are patentably indistinct, a complete examination should be made of the claims of each application and all appropriate rejections should be entered in each application, including rejections based upon prior art. The claims of each application may also be rejected on the grounds of provisional double patenting based on the claims of the other application whether or not any claims avoid the prior art. Where appropriate, the same prior art may be relied upon in each of the applications. See also MPEP § 804.01.
The provisional double patenting rejection should continue to be made by the examiner in each application as long as there are patentably indistinct claims in more than one application unless that provisional double patenting rejection is the only rejection remaining in one of the applications. See MPEP § 1490 when the provisional double patenting rejection is the only rejection remaining in at least one application.
See MPEP § 804.03 for conflicting subject matter, different inventors, common ownership.
See MPEP § 608.01(m) for rejection of one claim over another in the same application.
See MPEP § 2190, subsection II, for res judicata.
See MPEP § 709.01 for one application in interference.
See MPEP § 806.04(h) to § 806.04(i) for species and genus in separate applications.
Wherever appropriate, such conflicting claims should be moved to a single application. This is particularly true where the two or more applications are due to, and consonant with, a requirement to restrict which the examiner now considers to be improper.
Form paragraph 8.29 should be used when the conflicting claims are identical or conceded by applicant not to be patentably distinct.
¶ 8.29 Patentably Indistinct Claims, Copending Applications
Claim [1] of this application is patentably indistinct from claim [2] of Application No. [3]. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
