Question:
How can an applicant overcome a statutory double patenting rejection?
Answer:
A terminal disclaimer cannot be filed to obviate a statutory double patenting rejection. A statutory double patenting rejection can be overcome by canceling or amending the conflicting claims so they are no longer coextensive in scope. A complete response to a statutory double patenting rejection is either a reply by applicant showing that the claims subject to the rejection are not the same as the reference claims, an amendment in response to the statutory double patenting rejection, or cancelation of the conflicting claims. Such a response is required even when the statutory double patenting rejection is provisional.
When two or more utility or plant patent applications, filed on or after June 8, 1995, each contain a provisional statutory double patenting rejection, and that is the only rejection remaining in the application having the earliest patent term filing date, the examiner should withdraw the rejection in the application having the earliest patent term filing date and permit that application to issue as a patent, thereby converting the provisional statutory double patenting rejection in the other application(s) into a statutory double patenting rejection when the application with the earliest patent term filing date issues as a patent.
Chapter Details:
The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting.
The answer is from the 9th Edition, Revision 01.2024, Published November 2024. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 804 of the MPEP.  The following is a brief summary of section 804.
804 Definition of Double Patenting
This section provides specific details on double patenting. Essentially, double patenting seeks to prevent the unjustified extension of patent rights beyond the term of a patent. This section covers when double patenting is possible along with the requirements of double patenting rejections. Obviousness type nonstatutory double patenting is also discussed including two-way obviousness.
This section also discusses disclaimers which may be used to disclaim or dedicate part of a patent term. The topics discussed include terms, terminal disclaimers, statutory double patenting rejections, and nonstatutory rejections.