In order to promote uniform practice, every Office action containing a rejection on the ground of nonstatutory double patenting which relies on the parent application to reject the claims in a divisional application where the divisional application was filed because of a requirement to restrict made by the examiner under 35 U.S.C. 121, including a requirement to elect species, must be submitted to the Technology Center Director for approval prior to mailing. If the rejection on the ground of double patenting is disapproved, it shall not be mailed but other appropriate action shall be taken. Note MPEP § 1003.
When a claimed invention that was the subject of a restriction requirement in one application is presented in a divisional application, a nonstatutory double patenting rejection cannot be applied to that claimed invention unless the restriction requirement was withdrawn. A nonstatutory double patenting rejection may be appropriate in situations in which the invention presented in the divisional is not the same invention that was the subject of the restriction requirement. “When the PTO requires an applicant to withdraw claims to a patentably distinct invention (a restriction requirement), § 121shields those withdrawn claims in a later divisional application against rejection over a patent that issues from the original application…. [I]f an examiner issues a restriction requirement between patentably indistinct claims, two patents may issue and prolong patent protection beyond the statutory term on obvious variants of the same invention. This prolongation would occur because section 121 would immunize the restricted application against nonstatutory double patenting rejections.” Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1381, 68 USPQ2d 1865, 1869 (Fed. Cir. 2003).
“[W]hen the existence of multiple patents is due to the administrative requirements imposed by the Patent and Trademark Office, 35 U.S.C. Section 121 provides that the inventor shall not be prejudiced by having complied with those requirements. Thus when two or more patents result from a PTO restriction requirement, whereby aspects of the original application must be divided into separate applications, Section 121 insulates the ensuing patents from the charge of double patenting.” Applied Materials Inc. v. Advanced Semiconductor Materials, 98 F.3d 1563, 1568, 40 USPQ2d 1481, 1484 (Fed. Cir. 1996) (citing Studiengesellschaft Kohle mbH v. Northern Petrochemical Co., 784 F.2d 351, 354, 228 USPQ 837, 840 (Fed. Cir. 1986)).
“Section 121 shields claims against a double patenting challenge if consonance exists between the divided groups of claims and an earlier restriction requirement. If a restriction requirement does not clearly set forth the line of demarcation, then challenged claims could not satisfy the consonance requirement.” Geneva Pharm, 349 F.3d at 1381, 68 USPQ2d at 1871.
“Consonance requires that the line of demarcation between the ‘independent and distinct inventions’ that prompted the restriction requirement be maintained … Where that line is crossed the prohibition -[against double patenting in] the third sentence of Section 121 does not apply.” Symbol Techs, Inc. v. Opticon, Inc., 935 F.2d 1569, 1579, 19 USPQ2d 1241, 1249 (Fed. Cir. 1991) (quoting Gerber Garment Technology Inc. v. Lectra Systems Inc., 916 F.2d 683, 688, 16 USPQ2d 1436, 1440 (Fed. Cir. 1990)); see also MPEP § 804.01. “ However, even if such consonance is lost, double patenting does not follow if the requirements of Section 121 are met or if the claims are in fact patentably distinct.… The purpose of Section 121 is to accommodate administrative convenience and to protect the patentee from technical flaws based on this unappealable examination practice.” Applied Materials, 98 F.3d at 1568, 40 USPQ at 1484.