Ex parte Moncla

When the Board reverses all of the examiner's prior-art rejections under 35 U.S.C. § 102(b) and § 103(a) and the only remaining rejection on appeal is a provisional non-statutory obviousness-type double patenting rejection over claims of a later-filed, co-pending application, it is premature for the Board to address the provisional rejection, and the Board should not reach it. The Board vacates any affirmance of that provisional rejection and the resulting overall affirmance of the examiner's decision. No prior precedent directly addressed this issue in the text; the decision does not cite or overrule any earlier Board decision. For the examiner, a provisional double-patenting rejection standing alone after the prior-art rejections are reversed will not be adjudicated on appeal, so it cannot support an affirmance of the rejection of all claims. For the applicant or appellant, the Board's refusal to reach the rejection means the reversal of the §§ 102(b) and 103(a) rejections is not offset by an overall affirmance, and no Board ruling on the provisional ground is entered. The decision cites no Federal Circuit, CCPA or Supreme Court authority for its reasoning; it arose on remand after the Federal Circuit granted a joint motion for remand. LEGAL TEST OR STANDARD: The Board stated no multi-factor test. Its conclusion was that where the prior-art rejections under § 102 and § 103 have been reversed and the only remaining rejection is a provisional non-statutory double patenting rejection, it was premature for the Board to address the provisional rejection. TRIGGERING FACTS: The examiner finally rejected claims under 35 U.S.C. § 102(b) and § 103(a) and provisionally for non-statutory obviousness-type double patenting over claims 1-42 of a later-filed, co-pending application. The original panel reversed the prior-art rejections and affirmed the provisional rejection. The case came back on a Federal Circuit remand after a joint motion, and the only remaining rejection was the provisional double patenting rejection. KEY QUOTE: "We conclude that in this circumstance it was premature for the original Board panel to address the Examiner’s provisional rejection of the claims." (Paper 2009-006448, p. 3) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: When you win reversal of all prior-art rejections on appeal and only a provisional double patenting rejection over a co-pending application remains, ask the Board not to reach the provisional rejection and to avoid an overall affirmance based on it, citing Ex parte Moncla.