Ex parte Jerg

Informative decision only: persuasive authority, not binding precedent. When claims relied upon in provisional obviousness-type double patenting rejections have been further prosecuted since the rejections were made, so that they clearly are, or may be, different in language or status from the claims originally considered by the Examiner, the Board may decline to reach those provisional rejections. The panel stated that panels have the flexibility to reach or not reach provisional obviousness-type double-patenting rejections. No prior precedent directly addressed this issue within the text; the Board cites only Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010), for the proposition that panels have flexibility to reach or not reach provisional double-patenting rejections. For an examiner, a provisional rejection over a reference application's claims that have since changed may go unreviewed, and the Board will not do the examiner's updating, so the rejection may be left unresolved on appeal. For an appellant, the decision means that merely showing the cited claims were amended, cancelled, or issued as a patent can lead the Board to decline to reach the rejection, though the other rejections were still affirmed and the double patenting issue remains open. The decision cites no Federal Circuit, CCPA or Supreme Court authority for this point; its authority on the point is the Board's own Moncla decision. LEGAL TEST OR STANDARD: No multi-factor test. The Board stated that panels have the flexibility to reach or not reach provisional obviousness-type double-patenting rejections, and declined to reach them because the claims now relied upon are not clearly the same as those originally considered by the Examiner when the rejections were initially made. TRIGGERING FACTS: Three provisional rejections over claims of co-pending applications. For the 381 application, the claims issued in the 270 patent after the Examiner's Answer and Reply Brief, with claim 13 incorporated into claim 12 and new claims 11-13 added, and neither side argued the merits of the patent claims. For the 383 application, it was unclear whether the Final Action considered claims 18-22, 33 and 34 in their currently pending form. For the 230 application, claim 11 was cancelled and the Examiner did not alter the rejection. KEY QUOTE: "We decline to reach these rejections because the claims now relied upon are not clearly the same as those originally considered by the Examiner when the rejections were initially made." (p. 5-6) PRIOR PRECEDENT AFFECTED: Follows Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010), cited for the flexibility of panels to reach or not reach provisional obviousness-type double-patenting rejections. No other prior Board decision is named. PRACTICE TIP: When provisional double patenting rejections rest on claims that have since been amended, cancelled or issued, tell the Board precisely how the cited claims changed, and keep the examiner's rejection current. Do not assume the Board will decide these rejections; address the merits of any rejection you want reviewed, since the Board may decline to reach it.