Following up on a previous post (here) about the interplay between different statutory provisions (where some examiners bent on rejection tend to find the most novel claim elements as the most unclear ones), that case also illustrates another difficulty for applicants with respect to double patenting rejections.
Double patenting rejections are often not worth the fight when it is possible to meet the requirements of a terminal disclaimer. However, in some cases, the applicant cannot meet the common ownership requirement, or the loss of patent term is unacceptably long. And so, the applicant may elect to fight the rejection up through appeal, even if it is a provisional rejection.
However, as previously discussed (here), in the case of a provisional double patenting rejection, by the time the case reaches appeal, the pending application upon which the rejection was based may have issued, or the claims may have changed significantly. And even if an applicant presents arguments to the Board as to why the rejection is unsupported (or maybe no longer even applicable), the PTAB can refuse to reach the issue. A sample citation from numerous PTAB decisions is provided below where the PTAB refuses to decide the matter:
See Ex parte Jerg, Appeal No. 2011-000044, at 5-6 (BPAI Apr. 13, 2012) (designated informative)("Panels have the flexibility to reach or not reach provisional obviousness type double-patenting rejections.") ( citing Ex parte Monda, Appeal No. 2009-006448 (BPAI June 22, 2010) (designated precedential)).
The difficulty is that now the examiner has an excuse to re-open prosecution even after a full reversal - the excuse being that the examiner did not properly update the double patenting rejection. While a terminal disclaimer can address the issue and avoid such re-opening (if filed before the examiner picks up the case after appeal), as noted above, sometimes that option is off the table. And so the applicant is forced through, potentially, another round of prosecution and even appeal.
So, if at all possible, at the time of filing the appeal brief, if facts have changed as to the provisional double patenting rejection, point that out and illustrate why the PTAB should not defer the decision. Further, it is even possible to raise the issue in the Reply brief by arguing that good cause is shown (e.g., facts changed, such as the issuance/allowance of the application upon which the double patenting rejection is based) since those are circumstances largely outside the control of the applicant. See 37 DVR 41.41 (emphasis added).
37 CFR 41.41 Reply brief.
...
(b) Content.
...
(2) Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown.