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I have two granted patents - parent A and parent B, and each has a continuation: continuation A and continuation B. Parent B has a terminal disclaimer against parent A. Continuation A and and continuation B are both still pending.

Continuation B has received a non-final office action consisting solely of a provisional non-statutory double patenting rejection against continuation A.

If the only rejection is a provisional one, why has the application not simply been allowed?

What is the best response? File a terminal disclaimer and include a note in the response that finality of the next office action is precluded, or something else?

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It is a practice of Patent office to give a provisional Non-statuary double patent rejection based on continuation of prior granted/ pending application, if the claims are not substantially different from those of the prior application.

In order for a reply to an Office Action that includes a provisional non-statutory double patenting rejection to be considered responsive, “filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary.”

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    I now realise I missed out a signification point - the rejection is not based on the parent application, it is on continuation A, which is still pending. So the provisional non-stat is the only remaining rejection. – Keir Finlow-Bates Apr 4 at 13:07
  • Please look into the rejection, it would give under what applications the rejection was given. – RishiM Apr 4 at 16:06
  • The rejection is against continuation B based on similarities with continuation A, and both are still pending. – Keir Finlow-Bates Apr 4 at 17:52
  • File a terminal disclaimer to continuation B – RishiM Apr 5 at 4:36

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