What must be done to claims that are deemed the same in another application during a double-patenting rejection?

When claims in an application are found to be the same as those in another application during a double-patenting rejection, the appropriate action is to cancel those specific claims. The rationale behind this is that double patenting prevents an applicant from obtaining two patents for the same invention. Therefore, if a claim is determined to be identical to one in a prior application, it cannot be allowed to stand in the new application.

Canceling the claims effectively resolves the issue of double patenting, as it ensures that no overlapping claims are being made for the same invention across multiple patents. This aligns with the principles of patent law that aim to maintain a clear distinction between inventions and avoid any monopolistic claims over the same intellectual property.

Understanding this context helps clarify why simply modifying the claims, filing a continuation application, or submitting an appeal would not resolve the fundamental issue of overlapping claims. Each of those actions would not satisfactorily address the double patenting concern, while canceling the claims directly eliminates the basis for the rejection.