Editing MPEP 800

801Introduction 

This chapter is limited to a discussion of the subject 
of restriction and double patenting under Title 35 of 
the United States Code and Title 37 of the Code of 
Federal Regulations as it relates to national applications 
filed under 35 U.S.C. 111(a). The discussion of 
unity of invention under the Patent Cooperation 
Treaty Articles and Rules as it is applied as an International 
Searching Authority, International Preliminary 
Examining Authority, and in applications 
entering the National Stage under 35 U.S.C. 371 as a 
Designated or Elected Office in the U.S. Patent and 
Trademark Office is covered in Chapter 1800.

802Basis for Practice in Statute and 
Rules 

The basis for restriction and double patenting practices 
is found in the following statute and rules:

35 U.S.C. 121. Divisional applications.

If two or more independent and distinct inventions are claimed 
in one application, the Director may require the application to be 
restricted to one of the inventions. If the other invention is made 
the subject of a divisional application which complies with the 
requirements of section 120 of this title it shall be entitled to the 
benefit of the filing date of the original application. A patent issuing 
on an application with respect to which a requirement for 
restriction under this section has been made, or on an application 
filed as a result of such a requirement, shall not be used as a reference 
either in the Patent and Trademark Office or in the courts 
against a divisional application or against the original application 
or any patent issued on either of them, if the divisional application 
is filed before the issuance of the patent on the other application. 
If a divisional application is directed solely to subject matter 
described and claimed in the original application as filed, the 
Director may dispense with signing and execution by the inventor. 
The validity of a patent shall not be questioned for failure of the 
Director to require the application to be restricted to one invention. 


37 CFR 1.141. Different inventions in one national 
application.

(a) Two or more independent and distinct inventions may not 
be claimed in one national application, except that more than one 
species of an invention, not to exceed a reasonable number, may 
be specifically claimed in different claims in one national application, 
provided the application also includes an allowable claim 
generic to all the claimed species and all the claims to species in 
excess of one are written in dependent form (§ 1.75) or otherwise 
include all the limitations of the generic claim.

(b) Where claims to all three categories, product, process of 
making, and process of use, are included in a national application, 
a three way requirement for restriction can only be made where 
the process of making is distinct from the product. If the process 
of making and the product are not distinct, the process of using 
may be joined with the claims directed to the product and the process 
of making the product even though a showing of distinctness 
between the product and process of using the product can be 
made. 

37 CFR 1.142. Requirement for restriction.

(a)If two or more independent and distinct inventions are 
claimed in a single application, the examiner in an Office action 
will require the applicant in the reply to that action to elect an 
invention to which the claims will be restricted, this official action 
being called a requirement for restriction (also known as a 
requirement for division). Such requirement will normally be 
made before any action on the merits; however, it may be made at 
any time before final action.

(b)Claims to the invention or inventions not elected, if not 
canceled, are nevertheless withdrawn from further consideration 
by the examiner by the election, subject however to reinstatement 
in the event the requirement for restriction is withdrawn or overruled.


The pertinent Patent Cooperation Treaty (PCT) 
Articles and Rules are cited and discussed in Chapter 
1800. Sections 1850, 1875, and 1893.03(d) should be 
consulted for discussions on unity of invention: 

(A)before the International Searching Authority; 

(B)before the International Preliminary Examining 
Authority; and 

(C)in the National Stage under 35 U.S.C. 371.

802.01Meaning of “Independent” and 
“Distinct” [R-5]

35 U.S.C. 121 quoted in the preceding section 
states that the Director may require restriction if two 
or more “independent and distinct” inventions are 
claimed in one application. In 37 CFR 1.141, the 
statement is made that two or more “independent and 
distinct inventions” may not be claimed in one application.


This raises the question of the inventions as 
between which the Director may require restriction. 
This, in turn, depends on the construction of the 
expression “independent and distinct” inventions.




 

“Independent”, of course, means not dependent, 
or unrelated. If “distinct” means the same thing, then 
its use in the statute and in the rule is redundant. If 
“distinct” means something different, then the question 
arises as to what the difference in meaning 
between these two words may be. The hearings before 
the committees of Congress considering the codification 
of the patent laws indicate that 35 U.S.C. 121: 
“enacts as law existing practice with respect to division, 
at the same time introducing a number of 
changes.” 

The report on the hearings does not mention as a 
change that is introduced, the inventions between 
which the Director may properly require division.

The term “independent” as already pointed out, 
means not dependent, or unrelated. A large number 
of inventions between which, prior to the 1952 Act, 
division had been proper, are dependent inventions, 
such as, for example, combination and a subcombination 
thereof; as process and apparatus used in the 
practice of the process; as composition and the process 
in which the composition is used; as process and 
the product made by such process, etc. If section 121 
of the 1952 Act were intended to direct the Director 
never to approve division between dependent inventions, 
the word “independent” would clearly have 
been used alone. If the Director has authority or discretion 
to restrict independent inventions only, then 
restriction would be improper as between dependent 
inventions, e.g., the examples used for purpose of 
illustration above. Such was clearly not the intent of 
Congress. Nothing in the language of the statute and 
nothing in the hearings of the committees indicate any 
intent to change the substantive law on this subject. 
On the contrary, joinder of the term “distinct” with the 
term “independent”, indicates lack of such intent. The 
law has long been established that dependent inventions 
(frequently termed related inventions) such as 
used for illustration above may be properly divided if 
they are, in fact, “distinct” inventions, even though 
dependent. 

I.INDEPENDENT

The term “independent” (i.e., unrelated) 
means that there is no disclosed relationship between 
the two or more inventions claimed, that is, they are 
unconnected in design, operation, and effect. For 
example, a process and an apparatus incapable of 
being used in practicing the process are independent 
inventions. See also MPEP § 806.06 and § 808.01.

II.RELATED BUT DISTINCT

Two or more inventions are related (i.e., not independent) 
if they are disclosed as connected in at least 
one of design (e.g., structure or method of manufacture), 
operation (e.g., function or method of use), or 
effect. Examples of related inventions include combination 
and part (subcombination) thereof, process and 
apparatus for its practice, process and product made, 
etc. In this definition the term related is used as an 
alternative for dependent in referring to inventions 
other than independent inventions.

Related inventions are distinct if the inventions as 
claimed are not connected in at least one of design, 
operation, or effect (e.g., can be made by, or used in, a 
materially different process) and wherein at least one 
invention is PATENTABLE (novel and nonobvious) 
OVER THE OTHER (though they may each be 
unpatentable over the prior art). See MPEP 
§
 
806.05(c) (combination and subcombination) and 
§
 
806.05(j) (related products or related processes) for 
examples of when a two-way test is required for distinctness.


It is further noted that the terms “independent” and 
“distinct” are used in decisions with varying meanings. 
All decisions should be read carefully to determine 
the meaning intended.

802.02Definition of Restriction [R-3]

Restriction is the practice of requiring an 
applicant to elect a single claimed invention (e.g., 
a combination or subcombination invention, a product 
or process invention, a species within a genus) for 
examination when two or more independent inventions 
and/or two or more distinct inventions are 
claimed in an application.

803Restriction — When Proper [R-3]

Under the statute, the claims of an application 
may properly be required to be restricted to one of 
two or more claimed inventions only if they are able 
to support separate patents and they are either independent 
(MPEP § 802.01, § 806.06, and 
§
 
808.01) or distinct (MPEP §
 
806.05 - 
§
 
806.05(j)).




 

If the search and examination of all the claims 
in an application can be made without serious burden, 
the examiner must examine them on the merits, 
even though they include claims to 
independent or distinct inventions.



I. CRITERIA FOR RESTRICTION BETWEEN 
PATENTABLY DISTINCT INVENTIONS


There are two criteria for a proper requirement for 
restriction between patentably distinct inventions:

(A)The inventions must be independent (see 
MPEP § 802.01, § 806.06, § 808.01) or distinct 
as claimed (see MPEP § 806.05 - § 806.05(j)); 
and

(B)There would be a serious burden on the 
examiner if restriction is not required (see MPEP 
§
 
803.02, §
 
808, and §
 
808.02).



II. GUIDELINES

Examiners must provide reasons and/or examples 
to support conclusions, but need not cite documents to 
support the restriction requirement in most cases.

Where plural inventions are capable of being 
viewed as related in two ways, both applicable criteria 
for distinctness must be demonstrated to support a 
restriction requirement.

If there is an express admission that the claimed 
inventions would have been obvious over each 
other within the meaning of 35 U.S.C. 103, restriction 
should not be required. In re Lee, 199 USPQ 108 
(Comm’r Pat. 1978).

For purposes of the initial requirement, a serious 
burden on the examiner may be prima facie shown 
by appropriate explanation of separate classification, 
or separate status in the art, or a different field of 
search as defined in MPEP §
 
808.02. That prima facieshowing may be rebutted by appropriate showings or 
evidence by the applicant. Insofar as the criteria for 
restriction practice relating to Markush-type claims is 
concerned, the criteria is set forth in MPEP § 803.02. 
Insofar as the criteria for restriction or election practice 
relating to claims to genus-species, see MPEP 
§
 
806.04 - § 806.04(i) and § 808.01(a).

803.01Review by Examiner with at 
Least Partial Signatory Authority 
[R-3]

Since requirements for restriction under 35 U.S.C. 
121 are discretionary with the Director, it 
becomes very important that the practice under this 
section be carefully administered. Notwithstanding 
the fact that this section of the statute apparently protects 
the applicant against the dangers that previously 
might have resulted from compliance with an 
improper requirement for restriction, IT STILL 
REMAINS IMPORTANT FROM THE STANDPOINT 
OF THE PUBLIC INTEREST THAT NO 
REQUIREMENTS BE MADE WHICH MIGHT 
RESULT IN THE ISSUANCE OF TWO PATENTS 
FOR THE SAME INVENTION. Therefore, to guard 
against this possibility, only an examiner with permanent 
full signatory authority or temporary full signatory 
authority may sign final  Office actions 
containing a final requirement for restriction. An
examiner with permanent partial signatory authority 
or temporary partial signatory authority may sign 
non-final Office actions containing a final requirement 
for restriction.

803.02Markush Claims [R-5]

A Markush-type claim recites alternatives in a format 
such as “selected from the group consisting of A, 
B and C.” See Ex parte Markush, 1925 C.D. 126 
(Comm’r Pat. 1925). The members of the Markush 
group (A, B, and C in the example above) ordinarily 
must belong to a recognized physical or chemical 
class or to an art-recognized class. However, when the 
Markush group occurs in a claim reciting a process or 
a combination (not a single compound), it is sufficient 
if the members of the group are disclosed in the specification 
to possess at least one property in common 
which is mainly responsible for their function in the 
claimed relationship, and it is clear from their very 
nature or from the prior art that all of them possess 
this property. Inventions in metallurgy, refractories, 
ceramics, pharmacy, pharmacology and biology are 
most frequently claimed under the Markush formula 
but purely mechanical features or process steps may 
also be claimed by using the Markush style of claiming. 
See MPEP § 2173.05(h).




 

If the members of the Markush group are sufficiently 
few in number or so closely related that a 
search and examination of the entire claim can be 
made without serious burden, the examiner must 
examine all the members of the Markush group in the 
claim on the merits, even though they may be directed 
to independent and distinct inventions. In such a case, 
the examiner will not follow the procedure described 
below and will not require provisional election of a 
single species. See MPEP § 808.02. 

Since the decisions in In re Weber, 580 F.2d 455, 
198 USPQ 328 (CCPA 1978) and In re Haas, 580 
F.2d 461, 198 USPQ 334 (CCPA 1978), it is improper 
for the Office to refuse to examine that which applicants 
regard as their invention, unless the subject matter 
in a claim lacks unity of invention. In re Harnisch, 
631 F.2d 716, 206 USPQ 300 (CCPA 1980); and Ex 
parte Hozumi, 3 USPQ2d 1059 (Bd. Pat. App. & Int. 
1984). Broadly, unity of invention exists where compounds 
included within a Markush group (1) share a 
common utility, and (2) share a substantial structural 
feature essential to that utility.

This subsection deals with Markush-type generic 
claims which recite a plurality of alternatively usable 
substances or members. In most cases, a recitation by 
enumeration is used because there is no appropriate or 
true generic language. A Markush-type claim may 
include independent and distinct inventions. This is 
true where two or more of the members are so unrelated 
and diverse that a prior art reference anticipating 
the claim with respect to one of the members would 
not render the claim obvious under 35 U.S.C. 103with respect to the other member(s). In applications 
containing a Markush-type claim that encompasses at 
least two independent or distinct inventions, the 
examiner may require a provisional election of a single 
species prior to examination on the merits. An 
examiner should set forth a requirement for election 
of a single disclosed species in a Markush-type claim 
using form paragraph 8.01 when claims limited to 
species are present or using form paragraph 8.02when no species claims are present. See MPEP § 
808.01(a) and § 809.02(a). Following election, the 
Markush-type claim will be examined fully with 
respect to the elected species and further to the extent 
necessary to determine patentability. If the Markush-
type claim is not allowable , the provisional election 
will be given effect and examination will be limited 
to the Markush-type claim and claims to the 
elected species, with claims drawn to species patentably 
distinct from the elected species held withdrawn 
from further consideration.

As an example, in the case of an application with a 
Markush-type claim drawn to the compound X-R, 
wherein R is a radical selected from the group consisting 
of A, B, C, D, and E, the examiner may require a 
provisional election of a single species, XA, XB, XC, 
XD, or XE. The Markush-type claim would then be 
examined fully with respect to the elected species and 
any species considered to be clearly unpatentable over 
the elected species. If on examination the elected species 
is found to be anticipated or rendered obvious by 
prior art, the Markush-type claim and claims to the 
elected species shall be rejected, and claims to the 
nonelected species would be held withdrawn from 
further consideration. A second action on the rejected 
claims can be made final unless the examiner introduces 
a new ground of rejection that is neither necessitated 
by applicant’s amendment of the claims nor 
based on information submitted in an information disclosure 
statement filed during the period set forth in 
37 CFR 1.97(c) with the fee set forth in 37 CFR 
1.17(p). See MPEP §
 
706.07(a).

On the other hand, should the examiner determine 
that the elected species is allowable, the 
examination of the Markush-type claim will be 
extended. If prior art is then found that anticipates or 
renders obvious the Markush-type claim with respect 
to a nonelected species, the Markush-type claim shall 
be rejected and claims to the nonelected species held 
withdrawn from further consideration. The prior art 
search, however, will not be extended unnecessarily 
to cover all nonelected species. Should applicant, 
in 
response to this rejection of the Markush-type 
claim, overcome the rejection, as by amending the 
Markush-type claim to exclude the species anticipated 
or rendered obvious by the prior art, the amended 
Markush-type claim will be reexamined. The 
examination will be extended to the extent necessary 
to determine patentability of the Markush-type 
claim. In the event prior art is found during the reexamination 
that anticipates or renders obvious the 
amended Markush-type claim, the claim will be 
rejected and the action can be made final unless the 
examiner introduces a new ground of rejection that is 
neither necessitated by applicant’s amendment of the 




 

claims nor based on information submitted in an 
information disclosure statement filed during the 
period set forth in 37 CFR 1.97(c) with the fee set 
forth in 37 CFR 1.17(p). See MPEP §
 
706.07(a). 
Amendments submitted after the final rejection further 
restricting the scope of the claim may be denied 
entry if they do not comply with the requirements of 
37 CFR 1.116. See MPEP §
 
714.13.

If a Markush claim depends from or otherwise 
requires all the limitations of another generic or linking 
claim, see MPEP § 809.

803.03 Transitional Applications 
[R-3]

PRACTICE RE TRANSITIONAL APPLICATION


37 CFR 1.129. Transitional procedures for limited 
examination after final rejection and restriction practice. 



(b)(1) In an application, other than for reissue or a design 
patent, that has been pending for at least three years as of June 8, 
1995, taking into account any reference made in the application to 
any earlier filed application under 35 U.S.C. 120, 121 and 365(c), 
no requirement for restriction or for the filing of divisional applications 
shall be made or maintained in the application after June 
8, 1995, except where:

(i) The requirement was first made in the application or 
any earlier filed application under 35 
U.S.C. 120, 121 and 365(c) 
prior to April 8, 1995;

(ii) The examiner has not made a requirement for restriction 
in the present or parent application prior to April 8, 1995, due 
to actions by the applicant; or

(iii) The required fee for examination of each additional 
invention was not paid.

(2)If the application contains more than one independent 
and distinct invention and a requirement for restriction or for the 
filing of divisional applications cannot be made or maintained 
pursuant to this paragraph, applicant will be so notified and given 
a time period to:

(i)Elect the invention or inventions to be searched 
and examined, if no election has been made prior to the notice, 
and pay the fee set forth in 1.17(s) for each independent and distinct 
invention claimed in the application in excess of one which 
applicant elects;

(ii)Confirm an election made prior to the notice and 
pay the fee set forth in § 1.17(s) for each independent and distinct 
invention claimed in the application in addition to the one invention 
which applicant previously elected; or

(iii)File a petition under this section traversing the 
requirement. If the required petition is filed in a timely manner, 
the original time period for electing and paying the fee set forth in 
§ 1.17(s) will be deferred and any decision on the petition affirming 
or modifying the requirement will set a new time period to 
elect the invention or inventions to be searched and examined and 
to pay the fee set forth in § 1.17(s) for each independent and distinct 
invention claimed in the application in excess of one which 
applicant elects.

(3)The additional inventions for which the required fee 
has not been paid will be withdrawn from consideration under 
§
 
1.142(b). An applicant who desires examination of an invention 
so withdrawn from consideration can file a divisional application 
under 35 U.S.C. 121.

(c)The provisions of this section shall not be applicable to 
any application filed after June 8, 1995.

“Restriction” under 37 CFR 1.129(b) applies to 
both restriction requirements under 37 CFR 1.142 and 
election of species requirements under 37 CFR 1.146.

37 CFR 1.129(b)(1) provides for examination of 
more than one independent and distinct invention in 
certain applications pending for 3 years or longer as 
of June 8, 1995, taking into account any reference to 
any earlier application under 35 U.S.C. 120, 121, or 
365(c). Applicant will not be permitted to have such 
additional invention(s) examined in an application if:

(A)the requirement was made in the application 
or in an earlier application relied on under 35 U.S.C. 
120, 121, or 365(c) prior to April 8, 1995; 

(B)no restriction requirement was made with 
respect to the invention(s) in the application or earlier 
application prior to April 8, 1995, due to actions by 
the applicant; or 

(C)the required fee for examination of each additional 
invention was not paid. 

Only if one of these exceptions applies is a normal 
restriction requirement appropriate and telephone 
restriction practice may be used.

Examples of what constitute “actions by the applicant” 
in 37 CFR 1.129(b)(1) are: 

(A)applicant abandoned the application and continued 
to refile the application such that no Office 
action could be issued in the application, 

(B)applicant requested suspension of prosecution 
under 37 CFR 1.103(a) such that no Office action 
could be issued in the application,

(C)applicant disclosed a plurality of independent 
and distinct inventions in the present or parent application, 
but delayed presenting claims to more than 
one of the disclosed independent and distinct inventions 
in the present or parent application such that no 




 

restriction requirement could be made prior to April 8, 
1995, and

(D)applicant combined several applications, each 
of which claimed a different independent and distinct 
invention, into one large “continuing” application, but 
delayed filing the continuing application first claiming 
more than one independent and distinct invention 
such that no restriction requirement could be made 
prior to April 8, 1995.

In examples (A) and (B), the fact that the present or 
parent application claiming independent and distinct 
inventions was on an examiner’s docket for at least 3 
months prior to abandonment or suspension, or in 
examples (C) and (D), the fact that the amendment 
claiming independent and distinct inventions was first 
filed, or the continuing application first claiming the 
additional independent and distinct inventions was on 
an examiner’s docket, at least 3 months prior to April 
8, 1995, is prima facie evidence that applicant’s 
actions did not prevent the Office from making a 
requirement for restriction with respect to those independent 
and distinct inventions prior to April 8, 1995. 
Furthermore, an extension of time under 37 CFR 
1.136(a) does not constitute such “actions by the 
applicant” under 37 CFR 1.129(b)(1).

NOTE: If an examiner believes an application falls 
under the exception that no restriction could be made 
prior to April 8, 1995, due to applicant’s action, the 
application must be brought to the attention of the 
Technology Center (TC) Special Program Examiner 
for review.

Under 37 CFR 1.129(b)(2), if the application contains 
claims to more than one independent and distinct 
invention, and no requirement for restriction or for the 
filing of divisional applications can be made or maintained, 
applicant will be notified and given a time 
period to:

(A)elect the invention or inventions to be 
searched and examined, if no election has been made 
prior to the notice, and pay the fee set forth in 37 CFR 
1.17(s) for each independent and distinct invention 
claimed in the application in excess of one which 
applicant elects,

(B)in situations where an election was made in 
reply to a requirement for restriction that cannot be 
maintained, confirm the election made prior to the 
notice and pay the fee set forth in 37 CFR 1.17(s) for 
each independent and distinct invention claimed in 
the application in addition to the one invention which 
applicant previously elected, or

(C)file a petition under 37 CFR 1.129(b)(2) traversing 
the requirement without regard to whether the 
requirement has been made final. No petition fee is 
required. 

37 CFR 1.129(b)(2) also provides that if the petition 
is filed in a timely manner, the original time 
period for electing and paying the fee set forth in 
37 
CFR 1.17(s) will be deferred and any decision on 
the petition affirming or modifying the requirement 
will set a new time period to elect the invention or 
inventions to be searched and examined and to pay 
the fee set forth in 37 CFR 1.17(s) for each independent 
and distinct invention claimed in the application 
in excess of one which applicant elects.

Under 37 CFR 1.129(b)(3), each additional invention 
for which the required fee set forth in 37 CFR 
1.17(s) has not been paid will be withdrawn from consideration 
under 37 CFR 1.142(b). An applicant who 
desires examination of an invention so withdrawn 
from consideration can file a divisional application 
under 35 U.S.C. 121.

37 CFR 1.129(c) clarifies that the provisions of 
37 
CFR 1.129(a) and (b) are not applicable to any 
application filed after June 8, 1995. However, any 
application filed on June 8, 1995, would be subject to 
a 20-year patent term.

Form paragraph 8.41 may be used to notify applicant 
that the application is a transitional application 
and is entitled to consideration of additional inventions 
upon payment of the required fee.

¶ 8.41 Transitional Restriction or Election of Species 
Requirement To Be Mailed After June 8, 1995

This application is subject to the transitional restriction provisions 
of Public Law 103-465, which became effective on June 8, 
1995, because:

1.the application was filed on or before June 8, 1995, and 
has an effective U.S. filing date of June 8, 1992, or earlier;

2.a requirement for restriction was not made in the present 
or a parent application prior to April 8, 1995; and

3.the examiner was not prevented from making a requirement 
for restriction in the present or a parent application prior to 
April 8, 1995, due to actions by the applicant.

The transitional restriction provisions permit applicant to have 
more than one independent and distinct invention examined in the 
same application by paying a fee for each invention in excess of 
one.




 

Final rules concerning the transition restriction provisions were 
published in the Federal Register at 60 FR 20195 (April 25, 1995) 
and in the Official Gazette at 1174 O.G. 15 (May 2, 1995). The 
final rules at 37 CFR 1.17(s) include the fee amount required to be 
paid for each additional invention as set forth in the following 
requirement for restriction. See the current fee schedule for the 
proper amount of the fee.

Applicant must either: (1) elect the invention or inventions to 
be searched and examined and pay the fee set forth in 37 CFR 
1.17(s) for each independent and distinct invention in excess of 
one which applicant elects; or (2) file a petition under 37 CFR 
1.129(b) traversing the requirement.

Examiner Note:

1.This form paragraph should be used in all restriction or election 
of species requirements made in applications subject to the 
transition restriction provisions set forth in 37 CFR 1.129(b)
where the requirement is being mailed after June 8, 1995. The 
procedure is NOT applicable to any design or reissue application.

803.03(a)Transitional Application — 
Linking Claim Allowable [R-3]

Whenever divided inventions in a transitional 
application are rejoined because a linking claim is 
allowable (MPEP § 809, § 821.04, and 
§
 
821.04(a)) and applicant paid the fee set forth in 
37 CFR 1.17(s) for the additional invention, applicant 
should be notified that he or she may request a refund 
of the fee paid for that additional invention.

803.03(b)Transitional Application — 
Generic Claim Allowable [R-3]

Whenever claims drawn to an additional species in 
a transitional application for which applicant paid the 
fee set forth in 37 CFR 1.17(s) are no longer withdrawn 
from consideration because they are fully 
embraced by an allowable generic claim, applicant 
should be notified that he or she may request a 
refund of the fee paid for that additional species.

The determination of when claims to a 
nonelected 
species would no longer be withdrawn 
from consideration should be made as indicated in 
MPEP § 806.04(d), § 821.04, and §
 
821.04(a).




 

Flowchart





 

803.04 Nucleotide Sequences [R-3]

By statute, “[i]f two or more independent and distinct 
inventions are claimed in one application, the 
Director may require the application to be 
restricted to one of the inventions.” 35 U.S.C. 121. 
Pursuant to this statute, the rules provide that “[i]f two 
or more independent and distinct inventions are 
claimed in a single application, the examiner in his 
action shall require the applicant . . . to elect that 
invention to which his claim shall be restricted.” 
37 
CFR 1.142(a). See also 37 CFR 1.141(a). 

Polynucleotide molecules defined by their 
nucleic acid sequence (hereinafter “nucleotide 
sequences”) that encode different proteins are structurally 
distinct chemical compounds. These 
sequences are thus deemed to normally constitute 
independent and distinct inventions within the meaning 
of 35 U.S.C. 121. Absent evidence to the contrary, 
each such nucleotide sequence is presumed to represent 
an independent and distinct invention, subject to 
a restriction requirement pursuant to 35 U.S.C. 121and 37 CFR 1.141 et seq. Nevertheless, to further aid 
the biotechnology industry in protecting its intellectual 
property without creating an undue burden on the 
Office, the Director has decided sua sponte to partially 
waive the requirements of 37 CFR 1.141 et seq.
and permit a reasonable number of such nucleotide 
sequences to be claimed in a single application. See 
Examination of Patent Applications Containing 
Nucleotide Sequences, 1192 O.G. 68 (November 19, 
1996). 

It has been determined that normally ten sequences 
constitute a reasonable number for examination purposes. 
Accordingly, in most cases, up to ten independent 
and distinct nucleotide sequences will be 
examined in a single application without restriction. 
In addition to the specifically selected sequences, 
those sequences which are patentably indistinct from 
the selected sequences will also be examined. Furthermore, 
nucleotide sequences encoding the same protein 
are not considered to be independent and distinct 
inventions and will continue to be examined together. 

In some exceptional cases, the complex nature of 
the claimed material, for example a protein amino 
acid sequence reciting three dimensional folds, may 
necessitate that the reasonable number of sequences to 
be selected be less than ten. In other cases, applicants 
may petition pursuant to 37 CFR 1.181 for examination 
of additional nucleotide sequences by providing 
evidence that the different nucleotide sequences do 
not cover independent and distinct inventions. 

See MPEP § 1850 for treatment of claims containing 
independent and distinct nucleotide sequences in 
international applications filed under the Patent Cooperation 
Treaty (PCT) and national stage applications 
filed under 35 U.S.C. 371. 

EXAMPLES OF NUCLEOTIDE SEQUENCE 
CLAIMS

Examples of typical nucleotide sequence claims 
impacted by the partial waiver of 37 CFR 1.141 et 
seq. (and the partial waiver of 37 CFR 1.475 and 
1.499 et seq., see MPEP § 1850) include: 

(A)an isolated and purified DNA fragment comprising 
DNA having at least 95% identity to a DNA 
sequence selected from SEQ ID Nos. 1-1,000; 

(B)a combination of DNA fragments comprising 
SEQ ID Nos. 1-1,000; and 

(C)a combination of DNA fragments, said combination 
containing at least thirty different DNA fragments 
selected from SEQ ID Nos. 1-1,000.

Applications claiming more than ten individual 
independent and distinct nucleotide sequences in 
alternative form, such as set forth in example (A), will 
be subject to a restriction requirement. Only the ten 
nucleotide sequences selected in response to the 
restriction requirement and any other claimed 
sequences which are patentably indistinct therefrom 
will be examined.

Applications claiming only a combination of nucleotide 
sequences, such as set forth in example (B), will 
generally not be subject to a restriction requirement. 
The presence of one novel and nonobvious sequence 
within the combination will render the entire combination 
allowable. The combination will be searched 
until one nucleotide sequence is found to be allowable. 
The order of searching will be chosen by the 
examiner to maximize the identification of an allowable 
sequence. If no individual nucleotide sequence is 
found to be allowable, the examiner will consider 
whether the combination of sequences taken as a 
whole renders the claim allowable.

 Applications containing only composition 
claims 
reciting different combinations of individual 
nucleotide sequences, such as set forth in example 




 

(C), will be subject to a restriction requirement. 
Applicants will be required to select one combination 
for examination. If the selected combination contains 
ten or fewer sequences, all of the sequences of the 
combination will be searched. If the selected combination 
contains more than ten sequences, the combination 
will be examined following the procedures set 
forth above for example (B). More specifically, the 
combination will be searched until one nucleotide 
sequence is found to be allowable with the examiner 
choosing the order of search to maximize the identification 
of an allowable sequence. The identification of 
any allowable sequence(s) will cause all combinations 
containing the allowed sequence(s) to be allowed. 

In applications containing all three claims set forth 
in examples (A)-(C), the Office will require restriction 
of the application to ten sequences for initial 
examination purposes. Based upon the finding of 
allowable sequences, claims limited to the allowable 
sequences as in example (A), all combinations, such 
as in examples (B) and (C), containing the allowable 
sequences and any patentably indistinct sequences 
will be rejoined and allowed.

Nonelected claims requiring any allowable 
nucleotide sequence(s) should be considered for 
rejoinder. See MPEP § 821.04.  

804Definition of Double Patenting[R-5]

35 U.S.C. 101. Inventions Patentable. 

Whoever invents or discovers any new and useful process, 
machine, manufacture, or composition of matter or any new and 
useful improvement thereof, may obtain a patent therefor, subject 
to the conditions and requirements of this title. 

35 U.S.C. 121. Divisional Applications. 

If two or more independent and distinct inventions are claimed 
in one application, the Director may require the application to be 
restricted to one of the inventions. If the other invention is made 
the subject of a divisional application which complies with the 
requirements of section 120 of this title it shall be entitled to the 
benefit of the filing date of the original application. A patent issuing 
on an application with respect to which a requirement for 
restriction under this section has been made, or on an application 
filed as a result of such a requirement, shall not be used as a reference 
either in the Patent and Trademark Office or in the courts 
against a divisional application or against the original application 
or any patent issued on either of them, if the divisional application 
is filed before the issuance of the patent on the other application. 
If a divisional application is directed solely to subject matter 
described and claimed in the original application as filed, the 
Director may dispense with signing and execution by the inventor. 
The validity of a patent shall not be questioned for failure of the 
Director to require the application to be restricted to one invention. 


The doctrine of double patenting seeks to prevent 
the unjustified extension of patent exclusivity beyond 
the term of a patent. The public policy behind this 
doctrine is that: 

The public should . . . be able to act on the assumption that 
upon the expiration of the patent it will be free to use not 
only the invention claimed in the patent but also modifications 
or variants which would have been obvious to those 
of ordinary skill in the art at the time the invention was 
made, taking into account the skill in the art and prior art 
other than the invention claimed in the issued patent. 

In re Zickendraht, 319 F.2d 225, 232, 138 USPQ 
22, 27 (CCPA 1963) (Rich, J., concurring). Double 
patenting results when the right to exclude granted by 
a first patent is unjustly extended by the grant of a 
later issued patent or patents. In re Van Ornum, 686 
F.2d 937, 214 USPQ 761 (CCPA 1982). 

Before consideration can be given to the issue of 
double patenting, two or more patents or applications 
must have at least one common inventor and/or be 
either commonly assigned/owned or non-commonly 
assigned/owned but subject to a joint research agreement 
as set forth in 35 U.S.C. 103(c)(2) and (3) pursuant 
to the CREATE Act (Pub. L. 108-453, 118 Stat. 
3596 (2004)). Congress recognized that the amendment 
to 35 U.S.C. 103(c) would result in situations in 
which there would be double patenting rejections 
between applications not owned by the same party 
(see H.R. Rep. No. 108-425, at 5-6 (2003)). For purposes 
of a double patenting analysis, the application 
or patent and the subject matter disqualified under 35 
U.S.C. 103(c) as amended by the CREATE Act will 
be treated as if commonly owned. See also MPEP § 
804.03. Since the doctrine of double patenting seeks 
to avoid unjustly extending patent rights at the 
expense of the public, the focus of any double patenting 
analysis necessarily is on the claims in the multiple 
patents or patent applications involved in the 
analysis. 

There are generally two types of double patenting 
rejections. One is the “same invention” type double 
patenting rejection based on 35 U.S.C. 101 which 
states in the singular that an inventor “may obtain 
a 
patent.” The second is the “nonstatutory-type” double 
patenting rejection based on a judicially created 




 

doctrine grounded in public policy and which is primarily 
intended to prevent prolongation of the patent 
term by prohibiting claims in a second patent not patentably 
distinguishing from claims in a first patent. 
Nonstatutory double patenting includes rejections 
based on either a one-way determination of obviousness 
or a two-way determination of obviousness. 
Nonstatutory double patenting could include a rejection 
which is not the usual “obviousness-type” double 
patenting rejection. This type of double patenting 
rejection is rare and is limited to the particular facts of 
the case. In re Schneller, 397 F.2d 350, 158 USPQ 
210 (CCPA 1968).

Refer to Charts I-A, I-B, II-A, and II-B for an overview 
of the treatment of applications having conflicting 
claims (e.g., where a claim in an application is not 
patentably distinct from a claim in a patent or another 
application). See MPEP § 2258 for information pertaining 
to double patenting rejections in reexamination 
proceedings.




 

Chart I-A. Conflicting Claims Between: Two ApplicationsChart I-A. Conflicting Claims Between: Two Applications





 



Chart I-B. Conflicting Claims Between: Two ApplicationsChart I-B. Conflicting Claims Between: Two Applications
Assignee Required to Either: 
(a) Name First Inventor of Conflicting 
Subject Matter under 102(f) or (g) 
or 
(b) Show Inventions Were Commonly 
Owned at Time of Applicant’s 
Invention 
Rejection under 
102(f)/103(a) 
or 102(g)/103(a) 
based on evidence 
7.21 
CHART I-B7.21 
(Provisional)2Rejection 
of Later Application 
under 102(e)/103(a) 
Provisional ObviousnessDouble-Patenting 
Rejection17.21.01 or 7.21.02CONFLICTING CLAIMS BETWEEN 
TWO APPLICATIONS8.33 & 8.35 or 8.37 
Provisional Obviousness 
Double-Patenting Rejection8.33 & 8.35 or 8.37 
Let Earlier Application 
Issue or Publish and Reject 
Later Application under 
102(e)/103(a)
7.21 
Provisional Obviousness 
Double-Patenting 
Rejection18.33 & 8.35 or 8.37Same 
InventiveEntity 
And AndCurrently 
Commonly Owned: 
Different Inventive EntitiesRejection under 
102(f)/103(a) 
or 
102(g)/103(a) 
based on 
evidence(Provisional)2 Rejection 
of Later Application 
under 102(e)/103(a)
8.33 & 8.35 or 8.37 
Commonly Owned at Time 
of Applicant’s InventionNo Showing of Common Ownership at Time of Applicant’s Invention/No Joint Research Exclusion under 103(c) 
AndAndAnd/Or1 Where the reference is available as anticipatory prior art, a (provisional)2 rejection should be made under 102(e). 
2 Where the application being applied as a reference has NOT been published, the rejection under 102(e)/103(a) should be 
provisional.
No Joint Research 
Exclusion under 103(c) 
No Joint Research 
Exclusion under 103(c)
Proper Joint Research 
Exclusion under 103(c) 
DIFFERENT INVENTIONS(Not Patentably Distinct)
Different Inventive 
Entities, At Least One 
Common Inventor, No 
Common Assignee 
No Common 
Assignee or 
Inventor 
8.28 
Provisional Obviousness 
Double-Patenting 
Rejection7.21.01 or 7.21.02 
Proper Joint Research 
Exclusion under 103(c) 







 

Chart II-A. Conflicting Claims Between: Application and a PatentChart II-A. Conflicting Claims Between: Application and a Patent





 



Chart II-B. Conflicting Claims Between: Application and a PatentChart II-B. Conflicting Claims Between: Application and a Patent
Assignee Required to Either: 
(a) Name First Inventor of Conflicting 
Subject Matter under 102(f) or (g) 
or 
(b) Show Inventions Were Commonly 
Owned at Time of Applicant’s 
Invention 
Rejection under 
102(f)/103(a) 
or 102(g)/103(a) 
based on evidence 
7.21 
CHART II-BObviousness Double-
Patenting Rejection1Rejection under 
102(e)/103(a) 
7.21.02 8.33 & 8.34 or 8.36 
Obviousness Double- 
Patenting Rejection8.33 & 8.34 or 8.36 
Rejection under 
102(e)/103(a) 
7.21 
Obviousness Double-
Patenting Rejection18.33 & 8.34 or 8.36Same 
InventiveEntity 
And AndCurrently 
Commonly Owned: 
Different Inventive EntitiesRejection under 
102(e)/103(a) 
Commonly Owned at Time of Applicant’s Invention 
No Showing of Common Ownership at Time of Applicant’s Invention/No Joint Research Exclusion under 103(c) 
AndAndAnd/OrNo Joint Research 
Exclusion under 103(c) 
No Joint Research 
Exclusion under 103(c)
Proper Joint Research 
Exclusion under 103(c) 
DIFFERENT INVENTIONS(Not Patentably Distinct)
Different Inventive 
Entities, At Least One 
Common Inventor, No 
Common Assignee 
No Common 
Assignee or 
Inventor 
Obviousness Double-
Patenting Rejection 
Proper Joint Research 
Exclusion under 103(c) 
CONFLICTING CLAIMS BETWEEN 
AN APPLICATION AND A PATENTRejection under 
102(f)/103(a) 
or 
102(g)/103(a) 
based on 
evidence7.21 
8.28 
7.21.02 8.33 & 8.34 or 8.36 
1 Where the reference is available as anticipatory prior art, a rejection should be made under 102(e). 







 

I.INSTANCES WHERE DOUBLE PATENTING 
ISSUE CAN BE RAISED 

A double patenting issue may arise between two or 
more pending applications, or between one or more 
pending applications and a patent. A double patenting 
issue may likewise arise in a reexamination proceeding 
between the patent claims being reexamined and 
the claims of one or more applications and/or patents. 
Double patenting does not relate to international 
applications which have not yet entered the national 
stage in the United States. 

A.Between Issued Patent and One or More 
Applications

Double patenting may exist between an issued 
patent and an application filed by the same inventive 
entity, or by a different inventive entity having a common 
inventor, and/or by a common assignee/owner. 
Double patenting may also exist where the inventions 
claimed in a patent and an application were made as a 
result of activities undertaken within the scope of a 
joint research agreement as defined in 35 U.S.C. 
103(c)(2) and (3). Since the inventor/patent owner 
has already secured the issuance of a first patent, the 
examiner must determine whether the grant of a second 
patent would give rise to an unjustified extension 
of the rights granted in the first patent. 

B.Between Copending Applications—Provisional 
Rejections

Occasionally, the examiner becomes aware of two 
copending applications that were filed by the same 
inventive entity, or by different inventive entities having 
a common inventor, and/or by a common 
assignee, or that claim an invention resulting from 
activities undertaken within the scope of a joint 
research agreement as defined in 35 U.S.C. 103(c)(2) 
and (3), that would raise an issue of double patenting 
if one of the applications became a patent. Where this 
issue can be addressed without violating the confidential 
status of applications (35 U.S.C. 122), the courts 
have sanctioned the practice of making applicant 
aware of the potential double patenting problem if one 
of the applications became a patent by permitting the 
examiner to make a “provisional” rejection on the 
ground of double patenting. In re Mott, 539 F.2d 
1291, 190 USPQ 536 (CCPA 1976); In re Wetterau,
356 F.2d 556, 148 USPQ 499 (CCPA 1966). The merits 
of such a provisional rejection can be addressed by 
both the applicant and the examiner without waiting 
for the first patent to issue. 

The “provisional” double patenting rejection 
should continue to be made by the examiner in each 
application as long as there are conflicting claims in 
more than one application unless that “provisional” 
double patenting rejection is the only rejection 
remaining in at least one of the applications.

1. Nonstatutory Double Patenting Rejections

If a “provisional” nonstatutory obviousness-type 
double patenting (ODP) rejection is the only rejection 
remaining in the earlier filed of the two pending applications, 
while the later-filed application is rejectable 
on other grounds, the examiner should withdraw that 
rejection and permit the earlier-filed application to 
issue as a patent without a terminal disclaimer. If the 
ODP rejection is the only rejection remaining in the 
later-filed application, while the earlier-filed application 
is rejectable on other grounds, a terminal disclaimer 
must be required in the later-filed application 
before the rejection can be withdrawn.

If “provisional” ODP rejections in two applications 
are the only rejections remaining in those applications, 
the examiner should withdraw the ODP rejection 
in the earlier filed application thereby permitting 
that application to issue without need of a terminal 
disclaimer. A terminal disclaimer must be required in 
the later-filed application before the ODP rejection 
can be withdrawn and the application permitted to 
issue. If both applications are filed on the same day, 
the examiner should determine which application 
claims the base invention and which application 
claims the improvement (added limitations). The 
ODP rejection in the base application can be withdrawn 
without a terminal disclaimer, while the ODP 
rejection in the improvement application cannot be 
withdrawn without a terminal disclaimer.




 

Where there are three applications containing 
claims that conflict such that an ODP rejection is 
made in each application based upon the other two, it 
is not sufficient to file a terminal disclaimer in only 
one of the applications addressing the other two applications. 
Rather, an appropriate terminal disclaimer 
must be filed in at least two of the applications to link 
all three together. This is because a terminal disclaimer 
filed to obviate a double patenting rejection is 
effective only with respect to the application in which 
the terminal disclaimer is filed; it is not effective to 
link the other two applications to each other. 

2.Statutory Double Patenting Rejections (35 
U.S.C. 101)

A terminal disclaimer cannot be filed to obviate a 
statutory double patenting rejection.

If a “provisional” statutory double patenting rejection 
is the only rejection remaining in one of the 
applications (but not both), the examiner should withdraw 
the rejection in that application and permit that 
application to issue as a patent, thereby converting the 
“provisional” double patenting rejection in the other 
application into a double patenting rejection when the 
application issues as a patent. 

If a “provisional” statutory double patenting rejection 
is the only rejection remaining in both applications, 
the examiner should withdraw that rejection in 
the application with the earlier filing date and permit 
that application to issue as a patent. If both applications 
were filed on the same day, the applicant should 
be given an opportunity to elect which of the two 
should be allowed. In either situation, the examiner 
should maintain the double patenting rejection in the 
other application as a “provisional” double patenting 
rejection, which will be converted into a double patenting 
rejection when one application issues as a 
patent.

C.Between One or More Applications and a 
Published Application - Provisional Rejections

Double patenting may exist where a published 
patent application and an application are filed by the 
same inventive entity, or by different inventive entities 
having a common inventor, and/or by a common 
assignee. Double patenting may also exist where a 
published application and an application claim inventions 
resulting from activities undertaken within the 
scope of a joint research agreement as defined in 35 
U.S.C. 103(c)(2) and (3). Since the published application 
has not yet issued as a patent, the examiner is permitted 
to make a “provisional” rejection on the 
ground of double patenting when the published application 
has not been abandoned and claims pending 
therein conflict with claims of the application being 
examined. See the discussion regarding “provisional” 
double patenting rejections in subsection B. above.

D.Reexamination Proceedings

A double patenting issue may raise a substantial 
new question of patentability of a claim of a patent, 
and thus be addressed in a reexamination proceeding. 
In re Lonardo, 119 F.3d 960, 966, 43 USPQ2d 1262, 
1266 (Fed. Cir. 1997) (In giving the Director authority 
under 35 U.S.C. 303(a) in determining the presence of 
a substantial new question of patentability, “Congress 
intended that the phrases ‘patents and publications’ 
and ‘other patents or publications’ in section 303(a) 
not be limited to prior art patents or printed publications.” 
(emphasis added)). Accordingly, if the issue of 
double patenting was not addressed during original 
prosecution, it may be considered during reexamination.


Double patenting may exist where a reference 
patent or application and the patent under reexamination 
are filed by inventive entities that have at least 
one inventor in common and/or are filed by a common 
owner/assignee. Where the patent under reexamination 
was granted on or after December 10, 2004, 
double patenting may also exist where the inventions 
claimed in the reference and reexamination proceeding 
resulted from activities undertaken within the 
scope of a joint research agreement pursuant to 35 
U.S.C. 103(c)(2) and (3), and if evidence of the joint 
research agreement has been made of record in the 
patent being reexamined or in the reexamination proceeding. 
A double patenting rejection may NOT be 
made on this basis if the patent under reexamination 
issued before December 10, 2004. See MPEP § 
804.04. The prior art exclusion under 35 U.S.C. 
103(c) cannot be used to overcome an obvious double 
patenting rejection. See MPEP § 706.02(l) for more 
information on 35 U.S.C. 103(c). See MPEP § 2258for more information on making double patenting 
rejections in reexamination proceedings. Subsection 
II., below, describes situations wherein a double pat





 

enting rejection would be appropriate. In particular, 
see paragraph II.B.1. for the analysis required to 
determine the propriety of an obviousness-type double 
patenting rejection.

II.REQUIREMENTS OF A DOUBLE PATENTING 
REJECTION (INCLUDING PROVISIONAL 
REJECTIONS) 

When a double patenting rejection is appropriate, it 
must be based either on statutory grounds or nonstatutory 
grounds. The ground of rejection employed 
depends upon the relationship of the inventions being 
claimed. Generally, a double patenting rejection is not 
permitted where the claimed subject matter is presented 
in a divisional application as a result of a 
restriction requirement made in a parent application 
under 35 U.S.C. 121. 

Where the claims of an application are substantively 
the same as those of a first patent, they are 
barred under 35 U.S.C. 101 - the statutory basis for a 
double patenting rejection. A rejection based on double 
patenting of the “same invention” type finds its 
support in the language of 35 U.S.C. 101 which states 
that “whoever invents or discovers any new and useful 
process ... may obtain a patent therefor ....” Thus, 
the term “same invention,” in this context, means an 
invention drawn to identical subject matter. Miller v. 
Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 
422 
F.2d 438, 164 USPQ 619 (CCPA 1970); and In 
re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 
1957). Where the claims of an application are not the 
“same” as those of a first patent, but the grant of a 
patent with the claims in the application would 
unjustly extend the rights granted by the first patent, a 
double patenting rejection under nonstatutory grounds 
is proper. 

In determining whether a proper basis exists to 
enter a double patenting rejection, the examiner must 
determine the following: 

(A)Whether a double patenting rejection is prohibited 
by the third sentence of 35 U.S.C. 121 (see 
MPEP § 804.01; if such a prohibition applies, a double 
patenting rejection cannot be made); 

(B)Whether a statutory basis exists; and 

(C)Whether a nonstatutory basis exists. 

Each determination must be made on the basis of 
all the facts in the application before the examiner. 
Charts I-A, I-B, II-A, and II-B illustrate the methodology 
of making such a determination. 

Domination and double patenting should not be 
confused. They are two separate issues. One patent or 
application “dominates” a second patent or application 
when the first patent or application has a broad or 
generic claim which fully encompasses or reads on an 
invention defined in a narrower or more specific 
claim in another patent or application. Domination by 
itself, i.e., in the absence of statutory or nonstatutory 
double patenting grounds, cannot support a double 
patenting rejection. In re Kaplan, 789 F.2d 1574, 
1577-78, 229 USPQ 678, 681 (Fed. Cir. 1986); and 
In re Sarrett, 327 F.2d 1005, 1014-15, 140 USPQ 474, 
482 (CCPA 1964). However, the presence of domination 
does not preclude double patenting. See, e.g., In 
re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 
1968). 

A.Statutory Double Patenting — 35 U.S.C. 101 

In determining whether a statutory basis for a double 
patenting rejection exists, the question to be asked 
is: Is the same invention being claimed twice? 
35 
U.S.C. 101 prevents two patents from issuing on 
the same invention. “Same invention” means identical 
subject matter. Miller v. Eagle Mfg. Co., 151 U.S. 186 
(1984); In re Vogel, 422 F.2d 438, 164 USPQ 619 
(CCPA 1970); and In re Ockert, 245 F.2d 467, 
114 
USPQ 330 (CCPA 1957).

A reliable test for double patenting under 35 U.S.C. 
101 is whether a claim in the application could be literally 
infringed without literally infringing a corresponding 
claim in the patent. In re Vogel, 422 F.2d 
438, 164 USPQ 619 (CCPA 1970). Is there an embodiment 
of the invention that falls within the scope of 
one claim, but not the other? If there is such an 
embodiment, then identical subject matter is not 
defined by both claims and statutory double patenting 
would not exist. For example, the invention defined 
by a claim reciting a compound having a “halogen” 
substituent is not identical to or substantively the 
same as a claim reciting the same compound except 
having a “chlorine” substituent in place of the halogen 
because “halogen” is broader than “chlorine.” On the 
other hand, claims may be differently worded and still 
define the same invention. Thus, a claim reciting a 
widget having a length of “36 inches” defines the 




 

same invention as a claim reciting the same widget 
having a length of “3 feet.” 

If it is determined that the same invention is being 
claimed twice, 35 U.S.C. 101 precludes the grant of 
the second patent regardless of the presence or 
absence of a terminal disclaimer. Id. 

Form paragraphs 8.30 and 8.31 (between an issued 
patent and one or more applications) or 8.32 (provisional 
rejections) may be used to make statutory double 
patenting rejections. 

¶ 8.30 35 U.S.C. 101, Statutory Basis for Double Patenting 
“Heading” Only

A rejection based on double patenting of the “same invention” 
type finds its support in the language of 35 U.S.C. 101 which 
states that “whoever invents or discovers any new and useful process... 
may obtain a patent therefor...” (Emphasis added). Thus, 
the term “same invention,” in this context, means an invention 
drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 
151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 
(CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 
(CCPA 1957).

A statutory type (35 U.S.C. 101) double patenting rejection can 
be overcome by canceling or amending the conflicting claims so 
they are no longer coextensive in scope. The filing of a terminal 
disclaimer cannot overcome a double patenting rejection based 
upon 35 U.S.C. 101.

Examiner Note:

The above form paragraph must be used as a heading for all 
subsequent double patenting rejections of the statutory (same 
invention) type using either of form paragraphs 8.31 or 8.32.

¶ 8.31 Rejection, 35 U.S.C. 101, Double Patenting

Claim [1] rejected under 35 U.S.C. 101 as claiming the same 
invention as that of claim [2] of prior U.S. Patent No. [3]. This is a 
double patenting rejection.

Examiner Note:

1.This form paragraph must be preceded by form paragraph 
8.30 and is used only for double patenting rejections of the same 
invention claimed in an earlier patent; that is, the “scope” of the 
inventions claimed is identical.

2.If the conflicting claims are in another copending application, 
do not use this form paragraph. A provisional double patenting 
rejection should be made using form paragraph 8.32.

3.Do not use this form paragraph for nonstatutory-type double 
patenting rejections. If nonstatutory type, use appropriate form 
paragraphs 8.33 to 8.39.

4.This form paragraph may be used where the conflicting 
patent and the pending application are:

(a)by the same inventive entity, or

(b)by a different inventive entity and are commonly assigned 
even though there is no common inventor, or

(c)not commonly assigned but have at least one common inventor, 
or

(d) made as a result of activities undertaken within the scope of 
a joint research agreement.

5.In bracket 3, insert the number of the conflicting patent.

6.If the patent is to a different inventive entity and is commonly 
assigned with the application, form paragraph 8.27 should 
additionally be used to require the assignee to name the first 
inventor.

7.If evidence is of record to indicate that the patent is prior art 
under either 35 U.S.C. 102(f) or (g), a rejection should also be 
made using form paragraphs 7.15 and/or 7.19 in addition to this 
double patenting rejection.

8.If the patent is to a different inventive entity from the application 
and the effective U.S. filing date of the patent antedates the 
effective filing date of the application, a rejection under 35 U.S.C. 
102(e) should additionally be made using form paragraph 7.15.02.

¶ 8.32 Provisional Rejection, 35 U.S.C. 101, Double 
Patenting

Claim [1] provisionally rejected under 35 U.S.C. 101 as claiming 
the same invention as that of claim [2] of copending Application 
No. [3]. This is a provisional double patenting rejection since 
the conflicting claims have not in fact been patented.

Examiner Note:

1.This form paragraph must be preceded by form paragraph 
8.30 and is used only for double patenting rejections of the sameinvention claimed in another copending application; that is, the 
scope of the claimed inventions is identical.

2.If the conflicting claims are from an issued patent, do not use 
this paragraph. See form paragraph 8.31.

3.Do not use this paragraph for nonstatutory-type double patenting 
rejections. See form paragraphs 8.33 to 8.39.

4.This form paragraph may be used where the conflicting 
claims are in a copending application that is:

(a)by the same inventive entity, or

(b)by a different inventive entity and is commonly assigned 
even though there is no common inventor, or

(c)not commonly assigned but has at least one common inventor, 
or

(d)made as a result of activities undertaken within the scope of a 
joint research agreement.

5.Form paragraph 8.28 may be used along with this form paragraph 
to resolve any remaining issues relating to priority under 35 
U.S.C. 102(f) or (g).

6.In bracket 3, insert the number of the conflicting application.

7.A provisional double patenting rejection should also be made 
in the conflicting application.

8.If the copending application is by a different inventive entity 
and is commonly assigned, form paragraph 8.27 should additionally 
be used to require the assignee to name the first inventor.

9.If evidence is also of record to show that either application is 
prior art unto the other under 35 U.S.C. 102(f) or (g), a rejection 
should also be made in the other application using form paragraphs 
7.15 and/or 7.19 in addition to this provisional double patenting 
rejection.

10.If the applications do not have the same inventive entity and 
effective U.S. filing date, a provisional 102(e) rejection should 




 

additionally be made in the later-filed application using form 
paragraph 7.15.01.

If the “same invention” is not being claimed twice, 
an analysis must be made to determine whether a nonstatutory 
basis for double patenting exists. 

B.Nonstatutory Double Patenting 

A rejection based on nonstatutory double patenting 
is based on a judicially created doctrine grounded in 
public policy so as to prevent the unjustified or 
improper timewise extension of the right to exclude 
granted by a patent. In re Goodman, 11 F.3d 1046, 
29 
USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 
F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van 
Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); 
In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 
1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 
(CCPA 1969); In re White, 405 F.2d 904, 160 USPQ 
417 (CCPA 1969); In re Schneller, 397 F.2d 350, 158 
USPQ 210 (CCPA 1968); In re Sarett, 327 F.2d 1005, 
140 USPQ 474 (CCPA 1964). 

1.Obviousness-Type

A nonstatutory obviousness-type double patenting 
rejection is appropriate where the conflicting claims 
are not identical, but at least one examined application 
claim is not patentably distinct from the reference 
claim(s) because the examined application claim is 
either anticipated by, or would have been obvious 
over, the reference claim(s). See, e.g., In re Berg, 140 
F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re 
Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 
1993); and In re Longi, 759 F.2d 887, 225 USPQ 645 
(Fed. Cir. 1985). In determining whether a nonstatutory 
basis exists for a double patenting rejection, the 
first question to be asked is — does any claim in the 
application define an invention that is anticipated by, 
or is merely an obvious variation of , an invention 
claimed in the patent? If the answer is yes, then an 
“obviousness-type” nonstatutory double patenting 
rejection may be appropriate. Obviousness-type double 
patenting requires rejection of an application 
claim when the claimed subject matter is not patentably 
distinct from the subject matter claimed in a 
commonly owned patent, or a non-commonly owned 
patent but subject to a joint research agreement as set 
forth in 35 U.S.C. 103(c)(2) and (3), when the issuance 
of a second patent would provide unjustified 
extension of the term of the right to exclude granted 
by a patent. See Eli Lilly & Co. v. Barr Labs., Inc., 
251 F.3d 955, 58 USPQ2d 1869 (Fed. Cir. 2001); Ex 
parte Davis, 56 USPQ2d 1434, 1435-36 (Bd. Pat. 
App. & Inter. 2000).

A double patenting rejection of the obviousness-
type, if not based on an anticipation rationale, is 
“analogous to [a failure to meet] the nonobviousness 
requirement of 35 U.S.C. 103” except that the patent 
principally underlying the double patenting rejection 
is not considered prior art. In re Braithwaite, 379 F.2d 
594, 154 USPQ 29 (CCPA 1967). Therefore, the
analysis employed in an obviousness-type double patenting 
rejection parallels the guidelines for analysis of 
a 35 U.S.C. 103 obviousness determination. In re 
Braat, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir. 
1991); In re Longi, 759 F.2d 887, 225 USPQ 645 
(Fed. Cir. 1985). 

Since the analysis employed in an obviousness-type 
double patenting determination parallels the guidelines 
for a 35 U.S.C. 103(a) rejection, the factual 
inquiries set forth in Graham v. John Deere Co., 383 
U.S. 1, 148 USPQ 459 (1966), that are applied for 
establishing a background for determining obviousness 
under 35 U.S.C. 103 are employed when making 
an obvious-type double patenting analysis. These factual 
inquiries are summarized as follows: 

(A)Determine the scope and content of a patent 
claim relative to a claim in the application at issue; 

(B)Determine the differences between the scope 
and content of the patent claim as determined in (A) 
and the claim in the application at issue; 

(C)Determine the level of ordinary skill in the 
pertinent art; and 

(D)Evaluate any objective indicia of nonobviousness. 


The conclusion of obviousness-type double patenting 
is made in light of these factual determinations. 

Any obviousness-type double patenting rejection 
should make clear: 

(A)The differences between the inventions 
defined by the conflicting claims — a claim in the 
patent compared to a claim in the application; and 

(B)The reasons why a person of ordinary skill in 
the art would conclude that the invention defined in 
the claim at issue is anticipated by, or would have 




 

been an obvious variation of , the invention defined 
in a claim in the patent.

When considering whether the invention defined in 
a claim of an application would have been an obvious 
variation of the invention defined in the claim of a 
patent, the disclosure of the patent may not be used as 
prior art. General Foods Corp. v. Studiengesellschaft 
Kohle mbH, 972 F.2d 1272, 1279, 23 USPQ2d 1839, 
1846 (Fed. Cir. 1992). This does not mean that one is 
precluded from all use of the patent disclosure. 

The specification can be used as a dictionary to 
learn the meaning of a term in the patent claim. Toro 
Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 
1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 
1999)(“[W]ords in patent claims are given their ordinary 
meaning in the usage of the field of the invention, 
unless the text of the patent makes clear that a 
word was used with a special meaning.”); Renishaw 
PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 
1250, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998) 
(“Where there are several common meanings for a 
claim term, the patent disclosure serves to point away 
from the improper meanings and toward the proper 
meanings.”). See also MPEP § 2111.01. Further, those 
portions of the specification which provide support 
for the patent claims may also be examined and considered 
when addressing the issue of whether a claim 
in the application defines an obvious variation of an 
invention claimed in the patent. In re Vogel, 422 F.2d 
438, 441-42, 164 
USPQ 619, 622 (CCPA 1970). The 
court in Vogel recognized “that it is most difficult, if 
not meaningless, to try to say what is or is not an obvious 
variation of a claim,” but that one can judge 
whether or not the invention claimed in an application 
is an obvious variation of an embodiment disclosed in 
the patent which provides support for the patent 
claim. According to the court, one must first “determine 
how much of the patent disclosure pertains to 
the invention claimed in the patent” because only 
“[t]his portion of the specification supports the patent 
claims and may be considered.” The court pointed out 
that “this use of the disclosure is not in contravention 
of the cases forbidding its use as prior art, nor is it 
applying the patent as a reference under 35 U.S.C. 
103, since only the disclosure of the invention 
claimed in the patent may be examined.” 

(a)One-Way Obviousness

If the application at issue is the later filed application 
or both are filed on the same day, only a one-way 
determination of obviousness is needed in resolving 
the issue of double patenting, i.e., whether the invention 
defined in a claim in the application would have 
been anticipated by, or an obvious variation of ,
the invention defined in a claim in the patent. See, 
e.g., In re Berg, 140 F.3d 1438, 46 USPQ2d 1226 
(Fed. Cir. 1998) (the court applied a one-way test 
where both applications were filed the same day). If a 
claimed invention in the application would have been 
obvious over a claimed invention in the patent, there 
would be an unjustified timewise extension of the 
patent and an obvious-type double patenting rejection 
is proper. Unless a claimed invention in the application 
would have been anticipated by, or obvious 
over a claimed invention in the patent, no double patenting 
rejection of the obvious-type should be made, 
but this does not necessarily preclude a rejection 
based on another type of nonstatutory double patenting 
(see MPEP § 804, paragraph II.B.2. below).

Similarly, even if the application at issue is the earlier 
filed application, only a one-way determination of 
obviousness is needed to support a double patenting 
rejection in the absence of a finding: (A) of administrative 
delay on the part of the Office causing delay in 
prosecution of the earlier filed application; and (B) 
that applicant could not have filed the conflicting 
claims in a single (i.e., the earlier filed) application. 
See MPEP § 804, paragraph II.B.1.(b) below.

Form paragraph 8.33 and the appropriate one of 
form paragraphs 8.34 - 8.37 may be used to make 
nonstatutory rejections of the obvious-type.

(b)Two-Way Obviousness

 If the patent is the later filed application, the question 
of whether the timewise extension of the right to 
exclude granted by a patent is justified or unjustified 
must be addressed. A two-way test is to be applied 
only when the applicant could not have filed the 
claims in a single application and there is administrative 
delay. In re Berg, 46 USPQ2d 1226 (Fed. Cir. 
1998) (“The two-way exception can only apply when 
the applicant could not avoid separate filings, and 
even then, only if the PTO controlled the rates of prosecution 
to cause the later filed species claims to issue 
before the claims for a genus in an earlier application 




 

.
 
. . In Berg’s case, the two applications could have 
been filed as one, so it is irrelevant to our disposition 
who actually controlled the respective rates of prosecution.”). 
In the absence of administrative delay, a 
one-way test is appropriate. In re Goodman, 11 F.3d 
1046, 29 USPQ2d 2010 (Fed. Cir. 1993) (applicant’s 
voluntary decision to obtain early issuance of claims 
directed to a species and to pursue prosecution of previously 
rejected genus claims in a continuation is a 
considered election to postpone by the applicant and 
not administrative delay). Unless the record clearly 
shows administrative delay by the Office and that 
applicant could not have avoided filing separate applications, 
the examiner may use the one-way obviousness 
determination and shift the burden to applicant to 
show why a two-way obviousness determination is 
required.

When making a two-way obviousness determination 
where appropriate, it is necessary to apply the 
Graham obviousness analysis twice, once with the 
application claims as the claims in issue, and once 
with the patent claims as the claims in issue. Where a 
two-way obviousness determination is required, an 
obvious-type double patenting rejection is appropriate 
only where each analysis compels a conclusion that 
the invention defined in the claims in issue is an obvious 
variation of the invention defined in a claim in the 
other application/patent. If either analysis does not 
compel a conclusion of obviousness, no double patenting 
rejection of the obvious-type is made, but this 
does not necessarily preclude a nonstatutory double 
patenting rejection based on the fundamental reason 
to prevent unjustified timewise extension of the right 
to exclude granted by a patent. In re Schneller, 
397 
F.2d 350, 158 USPQ 210 (CCPA 1968). 

Although a delay in the processing of applications 
before the Office that would cause patents to issue in 
an order different from the order in which the applications 
were filed is a factor to be considered in determining 
whether a one-way or two-way obviousness 
determination is necessary to support a double patenting 
rejection, it may be very difficult to assess 
whether an applicant or the administrative process is 
primarily responsible for a delay in the issuance of a 
patent. On the one hand, it is applicant who presents 
claims for examination and pays the issue fee. On the 
other hand, the resolution of legitimate differences of 
opinion that must be resolved in an appeal process or 
the time spent in an interference proceeding can significantly 
delay the issuance of a patent. Nevertheless, 
the reasons for the delay in issuing a patent have been 
considered in assessing the propriety of a double patenting 
rejection. Thus, in Pierce v. Allen B. DuMont 
Laboratories, Inc., 297 F.2d 323, 131 USPQ 340 (3d. 
Cir. 1961), the court found that administrative delay 
may justify the extension of patent rights beyond 
17 
years but “a considered election to postpone acquisition 
of the broader [patent after the issuance of the 
later filed application] should not be tolerated.” In 
Pierce, the patentee elected to participate in an interference 
proceeding [after all claims in the application 
had been determined to be patentable] whereby the 
issuance of the broader patent was delayed by more 
than 7 years after the issuance of the narrower patent. 
The court determined that the second issued patent 
was invalid on the ground of double patenting. Similarly, 
in In re Emert, 124 F.3d 1458, 44 USPQ2d 1149 
(Fed. Cir. 1997), the court found that the one-way test 
is appropriate where applicants, rather than the Office, 
had significant control over the rate of prosecution of 
the application at issue. In support of its finding that 
the applicants were responsible for delaying prosecution 
of the application during the critical period, the 
court noted that the applicants had requested and 
received numerous time extensions in various filings. 
More importantly, the court noted, after initially 
receiving an obviousness rejection of all claims, 
applicants had waited the maximum period to reply (6 
months), then abandoned the application in favor of a 
substantially identical continuation application, then 
received another obviousness rejection of all claims, 
again waited the maximum period to reply, and then 
again abandoned the application in favor of a second 
continuation application substantially identical to the 
original filing. On the other hand, in General Foods 
Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 
1272, 23 USPQ2d 1839 (Fed. Cir. 1992), the court 
elected not to hold the patentee accountable for a 
delay in issuing the first filed application until after 
the second filed application issued as a patent, even 
where the patentee had intentionally refiled the first 
filed application as a continuation-in-part after receiving 
a Notice of Allowance indicating that all claims 
presented were patentable. Similarly, where, through 
no fault of the applicant, the claims in a later 
filed 
application issue first, an obvious-type double 




 

patenting rejection is improper, in the absence of a 
two-way obviousness determination, because the 
applicant does not have complete control over the rate 
of progress of a patent application through the Office. 
In re Braat, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir. 
1991). While acknowledging that allowance of the 
claims in the earlier filed application would result in 
the timewise extension of an invention claimed in the 
patent, the court was of the view that the extension 
was justified under the circumstances in this case, 
indicating that a double patenting rejection would be 
proper only if the claimed inventions were obvious 
over each other — a two-way obviousness determination. 


Form paragraph 8.33 and the appropriate one of 
form paragraphs 8.34-8.37 may be used to make nonstatutory 
rejections of the obvious type. 

¶ 8.33 Basis for Nonstatutory Double Patenting, 
“Heading” Only

The nonstatutory double patenting rejection is based on a judicially 
created doctrine grounded in public policy (a policy 
reflected in the statute) so as to prevent the unjustified or improper 
timewise extension of the “right to exclude” granted by a patent 
and to prevent possible harassment by multiple assignees. A nonstatutory 
obviousness-type double patenting rejection is appropriate 
where the conflicting claims are not identical, but at least one 
examined application claim is not patentably distinct from the reference 
claim(s) because the examined application claim is either 
anticipated by, or would have been obvious over, the reference 
claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 
(Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 
(Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. 
Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 
1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); 
and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 
1969).

A timely filed terminal disclaimer in compliance with 37 CFR 
1.321(c) or 1.321(d) may be used to overcome an actual or provisional 
rejection based on a nonstatutory double patenting ground 
provided the conflicting application or patent either is shown to be 
commonly owned with this application, or claims an invention 
made as a result of activities undertaken within the scope of a joint 
research agreement. 

Effective January 1, 1994, a registered attorney or agent of 
record may sign a terminal disclaimer. A terminal disclaimer 
signed by the assignee must fully comply with 37 CFR 3.73(b).

Examiner Note:

This form paragraph is to be used as a heading before a nonstatutory 
double patenting rejection using any of form paragraphs 
8.34 - 8.39.

¶ 8.34 Rejection, Obviousness Type Double Patenting - No 
Secondary Reference(s)

Claim [1] rejected on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claim [2] of U.S. 
Patent No. [3]. Although the conflicting claims are not identical, 
they are not patentably distinct from each other because [4].

Examiner Note:

1.This form paragraph is used for obviousness-type double patenting 
rejections based upon a patent.

2.If the obviousness-type double patenting rejection is based 
upon another application, do not use this form paragraph. A provisional 
double patenting rejection should be made using form paragraph 
8.33 and either form paragraph 8.35 or 8.37.

3.This form paragraph may be used where the conflicting 
invention is claimed in a patent which is:

(a)by the same inventive entity, or

(b)by a different inventive entity and is commonly assigned 
even though there is no common inventor, or

(c)not commonly assigned but has at least one inventor in common, 
or

(d)made as a result of activities undertaken within the scope of a 
joint research agreement.

4.Form paragraph 8.33 must precede any one of form paragraphs 
8.34 to 8.39 and must be used only ONCE in an Office 
action.

5.In bracket 3, insert the number of the patent.

6.If evidence indicates that the conflicting patent is prior art 
under 35 U.S.C. 102(f) or (g), a rejection should additionally be 
made under 102(f)/103(a) or 102(g)/103(a) using form paragraph 
7.21, unless the patent is disqualified under 35 U.S.C. 103(c) as 
prior art in a 35 U.S.C. 103(a) rejection.

7.If the patent is to a different inventive entity and has an earlier 
effective U.S. filing date, a rejection under 35 U.S.C. 102(e)/
103(a) may be made using form paragraph 7.21.02. For applications 
pending on or after December 10, 2004, rejections under 35 
U.S.C. 102(e)/103(a) should not be made or maintained if the 
patent is disqualified under 35 U.S.C. 103(c) as prior art in a 35 
U.S.C. 103(a) rejection.

¶ 8.35 Provisional Rejection, Obviousness Type Double 
Patenting - No Secondary Reference(s)

Claim [1] provisionally rejected on the ground of nonstatutory 
obviousness-type double patenting as being unpatentable over 
claim [2] of copending Application No. [3]. Although the conflicting 
claims are not identical, they are not patentably distinct from 
each other because [4].

This is a provisional obviousness-type double patenting rejection 
because the conflicting claims have not in fact been patented.

Examiner Note:

1.This form paragraph should be used when the conflicting 
claims are in another copending application.

2.If the conflicting claims are in a patent, do not use this form 
paragraph. Use form paragraphs 8.33 and 8.34.

3.This form paragraph may be used where the conflicting 
claims are in a copending application that is:

(a)by the same inventive entity, or




 

(b) commonly assigned even though there is no common inventor, 
or

(c)not commonly assigned but has at least one common inventor, 
or

(d)made as a result of activities undertaken within the scope of a 
joint research agreement.

4.Form paragraph 8.33 must precede any one of form paragraphs 
8.34 to 8.39 and must be used only ONCE in an Office 
action.

5.If the conflicting application is currently commonly assigned 
but the file does not establish that the conflicting inventions were 
commonly owned at the time the later invention was made, form 
paragraph 8.28 may be used in addition to this form paragraph to 
also resolve any issues relating to priority under 102(f) and/or (g).

6.In bracket 3, insert the number of the conflicting application.

7.A provisional obviousness-type double patenting rejection 
should also be made in the conflicting application.

8.If evidence shows that either application is prior art unto the 
other under 35 U.S.C. 102(f) or (g) and the copending application 
has not been disqualified under 35 U.S.C. 103(c) as prior art in a 
103(a) rejection, a rejection should additionally be made in the 
other application under 35 U.S.C. 102(f)/103(a) or 102(g)/103(a)
using form paragraph 7.21.

9.If the disclosure of one application may be used to support a 
rejection of the other and the applications have different inventive 
entities and different U.S. filing dates, use form paragraph 7.21.01to additionally make a rejection under 35 U.S.C. 102(e)/103(a) in 
the later filed application. For applications pending on or after 
December 10, 2004, rejections under 35 U.S.C. 102(e)/103(a)
should not be made or maintained if the patent is disqualified 
under 35 U.S.C. 103(c) as prior art in a 35 U.S.C. 103(a) rejection.

10.In bracket 4, provide appropriate rationale for obviousness of 
claims being rejected over the claims of the cited application.

¶ 8.36 Rejection, Obviousness Type Double Patenting - 
With Secondary Reference(s)

Claim [1] rejected on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claim [2] of U.S. 
Patent No. [3] in view of [4]. [5]

Examiner Note:

1.This form paragraph is used for obviousness-type double patenting 
rejections where the primary reference is a conflicting 
patent.

2.If the obviousness double patenting rejection is based on 
another application, do not use this form paragraph. A provisional 
obviousness-type double patenting rejection should be made using 
form paragraphs 8.33 and either 8.35 or 8.37.

3.This form paragraph may be used where the prior invention 
is claimed in a patent which is:

(a)by the same inventive entity, or

(b)by a different inventive entity and is commonly assigned 
even though there is no common inventor, or

(c)not commonly assigned but has at least one common inventor, 
or

(d)made as a result of activities undertaken within the scope of a 
joint research agreement.

4.Form paragraph 8.33 must precede any one of form paragraphs 
8.34 to 8.39 and must be used only ONCE in an office 
action.

5.In bracket 3, insert the number of the conflicting patent.

6.In bracket 4, insert the secondary reference.

7.In bracket 5, insert an explanation of the obviousness-type 
rejection.

8.If evidence shows that the conflicting patent is prior art under 
35 U.S.C. 102(f) or (g), a rejection should additionally be made 
under 35 U.S.C. 102(f)/103(a) or 102(g)/103(a) using form paragraph 
7.21, unless the patent is disqualified under 35 U.S.C. 
103(c) as prior art in a 35 U.S.C. 103(a) rejection.

9.If the patent issued to a different inventive entity and has an 
earlier effective U.S. filing date, a rejection under 35 U.S.C. 
102(e)/103(a) may be made using form paragraph 7.21.02. For 
applications pending on or after December 10, 2004, rejections 
under 35 U.S.C. 102(e)/103(a) should not be made or maintained 
if the patent is disqualified under 35 U.S.C. 103(c) as prior art in a35 U.S.C. 103(a) rejection. 

¶ 8.37 Provisional Rejection, Obviousness Type Double 
Patenting - With Secondary Reference(s)

Claim [1] provisionally rejected on the ground of nonstatutory 
obviousness-type double patenting as being unpatentable over 
claim [2] of copending Application No. [3] in view of [4]. [5]

This is a provisional obviousness-type double patenting rejection.


Examiner Note:

1.This form paragraph is used for obviousness-type double patenting 
rejections where the primary reference is a conflicting 
application.

2.If the conflicting claims are in a patent, do not use this form 
paragraph, use form paragraph 8.36.

3.This form paragraph may be used where the conflicting 
claims are in a copending application that is:

(a)by the same inventive entity, or

(b)commonly assigned even though there is no common inventor, 
or

(c)not commonly assigned but has at least one common inventor, 
or

(d)made as a result of activities undertaken within the scope of a 
joint research agreement.

4.Form paragraph 8.33 must precede any one of form paragraphs 
8.34 to 8.39 and must be used only ONCE in an office 
action.

5.If the conflicting cases are currently commonly assigned but 
the file does not establish that the conflicting inventions were 
commonly owned at the time the later invention was made, form 
paragraph 8.28 may be used in addition to this form paragraph to 
also resolve any issues relating to priority under 35 U.S.C. 102(f) 
and/or (g).

6.In bracket 3, insert the number of the conflicting application.

7.In bracket 4, insert the secondary reference.

8.In bracket 5, insert an explanation of the obviousness-type 
rejection.

9.A provisional obviousness-type double patenting rejection 
should also be made in the conflicting application.




 

10.If evidence shows that either application is prior art unto the 
other under 35 U.S.C. 102(f) or (g) and the copending application 
has not been disqualified under 35 U.S.C. 103(c) as prior art in a 
35 U.S.C. 103(a) rejection, a rejection should additionally be 
made under 35 U.S.C. 102(f)/103(a) or 102(g)/103(a) using form 
paragraph 7.21.

11.If the disclosure of one application may be used to support a 
rejection of the other and the applications have different inventive 
entities and different U.S. filing dates, use form paragraph 7.21.01to additionally make a rejection under 35 U.S.C. 102(e)/103(a) in 
the application with the later effective U.S. filing date. For applications 
pending on or after December 10, 2004, rejections under 
35 U.S.C. 102(e)/103(a) should not be made or maintained if the 
patent is disqualified under 35 U.S.C. 103(c) as prior art in a 35 
U.S.C. 103(a) rejection.

2.Another Type of Nonstatutory Double 
Patenting Rejection

There are some unique circumstances where it has 
been recognized that another type of nonstatutory 
double patenting rejection is applicable even where 
the inventions claimed in two or more applications/
patents are considered nonobvious over each other. 
These circumstances are illustrated by the facts before 
the court in In re Schneller, 397 F.2d 350, 158 USPQ 
210 (CCPA 1968). In affirming the double patenting 
rejection, the court summed up the situation:

in appellant’s own terms: The combination ABC was old. 
He made two improvements on it, (1) adding X and (2) 
adding Y, the result still being a unitary clip of enhanced 
utility. While his invention can be practiced in the forms 
ABCX or ABCY, the greatest advantage and best mode of 
practicing the invention as disclosed is obtained by using 
both inventions in the combination ABCXY. His first 
application disclosed ABCXY and other matters. He 
obtained a patent claiming [a clip comprising] BCX and 
ABCX, . . . so claiming these combinations as to cover 
them no matter what other feature is incorporated in 
them, thus covering effectively ABCXY. He now, many 
years later, seeks more claims directed to ABCY and 
ABCXY. Thus, protection he already had would be 
extended, albeit in somewhat different form, for several 
years beyond the expiration of his patent, were we to 
reverse. 

397 F.2d at 355-56, 158 USPQ at 216 (emphasis in 
original). 

The court recognized that “there is no double patenting 
in the sense of claiming the same invention 
because ABCX and ABCY are, in the technical patent 
law sense, different inventions. The rule against ‘double 
patenting,’ however, is not so circumscribed. The 
fundamental reason for the rule is to prevent unjustified 
timewise extension of the right to exclude granted 
by a patent no matter how the extension is brought 
about. To . . . prevail here, appellant has the burden of 
establishing that the invention claimed in his patent is 
‘independent and distinct’ from the invention of the 
appealed claims…appellant has clearly not established 
the independent and distinct character of the 
inventions of the appealed claims.” 397 F.2d at 354-
55, 158 USPQ at 214-15 (emphasis in original). The 
court observed:

The controlling fact is that patent protection for the 
clips, fully disclosed in and covered by the claims of the 
patent, would be extended by allowance of the appealed 
claims. Under the circumstance of the instant case, 
wherein we find no valid excuse or mitigating circumstances 
making it either reasonable or equitable to make 
an exception, and wherein there is no terminal disclaimer, 
the rule against “double patenting” must be applied. 

397 F.2d at 355, 158 USPQ at 215. 

 The decision in In re Schneller did not establish a 
rule of general application and thus is limited to the 
particular set of facts set forth in that decision. The 
court in Schneller cautioned “against the tendency to 
freeze into rules of general application what, at best, 
are statements applicable to particular fact situations.” 
Schneller, 397 F.2d at 355, 158 USPQ at 215. Nonstatutory 
double patenting rejections based on 
Schneller will be rare. The Technology Center (TC) 
Director must approve any nonstatutory double patenting 
rejections based on Schneller. If an examiner 
determines that a double patenting rejection based on 
Schneller is appropriate in his or her application, the 
examiner should first consult with his or her supervisory 
patent examiner (SPE). If the SPE agrees with 
the examiner then approval of the TC Director must 
be obtained before such a nonstatutory double patenting 
rejection can be made.

A fact situation similar to that in Schneller was presented 
to a Federal Circuit panel in In re Kaplan, 
789 
F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986). 
Kaplan had been issued a patent on a process of making 
chemicals in the presence of an organic solvent. 
Among the organic solvents disclosed and claimed as 
being useful were tetraglyme and sulfolane. One 
unclaimed example in the patent was specifically 
directed to a mixture of these two solvents. The 
claims in the application to Kaplan and Walker, the 
application before the Office, were directed to essentially 
the same chemical process, but requiring the use 




 

of the solvent mixture of tetraglyme and sulfolane. In 
reversing the double patenting rejection, the court 
stated that the mere fact that the broad process claim 
of the patent requiring an organic solvent reads on or 
“dominates” the narrower claim directed to basically 
the same process using a specific solvent mixture 
does not, per se, justify a double patenting rejection. 
The court also pointed out that the double patenting 
rejection improperly used the disclosure of the joint 
invention (solvent mixture) in the Kaplan patent specification 
as though it were prior art. 

A significant factor in the Kaplan case was that the 
broad invention was invented by Kaplan, and the narrow 
invention (i.e., using a specific combination of 
solvents) was invented by Kaplan and Walker. Since 
these applications (as the applications in Braat) were 
filed before the Patent Law Amendments Act of 1984 
(Pub. Law 98-622, November 8, 1984) amending 35 
U.S.C. 116 to expressly authorize filing a patent application 
in the names of joint inventors who did not 
necessarily make a contribution to the invention 
defined in each claim in the patent, it was necessary to 
file multiple applications to claim both the broad and 
narrow inventions. Accordingly, there was a valid reason, 
driven by statute, why the claims to the specific 
solvent mixture were not presented for examination in 
the Kaplan patent application. 

Each double patenting situation must be decided on 
its own facts. 

Form paragraph 8.33 and the appropriate one of 
form paragraphs 8.38 (between an issued patent and 
one or more applications) and 8.39 (provisional rejections) 
may be used to make this type of nonstatutory 
double patenting rejection.

¶ 8.38 Double Patenting - Nonstatutory (Based Solely on 
Improper Timewise Extension of Patent Rights) With a 
Patent

Claim [1] rejected on the ground of nonstatutory double patenting 
over claim [2] of U.S. Patent No. [3] since the claims, if 
allowed, would improperly extend the “right to exclude” already 
granted in the patent.

The subject matter claimed in the instant application is fully 
disclosed in the patent and is covered by the patent since the 
patent and the application are claiming common subject matter, as 
follows: [4]

Furthermore, there is no apparent reason why applicant was 
prevented from presenting claims corresponding to those of the 
instant application during prosecution of the application which 
matured into a patent. See In re Schneller, 397 F.2d 350, 158 
USPQ 210 (CCPA 1968). See also MPEP § 804.

Examiner Note:

1.This form paragraph should only be used where approval 
from the TC Director to make a nonstatutory double patenting 
rejection based on In re Schneller has been obtained. 

2.Use this form paragraph only when the subject matter of the 
claim(s) is fully disclosed in, and covered by at least one claim of, 
an issued U.S. Patent which is commonly owned or where there is 
common inventorship (one or more inventors in common).

3.In bracket 3, insert the number of the patent.

4.In bracket 4, insert a description of the subject matter being 
claimed which is covered in the patent.

5.Form paragraph 8.33 must precede any one of form paragraphs 
8.34 to 8.39 and must be used only ONCE in an Office 
action.

6.If evidence indicates that the conflicting patent is prior art 
under 35 U.S.C. 102(f) or (g), a rejection should additionally be 
made under 35 U.S.C. 102(f)/103(a) or 102(g)/103(a) using form 
paragraph 7.21, unless the patent is disqualified under 35 U.S.C. 
103(c) as prior art in a 35 U.S.C. 103(a) rejection.

7.If the patent is to another inventive entity and has an earlier 
U.S. filing date, a rejection under 35 U.S.C. 102(e)/103(a) may be 
made using form paragraph 7.21.02. For applications pending on 
or after December 10, 2004, rejections under 35 U.S.C. 102(e)/
103(a) should not be made or maintained if the patent is disqualified 
under 35 U.S.C. 103(c) as prior art in a 35 U.S.C. 103(a) 
rejection.

¶ 8.39 Double Patenting - Nonstatutory (Based Solely on 
Improper Timewise Extension of Patent Rights) With 
Another Application

Claim [1] provisionally rejected on the ground of nonstatutory 
double patenting over claim [2] of copending Application No. [3]. 
This is a provisional double patenting rejection because the conflicting 
claims have not in fact been patented.

The subject matter claimed in the instant application is fully 
disclosed in the referenced copending application and would be 
covered by any patent granted on that copending application since 
the referenced copending application and the instant application 
are claiming common subject matter, as follows: [4]

Furthermore, there is no apparent reason why applicant would 
be prevented from presenting claims corresponding to those of the 
instant application in the other copending application. See In re 
Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also 
MPEP § 804.

Examiner Note:

1.This form paragraph should only be used where approval 
from the TC Director to make a nonstatutory double patenting 
rejection based on In re Schneller has been obtained. 

2.Use this form paragraph only when the subject matter of the 
claim(s) is fully disclosed in, and covered by at least one claim of, 
another copending application which is commonly owned or 
where there is common inventorship (one or more inventors in 
common).

3.In bracket 3, insert the number of the conflicting application.

4.In bracket 4, insert a description of the subject matter being 
claimed which is covered in the copending application.




 

5.Form paragraph 8.33 must precede any one of form paragraphs 
8.34 to 8.39 and must be used only ONCE in an office 
action.

6..If the conflicting application is currently commonly assigned 
but the file does not establish that the conflicting inventions were 
commonly owned at the time the later invention was made, form 
paragraph 8.28 may be used in addition to this form paragraph to 
also resolve any issues relating to priority under 35 U.S.C. 102(f)
and/or (g).

7.A provisional double patenting rejection should also be made 
in the conflicting application.

8.If evidence shows that either application is prior art unto the 
other under 35 U.S.C. 102(f) or (g) and the copending application 
has not been disqualified (as prior art in a 103 rejection based on 
common ownership), a rejection should additionally be made in 
the other application under 35 U.S.C. 102(f)/103(a) or 102(g)/
103(a) using form paragraph 7.21, unless the patent is disqualified 
under 35 U.S.C. 103(c) as prior art in a 35 U.S.C. 103(a) rejection.

9.If the disclosure of one application may be used to support a 
rejection of the other and the applications have different inventive 
entities and different U.S. filing dates, use form paragraph 7.21.01to additionally make a rejection under 35 U.S.C. 102(e)/103(a) in 
the application with the later effective U.S. filing date. For applications 
pending on or after December 10, 2004, rejections under 
35 U.S.C. 102(e)/103(a) should not be made or maintained if the 
patent is disqualified under 35 U.S.C. 103(c) as prior art in a 35 
U.S.C. 103(a) rejection.

3.Design/Plant — Utility Situations

Double patenting issues may be raised where an 
applicant has filed both a utility patent application (35 
U.S.C. 111) and either an application for a plant 
patent (35 U.S.C. 161) or an application for a design 
patent (35 U.S.C. 171). In general, the same double 
patenting principles and criteria that are applied in 
utility-utility situations are applied to utility-plant or 
utility-design situations. Double patenting rejections 
in utility-plant situations may be made in appropriate 
circumstances. 

Although double patenting is rare in the context of 
utility versus design patents, a double patenting rejection 
of a pending design or utility application can be 
made on the basis of a previously issued utility or 
design patent, respectively. Carman Indus. Inc. v. 
Wahl, 724 F.2d 932, 220 USPQ 481 (Fed. Cir. 1983). 
The rejection is based on the public policy preventing 
the extension of the term of a patent. Double patenting 
may be found in a design-utility situation irrespective 
of whether the claims in the patent relied on in the 
rejection and the claims in issue involve the same 
invention, or whether they involve inventions which 
are obvious variations of one another. In re Thorington, 
418 F.2d 528, 163 USPQ 644 (CCPA 1969). 

 In Carman Indus., the court held that no double 
patenting existed between a design and utility patent 
since the claims in the utility patent, drawn to the interior 
construction of a flow promoter, were not directed 
to the same invention or an obvious variation of the 
invention claimed in a design patent directed to the 
visible external surface configuration of a storage bin 
flow promoter. The majority opinion in this decision 
appears to indicate that a two-way obviousness determination 
is necessary in design-utility cases. 724 F.2d 
at 940-41, 220 USPQ at 487-88. But see Carman 
Indus. (J. Nies, concurring). 

In Thorington, the court affirmed a double patenting 
rejection of claims for a fluorescent light bulb in a 
utility patent application in view of a previously 
issued design patent for the same bulb. In another 
case, a double patenting rejection of utility claims for 
a finger ring was affirmed in view of an earlier issued 
design patent, where the drawing in both the design 
patent and the utility application illustrated the same 
article. In re Phelan, 205 F.2d 183, 98 USPQ 156 
(CCPA 1953). A double patenting rejection of a 
design claim for a flashlight cap and hanger ring was 
affirmed over an earlier issued utility patent. In re 
Barber, 81 F.2d 231, 28 USPQ 187 (CCPA 1936). A 
double patenting rejection of claims in a utility patent 
application directed to a balloon tire construction was 
affirmed over an earlier issued design patent. In re 
Hargraves, 53 F.2d 900, 11 USPQ 240 (CCPA 1931). 

III.CONTRAST BETWEEN DOUBLE PATENTING 
REJECTION AND REJECTIONS 
BASED ON PRIOR ART 

Rejections over a patent or another copending 
application based on double patenting or 35 U.S.C. 
103(a) are similar in the sense that both require comparison 
of the claimed subject matter with at least part 
of the content of another patent or application, and 
both may require that an obviousness analysis be 
made. However, there are significant differences 
between a rejection based on double patenting and 
one based on 35 U.S.C. 102(e) prior art under 
35 
U.S.C. 103(a). In re Bartfeld, 925 F.2d 1450, 
17 
USPQ2d 1885 (Fed. Cir. 1991). 




 

One significant difference is that a double patenting 
rejection must rely on a comparison with the claims in 
an issued or to be issued patent, whereas an anticipation 
or obviousness rejection based on the same 
patent under 35 
U.S.C. 102(e)/103(a) relies on a comparison 
with what is disclosed (whether or not 
claimed) in the same issued or to be issued patent. In a 
35 U.S.C. 102(e)/103(a) rejection over a prior art 
patent, the reference patent is available for all that it 
fairly discloses to one of ordinary skill in the art, 
regardless of what is claimed. In re Bowers, 359 F.2d 
886, 149 USPQ 570 (CCPA 1966). 

A second significant difference is that a terminal 
disclaimer cannot be used to obviate a rejection based 
on 35 U.S.C. 102(e)/103(a) prior art. In re Fong, 
378 
F.2d 977, 154 USPQ 25 (CCPA 1967). The purpose 
of a terminal disclaimer is to obviate a double 
patenting rejection by removing the potential harm to 
the public by issuing a second patent, and not to 
remove a patent as prior art. 

For applications filed on or after November 29, 
1999 and for applications pending on or after December 
10, 2004, a commonly assigned/owned patent or 
application may be disqualified as 35 U.S.C. 102(e) 
prior art in a 35 U.S.C. 103(a) rejection. See 
35 
U.S.C. 103(c)(1). As an alternative to invoking the 
prior art exclusion under 35 U.S.C. 103(c)(1), the 
assignee can take some preemptive measures to avoid 
having a commonly assigned/owned copending application 
become prior art under 35 U.S.C. 102(e). The 
applications can be filed on the same day, or copending 
applications can be merged into a single continuation-
in-part application and the parent applications 
abandoned. If these steps are undesirable or the first 
patent has issued, the prior art effect of the first patent 
may be avoided by a showing under 37 
CFR 1.132that any unclaimed invention disclosed in the first 
patent was derived from the inventor of the application 
before the examiner in which the 35 
U.S.C. 
102(e)/103(a) rejection was made. In re Katz, 687 
F.2d 450, 215 USPQ 14 (CCPA 1982). See also 
MPEP § 716.10. It may also be possible for applicant 
to respond to a 35 U.S.C. 102(e)/103(a) rejection by 
showing, under 37 CFR 1.131, that the date of invention 
of the claimed subject matter was prior to the 
effective filing date of the reference patent which has 
been relied upon for its unclaimed disclosure. See 
MPEP § 715. See also 37 
CFR 1.130 and MPEP § 718for affidavits or declarations to disqualify a commonly 
owned patent as prior art under 35 U.S.C. 103. 

For applications pending on or after December 10, 
2004, and for reexamination proceedings in which the 
patent under reexamination was granted on or after 
December 10, 2004, a patent or application may be 
disqualified as 35 U.S.C. 102(e) prior art in a 
35 
U.S.C. 103(a) rejection if evidence of a joint 
research agreement pursuant to 35 U.S.C. 103(c)(2) 
and (3) is made of record in the application (or patent) 
being examined (or reexamined), and the conflicting 
claims resulted from a joint research agreement that 
was in effect on or before the date the later claimed 
invention was made.

An examiner should make both a 35 U.S.C. 102(e)/
103 rejection and a double patenting rejection over 
the same reference when the facts support both rejections. 
Note that even if an earlier patent or application 
to another is disqualified as prior art in a 35 
U.S.C. 103(a) rejection based on common ownership 
or a joint research agreement as discussed above, that 
patent or application is available as prior art under 35 
U.S.C. 102(e) and may form the basis of an anticipation 
rejection. If the examiner makes only one of 
these rejections when each is separately applicable, 
and if the next office action includes the previously 
omitted rejection, then the next Office 
action cannot be made final. A prior art reference 
that anticipates or  renders claimed subject matter 
obvious under 35 U.S.C. 102(e)/103(a) does not create 
a double patenting situation where that subject 
matter is not claimed in the reference patent. For 
applications pending on or after December 10, 2004, 
rejections under 35 U.S.C. 102(e)/103(a) should not 
be made or maintained if the reference is disqualified 
under 35 U.S.C. 103(c) as prior art in a 35 U.S.C. 
103(a) rejection. See MPEP §
 
706.02(l)(1) for information 
regarding when prior art is disqualified under 
35 U.S.C. 103(c) based on common ownership or 
claimed inventions made as a result of activities 
undertaken within the scope of a joint research agreement. 


Until applicant establishes the existence of a joint 
research agreement, the examiner cannot apply a double 
patenting rejection based on the possible existence 
of such an agreement. If in reply to an Office action 
applying a rejection under 35 U.S.C. 102(e)/103, 
applicant disqualifies the relied upon reference under 




 

the joint research agreement provision of 35 U.S.C. 
103(c) and a subsequent double patenting rejection 
based upon the disqualified reference is applied, the 
next Office action may be made final even if applicant 
did not amend the claims (provided the examiner 
introduces no other new ground of rejection that was 
not necessitated by either amendment or an information 
disclosure statement filed during the time period 
set forth in 37 CFR 1.97(c) with the fee set forth in 37 
CFR 1.17(p)). The Office action is properly made 
final because the new double patenting rejection was 
necessitated by the applicant’s amendment of the 
application.

804.01Prohibition of Double PatentingRejections Under 35 U.S.C. 121 
[R-3]

35 U.S.C. 121 authorizes the Director to restrict 
the claims in a patent application to a single invention 
when independent and distinct inventions are presented 
for examination. The third sentence of 35 
U.S.C. 121 prohibits the use of a patent issuing on an 
application with respect to which a requirement for 
restriction has been made, or on an application filed as 
a result of such a requirement, as a reference against 
any divisional application, if the divisional application 
is filed before the issuance of the patent. The 
35 
U.S.C. 121 prohibition applies only where the 
Office has made a requirement for restriction. The 
prohibition does not apply where the divisional application 
was voluntarily filed by the applicant and not 
in response to an Office requirement for restriction. 
This apparent nullification of double patenting as a 
ground of rejection or invalidity in such cases 
imposes a heavy burden on the Office to guard against 
erroneous requirements for restrictions where the 
claims define essentially the same invention in different 
language and which, if acquiesced in, might result 
in the issuance of several patents for the same invention. 


The prohibition against holdings of double patenting 
applies to requirements for restriction between the 
related subjects treated in MPEP § 806.04 through 
§
 
806.05(j), namely, between combination and 
subcombination thereof, between subcombinations 
disclosed as usable together, between process and 
apparatus for its practice, between process and product 
made by such process and between apparatus and 
product made by such apparatus, etc., so long as the 
claims in each application are filed as a result of such 
requirement. 

The following are situations where the prohibition 
against double patenting rejections under 35 
U.S.C. 121 does not apply: 

(A)The applicant voluntarily files two or more 
applications without a restriction requirement by the 
examiner. 35 U.S.C. 121 requires claims of a divisional 
application to have been formally entered, 
restricted, and removed from an earlier application in 
order to obtain the benefit of 35 U.S.C. 121. Geneva 
Pharms. Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 
1379, 68 USPQ2d 1865, 1870 (Fed. Cir. 2003) (For 
claims in a divisional application that were not in the 
original application, 35 U.S.C. 121 “does not suggest 
that the original application merely needs to provide 
some support for claims that are first entered formally 
in the later divisional application.” Id.); In re 
Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 
1968). 

(B)The claims of the different applications or 
patents are not consonant with the restriction requirement 
made by the examiner, since the claims have 
been changed in material respects from the claims at 
the time the requirement was made. For example, the 
divisional application filed includes additional claims 
not consonant in scope to the original claims subject 
to restriction in the parent. Symbol Technologies, Inc. 
v. Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 
(Fed. Cir. 1991) and Gerber Garment Technology, 
Inc. v. Lectra Systems, Inc., 916 F.2d 683, 16 USPQ2d 
1436 (Fed. Cir. 1990). In order for consonance to 
exist, the line of demarcation between the independent 
and distinct inventions identified by the examiner 
in the requirement for restriction must be 
maintained. 916 F.2d at 688, 16 USPQ2d at 1440. 

(C)The restriction requirement was written in a 
manner which made it clear to applicant that the 
requirement was made subject to the nonallowance of 
generic or other linking claims and such generic or 
linking claims are subsequently allowed. Therefore, if 
a generic or linking claim is subsequently allowed, the 
restriction requirement must be withdrawn. 

(D)The requirement for restriction (holding of 
lack of unity of invention) was only made in an international 
application by the International Searching 




 

Authority or the International Preliminary Examining 
Authority. 

(E)The requirement for restriction was withdrawn 
by the examiner before the patent issues. In re 
Ziegler, 443 F.2d 1211, 170 USPQ 129 (CCPA 1971). 
Note that a restriction requirement in an earlier-filed 
application does not carry over to claims of a continuation 
application in which the examiner does not reinstate 
or refer to the restriction requirement in the 
parent application. Reliance on a patent issued from 
such a continuation application to reject claims in a 
later-filed divisional application is not prohibited 
under 35 U.S.C. 121. Bristol-Myers Squibb Co. v. 
Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d 
1097, 1100 (Fed. Cir. 2004).

(F)The claims of the second application are 
drawn to the “same invention” as the first application 
or patent. Studiengesellschaft Kohle mbH v. Northern 
Petrochemical Co., 784 F.2d 351, 228 USPQ 837 
(Fed. Cir. 1986). 



(G)Where a requirement for restriction between a 
product, a process of making the product, and a process 
of using the product was made subject to the non-
allowance of the product and the product is subsequently 
allowed. In this situation the restriction 
requirement must be withdrawn.

While the situation should not arise where appropriate 
care is exercised in defining the independent 
and distinct inventions in a restriction requirement, 
the issue might arise as to whether 35 U.S.C. 121 prevents 
the use of a double patenting rejection when the 
identical invention is claimed in both the patent and 
the pending application. Under these circumstances, 
the Office will make the double patenting rejection 
because the patentee is entitled only to a single patent 
for an invention. As expressed in Studiengesellschaft 
Kohle, 784 F.2d at 361, 228 USPQ at 844, (J. Newman, 
concurring), “35 U.S.C. 121 of course does not 
provide that multiple patents may be granted on the 
identical invention.” 

804.02Avoiding a Double Patenting 
Rejection [R-3]

I.STATUTORY 

A rejection based on the statutory type of double 
patenting can be avoided by amending the conflicting 
claims so that they are not coextensive in scope. 
Where the conflicting claims are in one or more pending 
applications and a patent, a rejection based on 
statutory type double patenting can also be avoided by 
canceling the conflicting claims in all the pending 
applications. Where the conflicting claims are in two 
or more pending applications, a provisional rejection 
based on statutory type double patenting can also be 
avoided by canceling the conflicting claims in all but 
one of the pending applications. A terminal disclaimer 
is not effective in overcoming a statutory double patenting 
rejection. 

The use of a 37 CFR 1.131 affidavit in overcoming 
a statutory double patenting rejection is inappropriate. 
In re Dunn, 349 F.2d 433, 146 USPQ 479 (CCPA 
1965). Knell v. Muller, 174 USPQ 460 (Comm’r. Pat. 
1971), citing the CCPA decisions in In re Ward, 236 
F.2d 428, 111 USPQ 101 (CCPA 1956); In re Teague, 
254 F.2d 145, 117 USPQ 284 (CCPA 1958); and In re 
Hidy, 303 F.2d 954, 133 USPQ 650 (CCPA 1962). 

II.NONSTATUTORY 



A rejection based on a nonstatutory type of double 
patenting can be avoided by filing a terminal disclaimer 
in the application or proceeding in which the 
rejection is made. In re Vogel, 422 F.2d 438, 
164 
USPQ 619 (CCPA 1970); In re Knohl, 386 F.2d 
476, 155 USPQ 586 (CCPA 1967); and In re Griswold, 
365 F.2d 834, 150 USPQ 804 (CCPA 1966). 
The use of a terminal disclaimer in overcoming a nonstatutory 
double patenting rejection is in the public 
interest because it encourages the disclosure of additional 
developments, the earlier filing of applications, 
and the earlier expiration of patents whereby the 
inventions covered become freely available to the 
public. In re Jentoft, 392 F.2d 633, 157 USPQ 363 
(CCPA 1968); In re Eckel, 393 F.2d 848, 157 USPQ 
415 (CCPA 1968); and In re Braithwaite, 379 F.2d 
594, 154 USPQ 29 (CCPA 1967). 

The use of a 37 CFR 1.131 affidavit in overcoming 
a double patenting rejection is inappropriate because 
the claim or claims in the application are being 
rejected over a patent which claims the rejected 
invention. In re Dunn, 349 F.2d 433, 146 USPQ 479 
(CCPA 1965). 37 CFR 1.131 is inapplicable if the 
claims of the application and the patent are “directed 
to substantially the same invention.” It is also inappli





 

cable if there is a lack of “patentable distinctness” 
between the claimed subject matter. Knell v. Muller, 
174 USPQ 460 (Comm’r. Pat. 1971), citing the court 
decisions in In re Ward, 236 F.2d 428, 111 USPQ 101 
(CCPA 1956); In re Teague, 254 F.2d 145, 117 USPQ 
284 (CCPA 1958); and In re Hidy, 303 F.2d 954, 133 
USPQ 65 (CCPA 1962). 

A patentee or applicant may disclaim or dedicate to 
the public the entire term, or any terminal part of the 
term of a patent. 35 U.S.C. 253. The statute does not 
provide for a terminal disclaimer of only a specified 
claim or claims. The terminal disclaimer must operate 
with respect to all claims in the patent. 

The filing of a terminal disclaimer to obviate a 
rejection based on nonstatutory double patenting is 
not an admission of the propriety of the rejection. 
Quad Environmental Technologies Corp. v. Union 
Sanitary District, 946 F.2d 870, 20 USPQ2d 1392 
(Fed. Cir. 1991). The court indicated that the “filing of 
a terminal disclaimer simply serves the statutory function 
of removing the rejection of double patenting, 
and raises neither a presumption nor estoppel on the 
merits of the rejection.” 

A terminal disclaimer filed to obviate a double patenting 
rejection is effective only with respect to the 
application identified in the disclaimer, unless by its 
terms it extends to continuing applications. If an 
appropriate “provisional” nonstatutory double patenting 
rejection  is made in each of two or more 
pending applications, the examiner should follow 
the practice set forth in MPEP § 804, subsection I.B.1. 
in determining in which of the applications an appropriate 
terminal disclaimer must be filed.

Claims that differ from each other (aside from 
minor differences in language, punctuation, etc.), 
whether or not the difference would have been
obvious, are not considered to be drawn to the same 
invention for double patenting purposes under 35 
U.S.C. 101. In cases where the difference in claims 
would have been obvious, terminal disclaimers 
are effective to overcome double patenting rejections. 
Where the subject matter of the reference and the 
claimed invention were commonly owned at the time 
the invention was made, such terminal disclaimers 
must include a provision that the patent shall be unenforceable 
if it ceases to be commonly owned with the 
other application or patent. Note 37 CFR 1.321(c). 
37 CFR 1.321(d) sets forth the requirements for a 
terminal disclaimer where the claimed invention 
resulted from activities undertaken within the scope 
of a joint research agreement as defined in 35 U.S.C. 
103(c)(3). It should be emphasized that a terminal 
disclaimer cannot be used to overcome a rejection 
under 35 U.S.C. 102(e)/103(a). 

III.TERMINAL DISCLAIMER REQUIRED 
DESPITE REQUEST TO ISSUE ON COMMON 
ISSUE DATE

 Applicants are cautioned that reliance upon a common 
issue date cannot effectively substitute for the filing 
of one or more terminal disclaimers in order to 
overcome a proper double patenting rejection, particularly 
since a common issue date alone does not avoid 
the potential problems of dual ownership by a 
common assignee, or by parties to a joint research 
agreement, of patents to patentably indistinct inventions. 
In any event, the Office cannot ensure that two 
or more applications will have a common issue date.

IV.DISCLAIMING MULTIPLE DOUBLE 
PATENTING REFERENCES

If multiple conflicting patents and/or pending applications 
are applied in double patenting rejections 
made in a single application, then prior to issuance of 
that application, it is necessary to disclaim the terminal 
part of any patent granted on the application 
which would extend beyond the application date of
each one of the conflicting patents and/or applications. 
A terminal disclaimer fee is required for each 
terminal disclaimer filed. To avoid paying multiple 
terminal disclaimer fees, a single terminal disclaimer 
based on common ownership may be filed, for 
example, in which the term disclaimed is based on all 
the conflicting, commonly owned double patenting 
references. Similarly, a single terminal disclaimer 
based on a joint research agreement may be filed, in 
which the term disclaimed is based on all the conflicting 
double patenting references.

Each one of the commonly owned conflicting 
double patenting references must be included 
in the terminal disclaimer to avoid the problem of 
dual ownership of patents to patentably indistinct 
inventions in the event that the patent issuing from the 
application being examined ceases to be commonly 
owned with any one of the double patenting references 
that have issued or may issue as a patent. Note 




 

that 37 CFR 1.321(c)(3) requires that a terminal disclaimer 
for commonly owned conflicting claims
“[i]nclude a provision that any patent granted on that 
application or any patent subject to the reexamination 
proceeding shall be enforceable only for and during 
such period that said patent is commonly owned with 
the application or patent which formed the basis for 
the rejection.”

Filing a terminal disclaimer including each one of 
the conflicting double patenting references is also 
necessary to avoid the problem of ownership of patents 
to patentably indistinct inventions by parties to a 
joint research agreement. 37 CFR 1.321(d) sets forth 
the requirements for a terminal disclaimer where the 
claimed invention resulted from activities undertaken 
within the scope of a joint research agreement.

V.REQUIREMENTS OF A TERMINAL DISCLAIMER 


A terminal disclaimer is a statement filed by an 
owner (in whole or in part) of a patent or a patent to 
be granted that is used to disclaim or dedicate a portion 
of the entire term of all the claims of a patent. The 
requirements for a terminal disclaimer are set forth in 
37 CFR 1.321. Sample forms of a terminal disclaimer, 
and guidance as to the filing and treatment of a terminal 
disclaimer, are provided in MPEP § 1490. 

VI.TERMINAL DISCLAIMERS REQUIRED 
TO OVERCOME NONSTATUTORY
DOUBLE PATENTING REJECTIONS IN 
APPLICATIONS FILED ON OR AFTER 
JUNE 8, 1995

Public Law 103-465 (1994) amended 35 U.S.C. 
154(a)(2) to provide that any patent issuing on a utility 
or plant application filed on or after June 8, 1995 
will expire 20 years from its filing date, or, if the 
application claims the benefit of an earlier filed application 
under 35 U.S.C. 120, 121, or 365(c), 20 years 
from the earliest filing date for which a benefit under 
35 U.S.C. 120, 121, or 365(c) is claimed. Therefore, 
any patent issuing on a continuing utility or plant 
application filed on or after June 8, 1995 will expire 
20 years from the earliest filing date for which a benefit 
is claimed under 35 U.S.C. 120, 121, or 365(c), 
subject to the provisions of 35 U.S.C. 154(b).

There are at least two reasons for insisting upon a 
terminal disclaimer to overcome a nonstatutory
double patenting rejection in a continuing application 
subject to a 20-year term under 35 U.S.C. 154(a)(2). 
First, 35 U.S.C. 154(b) includes provisions for patent 
term extension based upon prosecution delays during 
the application process. Thus, 35 U.S.C. 154 does not 
ensure that any patent issuing on a continuing utility 
or plant application filed on or after June 8, 1995 will 
necessarily expire 20 years from the earliest filing 
date for which a benefit is claimed under 35 U.S.C. 
120, 121, or 365(c). Second, 37 CFR 1.321(c)(3) 
requires that a terminal disclaimer filed to obviate a 
nonstatutory double patenting rejection based 
on commonly owned conflicting claims include a 
provision that any patent granted on that application 
be enforceable only for and during the period that the 
patent is commonly owned with the application or 
patent which formed the basis for the rejection. 37 
CFR 1.321(d) sets forth the requirements for a terminal 
disclaimer where the claimed invention resulted 
from activities undertaken within the scope of a joint 
research agreement. These requirements serve to 
avoid the potential for harassment of an accused 
infringer by multiple parties with patents covering the 
same patentable invention. See, e.g., In re Van 
Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 
(CCPA 1982). Not insisting upon a terminal disclaimer 
to overcome a nonstatutory double patenting 
rejection in an application subject to a 20-year 
term under 35 U.S.C. 154(a)(2) would result in the 
potential for the problem that 37 CFR 1.321(c)(3) was 
promulgated to avoid. 

Accordingly, a terminal disclaimer under 37 CFR 
1.321 is required in an application to overcome a 
nonstatutory double patenting rejection, even if 
the application was filed on or after June 8, 1995 and 
claims the benefit under 35 U.S.C. 120, 121, or 365(c)
of the filing date of the patent or application which 
forms the basis for the rejection. Examiners should 
respond to arguments that a terminal disclaimer under 
37 CFR 1.321 should not be required in a continuing 
application filed on or after June 8, 1995 to overcome 
a nonstatutory double patenting rejection due to 
the change to 35 U.S.C. 154 by citing to this section 
of the MPEP or to the Official Gazette notice at 1202 
O.G. 112 (Sept. 30, 1997).




 

804.03 Commonly Owned Inventions 
of Different Inventive Entities; 
Non-Commonly Owned 
Inventions Subject to a Joint 
Research Agreement [R-3]

35 U.S.C. 103. Conditions for patentability; non-obvious 
subject matter.





(c)(1) Subject matter developed by another person, which 
qualifies as prior art only under one or more of subsections (e), (f), 
and (g) of section 102 of this title, shall not preclude patentability 
under this section where the subject matter and the claimed invention 
were, at the time the claimed invention was made, owned by 
the same person or subject to an obligation of assignment to the 
same person.

(2)For purposes of this subsection, subject matter developed 
by another person and a claimed invention shall be deemed 
to have been owned by the same person or subject to an obligation 
of assignment to the same person if — 

(A)the claimed invention was made by or on behalf of 
parties to a joint research agreement that was in effect on or before 
the date the claimed invention was made;

(B)the claimed invention was made as a result of 
activities undertaken within the scope of the joint research agreement; 
and 

(C)the application for patent for the claimed invention 
discloses or is amended to disclose the names of the parties to the 
joint research agreement. 

(3)For purposes of paragraph (2), the term “joint 
research agreement” means a written contract, grant, or cooperative 
agreement entered into by two or more persons or entities for 
the performance of experimental, developmental, or research 
work in the field of the claimed invention.

37 CFR 1.78. Claiming benefit of earlier filing date and 
cross references to other applications. 



(c)If an application or a patent under reexamination and at 
least one other application naming different inventors are owned 
by the same person and contain conflicting claims, and there is no 
statement of record indicating that the claimed inventions were 
commonly owned or subject to an obligation of assignment to the 
same person at the time the later invention was made, the Office 
may require the assignee to state whether the claimed inventions 
were commonly owned or subject to an obligation of assignment 
to the same person at the time the later invention was made, and if 
not, indicate which named inventor is the prior inventor. Even if 
the claimed inventions were commonly owned, or subject to an 
obligation of assignment to the same person, at the time the later 
invention was made, the conflicting claims may be rejected under 
the doctrine of double patenting in view of such commonly owned 
or assigned applications or patents under reexamination.

37 CFR 1.130. Affidavit or declaration to disqualify 
commonly owned patent or published application as prior 
art.

(a)When any claim of an application or a patent under reexamination 
is rejected under 35 
U.S.C. 103 on a U.S. patent or U.S. 
patent application publication which is not prior art under 35 
U.S.C. 102(b), and the inventions defined by the claims in the 
application or patent under reexamination and by the claims in the 
patent or published application are not identical but are not patentably 
distinct, and the inventions are owned by the same party, the 
applicant or owner of the patent under reexamination may disqualify 
the patent or patent application publication as prior art. 
The patent or patent application publication can be disqualified as 
prior art by submission of:

(1)A terminal disclaimer in accordance with § 1.321(c); 
and

(2)An oath or declaration stating that the application or 
patent under reexamination and patent or published application 
are currently owned by the same party, and that the inventor 
named in the application or patent under reexamination is the 
prior inventor under 35 U.S.C. 104.

(b)[Reserved]

I.DOUBLE PATENTING 

Claims in commonly owned applications of 
different inventive entities may be rejected on the 
ground of double patenting. This is in accordance 
with existing case law and prevents an organization 
from obtaining two or more patents with different 
expiration dates covering nearly identical subject matter. 
See In re Zickendraht, 319 F.2d 225, 138 USPQ 
22 (CCPA 1963) (the doctrine is well established that 
claims in different applications need be more than 
merely different in form or content and that patentable 
distinction must exist to 
entitle applicants to a second 
patent) and In re Christensen, 330 F.2d 652, 141 
USPQ 295 (CCPA 1964). 

Claims may also be rejected on the grounds of 
nonstatutory double patenting in certain non-commonly 
owned applications that claim inventions 
resulting from activities undertaken with the scope of 
a joint research agreement as defined in 35 U.S.C. 
103(c)(3). This prevents the parties to the joint 
research agreement from obtaining two or more patents 
with different expiration dates covering nearly 
identical subject matter. See the amendment to 35 
U.S.C. 103(c) by the CREATE Act (Public Law 108-
453; 118 Stat. 3596 (2004)).




 

Double patenting rejections can be overcome 
in 
certain circumstances by disclaiming, pursuant 
to 
the 
provisions of 37 CFR 1.321(c), the terminal 
portion of 
the term of the later patent and including in 
the disclaimer a provision that the patent shall be 
enforceable only for and during the period the patent 
is commonly owned with the application or patent 
which formed the basis for the rejection, thereby eliminating 
the problem of extending patent life. Double 
patenting rejections can also be overcome in cases 
subject to a joint research agreement, under certain 
circumstances, by disclaiming the terminal portion of 
the term of the later patent and including in the disclaimer 
the provisions of 37 CFR 1.321(d).

See MPEP § 706.02(l) - § 706.02(l)(3) for information 
pertaining to establishment of common ownership 
and the existence of a joint research agreement 
pursuant to 35 U.S.C. 103(c), as well as examination 
practice relating to 35 U.S.C. 103(c).

II.IDENTIFYING COMMONLY OWNED 
AND NON-COMMONLY OWNED INVENTIONS 
SUBJECT TO A JOINT RESEARCH 
AGREEMENT



A.Common Ownership by the Same Person(s) or 
Organization(s)

Applications or patents are “commonly owned” 
pursuant to 35 U.S.C. 103(c)(1) if they were wholly or 
entirely owned by the same person(s), or organization(
s)/business entity(ies), at the time the claimed 
invention was made. See MPEP §
 
706.02(l)(2) for a 
detailed definition of common ownership. Two 
inventions of different inventive entities come within 
the common ownership provisions of 35 U.S.C. 
103(c)(1) when:

(A)the later invention is not anticipated by the 
earlier invention under 35 U.S.C. 102; 

(B)the earlier invention qualifies as prior art for 
purposes of obviousness under 35 U.S.C. 103 against 
the later invention only under subsections (f) or 
(g) of 35 U.S.C. 102, or under 35 U.S.C. 102(e) 
for applications pending on or after December 10, 
2004, for reexamination proceedings in which the 
patent under reexamination was granted on or after 
December 10, 2004, and for reexamination proceedings 
in which the patent under reexamination was
filed on or after November 29, 1999; and 

(C)the inventions were, at the time the later 
invention was made, owned by the same person or 
subject to an obligation of assignment to the same 
person. 



B.Non-Commonly Owned Inventions Subject to 
a Joint Research Agreement

The Cooperative Research and Technology 
Enhancement Act of 2004 (CREATE Act) (Public 
Law 108-453; 118 Stat. 3596 (2004)), which amended 
35 U.S.C. 103(c), was enacted on December 10, 2004. 
The CREATE Act permits an applicant or patentee, 
who is a party to a joint research agreement, to disqualify 
prior art that is applied in a rejection under 35 
U.S.C. 103(a) and that is otherwise available as prior 
art only under 35 U.S.C. 102(e), (f) or (g). Congress 
recognized that this amendment to 35 
U.S.C. 103(c) 
would result in situations in which there would be 
double patenting between patents or applications not 
owned by the same party. See H.R. Rep. No. 108-425, 
at 5-6 (2003).

Pursuant to the CREATE Act, non-commonly 
owned applications or patents that are subject to a 
joint research agreement may be treated as if they are 
“commonly owned,” i.e., owned or subject to assignment 
by the same person, for the purposes of determining 
obviousness if certain conditions are met. See 
35 U.S.C 103(c)(2). The term “joint research agreement” 
means a written contract, grant, or cooperative 
agreement entered into by two or more persons or 
entities for the performance of experimental, developmental, 
or research work in the field of the claimed 
invention. See 35 U.S.C. 103(c)(3). See also MPEP 
§
 
706.02(l)(2).

Two inventions come within the provisions of 35 
U.S.C. 103(c)(2), for applications pending on or after 
December 10, 2004, and for reexamination proceedings 
in which the patent under reexamination issued 
after December 10, 2004, when:




 

(A)the later invention is not anticipated by the 
earlier invention under 35 U.S.C. 102;

(B)the claimed invention was made by or on 
behalf of parties to a joint research agreement that 
was in effect on or before the date the claimed invention 
was made;

(C)the claimed invention was made as a result of 
activities undertaken within the scope of the joint 
research agreement; and

(D)the application for patent for the claimed 
invention discloses or is amended to disclose the 
names of the parties to the joint research agreement.

C.Timing of Double Patenting Rejections

The examiner should make both a double patenting 
rejection based on common ownership and a rejection 
based on 35 U.S.C. 102(e)/103 prior art when the 
facts support both rejections. Until applicant has 
established that a reference is disqualified as prior art 
under the joint research agreement exclusion of 
35 
U.S.C. 103(c), the examiner should NOT apply a 
double patenting rejection based on a joint research 
agreement. See MPEP § 706.07(a) and § 804 for 
information regarding when an Office action that 
includes a new subsequent double patenting rejection 
based upon a reference disqualified under 35 U.S.C. 
103(c) may be made final. 

III.DETERMINING INVENTION PRIORITY

A determination of priority is not required when 
two inventions are commonly owned as set forth in 35 
U.S.C. 103(c)(1).

Pursuant to 37 CFR 1.78(c), where an application 
or a patent under reexamination and at least one other 
application of different inventive entities are owned 
by the same party and contain conflicting claims, the 
examiner may require the assignee to state whether 
the claimed inventions come within the provisions of 
35 U.S.C. 103(c) (i.e., indicate whether common 
ownership or an obligation of assignment to the same 
person existed at the time the later invention was 
made). If the assignee states that the provisions of 
35 
U.S.C. 103(c) do not apply to the conflicting 
claimed inventions, the assignee is required to indicate 
which named inventor is the prior inventor. Form 
paragraphs 8.27, 8.28 and 8.28.01 may be used to 
require the applicant to identify the prior inventor 
under 37 CFR 1.78(c). In order to avoid abandonment, 
the assignee must comply with the requirement 
under 37 CFR 1.78(c) by naming the prior inventor 
unless the conflicting claims are eliminated in all but 
one application. If, however, the two inventions come 
within the provisions of 35 U.S.C. 103(c), it is not 
necessary to determine priority of invention since the 
earlier invention is disqualified as prior art against the 
later invention and since double patenting rejections 
can be used to ensure that the patent terms expire 
together. Accordingly, a response to a requirement 
under 37 CFR 1.78(c) which states that the inventions 
of different inventive entities come within the provisions 
of 35 
U.S.C. 103(c) is complete without any 
further inquiry under 37 CFR 1.78(c) as to the prior 
inventor.

Before making the requirement to identify the prior 
inventor under 37 CFR 1.78(c), with its threat to hold 
the application abandoned if the statement is not made 
by the assignee, the examiner must make sure that 
claims are present in each application which are conflicting 
as defined in MPEP § 804. See In re Rekers, 
203 USPQ 1034 (Comm’r Pat. 1979). 

In some situations the application file histories
may reflect which invention is the prior invention, 
e.g., by reciting that one invention is an improvement 
of the other invention. See Margolis v. Banner, 
599 
F.2d 435, 202 USPQ 365 (CCPA 1979) (Court 
refused to uphold a holding of abandonment for failure 
to name the prior inventor since the record 
showed what was invented by the different inventive 
entities and who was the prior inventor.). 

An application in which a requirement to name the 
prior inventor has been made will not be held abandoned 
where a timely response indicates that the other 
application is abandoned or will be permitted to 
become abandoned and will not be filed as a continuing 
application. Such a response will be considered 
sufficient since it renders the requirement to identify 
the prior inventor moot because the existence of conflicting 
claims is eliminated. Also note that the conflict 
between two or more pending applications can be 
avoided by abandoning the applications and filing a 
continuation-in-part application merging the conflicting 
inventions into a single application.




 



IV. REJECTIONS UNDER 35 U.S.C. 102 
AND 103 AND DOUBLE PATENTING

Form paragraphs 8.27, 8.28 and 8.28.01 may be 
used to require the applicant to name the prior inventor 
under 37 CFR 1.78(c).



¶ 8.27 Different Inventors, Common Assignee, Same 
Invention

Claim [1] directed to the same invention as that of claim [2] of 
commonly assigned [3]. The issue of priority under 35 U.S.C. 
102(g) and possibly 35 U.S.C. 102(f) of this single invention must 
be resolved.

Since the U.S. Patent and Trademark Office normally will not 
institute an interference between applications or a patent and an 
application of common ownership (see MPEP Chapter 2300), the 
assignee is required to state which entity is the prior inventor of 
the conflicting subject matter. A terminal disclaimer has no effect 
in this situation since the basis for refusing more than one patent is 
priority of invention under 35 U.S.C. 102(f) or (g) and not an 
extension of monopoly.

Failure to comply with this requirement will result in a holding 
of abandonment of this application.

Examiner Note:

1.In bracket 3, insert the U.S. patent number or the copending 
application number.

2.The claims listed in brackets 1 and 2 must be for the same 
invention. If one invention would have been obvious in view of 
the other, do not use this form paragraph; see form paragraph 
8.28.

3.A provisional or actual statutory double patenting rejection 
should also be made using form paragraphs 8.31 or 8.32.

4.If the commonly assigned application or patent has an earlier 
U.S. filing date, a rejection under 35 U.S.C. 102(e) may also be 
made using form paragraph 7.15.01 or 7.15.02. 

¶ 8.28 Different Inventors, Common Assignee, Obvious 
Inventions, No Evidence of Common Ownership at Time of 
Invention

Claim [1] directed to an invention not patentably distinct from 
claim [2] of commonly assigned [3]. Specifically, [4].

Examiner Note:

1.This form paragraph should be used when the application 
being examined is commonly assigned with a conflicting application 
or patent, but there is no indication that they were commonly 
assigned at the time the invention was actually made.

2.A rejection under 35 U.S.C. 102(e)/103(a) using form paragraph 
7.21,7.21.01 or 7.21.02 also should be made, as appropriate. 
For applications pending on or after December 10, 2004, rejections 
under 35 U.S.C. 102(e)/103(a) should not be made or maintained 
if the patent is disqualified under 35 U.S.C. 103(c) as prior 
art in a 35 U.S.C. 103(a) rejection.

3.In bracket 3, insert the number of the conflicting patent or 
application.

4.An obviousness-type double patenting rejection should also 
be included in the action using one of form paragraphs 8.34 to 
8.37

5.In bracket 4, explain why the claims in the conflicting cases 
are not considered to be distinct.

6.Form paragraph 8.28.01 MUST follow this paragraph.

¶ 8.28.01 Advisory Information Relating to Form 
Paragraph 8.28

The U.S. Patent and Trademark Office normally will not institute 
an interference between applications or a patent and an application 
of common ownership (see MPEP Chapter 2300). 
Commonly assigned [1], discussed above, would form the basis 
for a rejection of the noted claims under 35 U.S.C. 103(a) if the 
commonly assigned case qualifies as prior art under 35 U.S.C. 
102(e), (f) or (g) and the conflicting inventions were not commonly 
owned at the time the invention in this application was 
made. In order for the examiner to resolve this issue the assignee 
can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that 
the conflicting inventions were commonly owned at the time the 
invention in this application was made, or name the prior inventor 
of the conflicting subject matter.

A showing that the inventions were commonly owned at the 
time the invention in this application was made will preclude a 
rejection under 35 U.S.C. 103(a) based upon the commonly 
assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 
U.S.C. 102(e) for applications pending on or after December 10, 
2004.

Examiner Note:

This form paragraph should follow form paragraph 8.28 and 
should only be used ONCE in an Office action.



If  the provisions of 35 U.S.C. 103(c)(1) apply 
to the commonly owned conflicting inventions of different 
inventive entities or if the provisions of 35 
U.S.C. 103(c)(2) apply to non-commonly owned 
inventions subject to a joint research agreement and 
thereby obviate the obviousness rejection(s), double 
patenting rejection(s) should be made (or maintained) 
as appropriate. If, however, it is determined 
that the provisions of 35 
U.S.C. 103(c) do NOT apply 
because the inventions were not commonly owned or 
subject to an obligation of assignment to the same 
person at the time the later invention was made, or 
because the claimed invention did NOT result from 
activities undertaken within the scope of a joint 
research agreement as required by 35 U.S.C. 
103(c)(2) and (3), and there is evidence of record to 
indicate that a patent or application is prior art against 
the application being examined, the examiner should 




 

make (A) any appropriate double patenting rejection(
s), and (B) the appropriate prior art rejection(s) 
under 35 U.S.C. 102 and/or 35 U.S.C. 103 in the 
application being examined. See Charts I-A, I-B, II-A, 
and II-B in MPEP § 804. Rejections under 
35 
U.S.C. 102 or 35 U.S.C. 103 cannot be obviated 
solely by filing a terminal disclaimer. 



¶ 7.15 Rejection, 35 U.S.C. 102(a), (b) Patent or 
Publication, and (g)

Claim [1] rejected under 35 U.S.C. 102[2] as being [3] by [4]. 

Examiner Note:

1.In bracket 2, insert the appropriate paragraph letter or letters 
of 35 
U.S.C. 102 in parentheses. If paragraph (e) of 35 U.S.C. 102is applicable, use form paragraph 7.15.02 or 7.15.03.

2.In bracket 3, insert either --clearly anticipated-- or --anticipated-- 
with an explanation at the end of the paragraph. 

3.In bracket 4, insert the prior art relied upon.

4.This rejection must be preceded either by form paragraph 
7.07 and form paragraphs 7.08, 7.09, and 7.14 as appropriate, orby form paragraph 7.103.

5.If 35 U.S.C. 102(e) is also being applied, this form paragraph 
must be followed by either form paragraph 7.15.02 or 7.15.03.



¶ 7.19 Rejection, 35 U.S.C. 102(f), Applicant Not the 
Inventor

Claim [1] rejected under 35 U.S.C. 102(f) because the applicant 
did not invent the claimed subject matter. [2]

Examiner Note:

1.This paragraph must be preceded either by paragraphs 7.07and 7.13 or by paragraph 7.103.

2.In bracket 2, insert an explanation of the supporting evidence 
establishing that applicant was not the inventor. See MPEP § 
2137.



¶ 7.21 Rejection, 35 U.S.C. 103(a)

Claim [1] rejected under 35 U.S.C. 103(a) as being unpatentable 
over [2]. 

Examiner Note:

1.This paragraph must be preceded by either form paragraph 
7.20 or form paragraph 7.103.

2.An explanation of the rejection applying the Graham v. 
Deere test must follow this form paragraph.

3.If the rejection relies upon prior art under 35 U.S.C. 102(e), 
use 35 U.S.C. 102(e) as amended by the American Inventors Protection 
Act to determine the reference’s prior art date, unless the 
reference is a U.S. patent issued directly, or indirectly, from an 
international application which has an international filing date 
prior to November 29, 2000. In other words, use pre-AIPA 35 
U.S.C. 102(e) only if the reference is a U.S. patent issued directly 
or indirectly from either a national stage of an international application 
(application under 35 U.S.C. 371) which has an international 
filing date prior to November 29, 2000 or a continuing 
application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to 
an international application having an international filing date 
prior to November 29, 2000. See the Examiner Notes for form 
paragraphs 7.12 and 7.12.01 to assist in the determination of the 
reference’s 35 U.S.C. 102(e) date. 

4.If the applicability of this rejection (e.g., the availability of 
the prior art as a reference under 35 U.S.C. 102(a) or 35 U.S.C. 
102(b)) prevents the reference from being disqualified under 35 
U.S.C. 103(c), form paragraph 7.20.01 must follow this form 
paragraph. 

5.If this rejection is a provisional 35 U.S.C. 103(a) rejection 
based upon a copending application that would comprise prior art 
under 35 
U.S.C. 102(e) if patented or published, use form paragraph 
7.21.01 instead of this paragraph. 

¶ 7.21.01 Provisional Rejection, 35 U.S.C. 103(a), 
Common Assignee or at Least One Common Inventor 

Claim [1] provisionally rejected under 35 U.S.C. 103(a) as 
being obvious over copending Application No. [2] which has a 
common [3] with the instant application. Based upon the earlier 
effective U.S. filing date of the copending application, it would 
constitute prior art under 35 
U.S.C. 102(e) if published or patented. 
This provisional rejection under 35 U.S.C. 103(a) is based 
upon a presumption of future publication or patenting of the conflicting 
application. [4]

This provisional rejection might be overcome either by a showing 
under 37 CFR 1.132 that any invention disclosed but not 
claimed in the copending application was derived from the inventor 
of this application and is thus not the invention “by another,” 
or by a showing of a date of invention for the instant application 
prior to the effective U.S. filing date of the copending application 
under 37 CFR 1.131. This rejection might also be overcome 
by 
showing that the copending application is disqualified under 
35 U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a). 
See MPEP § 706.02(l)(1) and § 706.02(l)(2).

Examiner Note:

1.This paragraph is used to provisionally reject claims not patentably 
distinct from the disclosure in a copending application 
having an earlier U.S. filing date and also having either a common 
assignee or at least one common inventor. This form paragraph 
should not be used in applications pending on or after December 
10, 2004 when the copending application is disqualified under 35 
U.S.C. 103(c) as prior art in a 35 U.S.C. 103(a) rejection. See 
MPEP § 706.02(l)(3). 

2.Use 35 U.S.C. 102(e) as amended by the American Inventors 
Protection Act (AIPA) to determine the copending application reference’s 
prior art date, unless the copending application reference 
is based directly, or indirectly, from an international application 
which has an international filing date prior to November 29, 2000. 
If the copending application reference is either a national stage of 
an international application (application under 35 U.S.C. 371) 
which has an international filing date prior to November 29, 2000, 
or a continuing application claiming benefit under 35 U.S.C. 120, 
121, or 365(c) to an international application having an international 
filing date prior to November 29, 2000, use pre-AIPA 35 




 

U.S.C. 102(e) to determine the copending application reference’s 
prior art date. See the Examiner Notes for form paragraphs 7.12and 7.12.01 to assist in the determination of the 35 U.S.C. 102(e) 
date.

3.If the claimed invention is fully disclosed in the copending 
application, use paragraph 7.15.01. 

4.In bracket 3, insert either --assignee-- or --inventor--. 

5.In bracket 4, insert explanation of obviousness. 

6.If the claimed invention is also claimed in the copending 
application, a provisional obviousness double patenting rejection 
should additionally be made using paragraph 8.33 and 8.37.

7.If evidence indicates that the copending application is also 
prior art under 35 U.S.C. 102(f) or (g) and the copending application 
has not been disqualified as prior art in a 35 U.S.C. 103(a)
rejection pursuant to 35 U.S.C. 103(c), a rejection should additionally 
be made under 35 U.S.C. 103(a) using paragraph 7.21 
(e.g., applicant has named the prior inventor in response to a 
requirement made using paragraph 8.28).



Further, if the conflicting applications have different 
effective U.S. filing dates, the examiner should 
consider making a provisional rejection in the later 
filed application, based on the earlier filed application, 
under 35 U.S.C. 102(e) or 102(e)/103(a), using 
form paragraph 7.15.01 or 7.21.01. Similarly, if an 
application has a later effective U.S. filing date than a 
conflicting issued patent, the examiner should consider 
making a rejection in the application, based on 
the patent, under 35 U.S.C. 102(e) or 102(e)/103(a), 
using form paragraph 7.15.02 or 7.21.02. Rejections 
under 35 U.S.C. 102 or 103 cannot be obviated solely 
by the filing of a terminal disclaimer. However, 
for applications pending on or after December 10, 
2004, rejections under 35 U.S.C. 102(e)/103(a) should 
not be made or maintained if the patent is disqualified 
under 35 U.S.C. 103(c) as prior art in a 35 U.S.C. 
103(a) rejection.



¶ 7.15.01 Provisional Rejection, 35 U.S.C. 102(e) - 
Common Assignee or At Least One Common Inventor

Claim [1] provisionally rejected under 35 U.S.C. 102(e) as 
being anticipated by copending Application No. [2] which has a 
common [3] with the instant application.

Based upon the earlier effective U.S. filing date of the copending 
application, it would constitute prior art under 35 U.S.C. 
102(e), if published under 35 U.S.C. 122(b) or patented. This provisional 
rejection under 35 U.S.C. 102(e) is based upon a presumption 
of future publication or patenting of the copending 
application. [4].

This provisional rejection under 35 U.S.C. 102(e) might be 
overcome either by a showing under 37 CFR 1.132 that any 
invention disclosed but not claimed in the copending application 
was derived from the inventor of this application and is thus not 
the invention “by another,” or by an appropriate showing under 37 
CFR 1.131. 

This rejection may not be overcome by the filing of a terminal 
disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 
(Fed. Cir. 1991).

Examiner Note:

1.This form paragraph is used to provisionally reject over a 
copending application with an earlier filing date that discloses the 
claimed invention which has not been published under 35 U.S.C. 
122. The copending application must have either a common 
assignee or at least one common inventor.

2. Use 35 U.S.C. 102(e) as amended by the American Inventors 
Protection Act and the Intellectual Property and High Technology 
Technical Amendments Act of 2002 (form paragraph 7.12) 
to determine the copending application reference’s prior art date, 
unless the copending application reference is based directly, or 
indirectly, from an international application which has an international 
filing date prior to November 29, 2000. If the copending 
application reference is either a national stage of an international 
application (application under 35 U.S.C. 371) which has an international 
filing date prior to November 29, 2000, or a continuing 
application claiming benefit under 35 U.S.C. 120, 121, or 365(c) 
to an international application having an international filing date 
prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e)
(form paragraph 7.12.01). See the Examiner Notes for form paragraphs 
7.12 and 7.12.01 to assist in the determination of the 35 
U.S.C. 102(e) date. 

3.If the claims would have been obvious over the invention 
disclosed in the other copending application, use form paragraph 
7.21.01.

4.In bracket 3, insert either --assignee-- or --inventor--.

5.In bracket 4, an appropriate explanation may be provided in 
support of the examiner’s position on anticipation, if necessary.

6.If the claims of the copending application conflict with the 
claims of the instant application, a provisional double patenting 
rejection should also be given using form paragraphs 8.30 and 
8.32.

7.If evidence is additionally of record to show that either 
invention is prior art unto the other under 35 U.S.C. 102(f) or (g), 
a rejection using form paragraphs 7.13 and/or 7.14 should also be 
made.

¶ 7.15.02 Rejection, 35 U.S.C. 102(e), Common Assignee 
or Inventor(s)

Claim [1] rejected under 35 U.S.C. 102(e) as being anticipated 
by [2].

The applied reference has a common [3] with the instant application. 
Based upon the earlier effective U.S. filing date of the reference, 
it constitutes prior art under 35 U.S.C. 102(e). This 
rejection under 35 U.S.C. 102(e) might be overcome either by a 
showing under 37 CFR 1.132 that any invention disclosed but not 
claimed in the reference was derived from the inventor of this 




 

application and is thus not the invention “by another,” or by an 
appropriate showing under 37 CFR 1.131.

Examiner Note:

1.This form paragraph is used to reject over a patent or patent 
application publication with an earlier filing date that discloses 
but does not claim the same invention. The patent or patent application 
publication must have either a common assignee or a common 
inventor.

2.35 U.S.C. 102(e) as amended by the American Inventors 
Protection Act of 1999 (AIPA) and the Intellectual Property and 
High Technology Technical Amendments Act of 2002 (form paragraph 
7.12) must be applied if the reference is one of the following: 


a.a U.S. patent or a publication of a U.S. application for patent 
filed under 35 U.S.C. 111(a);

b.a U.S. patent issued directly or indirectly from, or a U.S. or 
WIPO publication of, an international application if the international 
application has an international filing date on or after 
November 29, 2000.

See the Examiner Notes for form paragraph 7.12 to assist in the 
determination of the 35 U.S.C. 102(e) date of the reference.

3. Pre-AIPA 35 U.S.C 102(e) (form paragraph 7.12.01) must 
be applied if the reference is a U.S. patent issued directly, or indirectly, 
from an international application filed prior to November 
29, 2000. See the Examiner Notes for form paragraph 7.12.01 to 
assist in the determination of the 35 U.S.C. 102(e) date of the reference.


4.In determining the 35 U.S.C. 102(e) date, consider priority/
benefit claims to earlier-filed U.S. provisional applications under 
35 U.S.C. 119(e), U.S. nonprovisional applications under 35 
U.S.C. 120 or 121, and international applications under 35 U.S.C. 
120, 121 or 365(c) if the subject matter used to make the rejection 
is appropriately supported in the relied upon earlier-filed application’s 
disclosure (and any intermediate application(s)). A benefit 
claim to a U.S. patent of an earlier-filed international application, 
which has an international filing date prior to November 29, 2000, 
may only result in an effective U.S. filing date as of the date the 
requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. 
Do NOT consider any priority/benefit claims to U.S. applications 
which are filed before an international application that has an 
international filing date prior to November 29, 2000. Do NOT 
consider foreign priority claims under 35 U.S.C. 119(a)-(d) and 
365(a). 

5.If the reference is a publication of an international application 
(including voluntary U.S. publication under 35 U.S.C. 122 of 
the national stage or a WIPO publication) that has an international 
filing date prior to November 29, 2000, did not designate the 
United States or was not published in English by WIPO, do not 
use this form paragraph. Such a reference is not a prior art reference 
under 35 U.S.C. 102(e). The reference may be applied under 
35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 
7.08 and 7.09.

6.In bracket 3, insert either --assignee-- or --inventor--.

7.This form paragraph must be preceded by either of form 
paragraphs 7.12 or 7.12.01.

8.Patent application publications may only be used if this form 
paragraph was preceded by form paragraph 7.12.

¶ 7.21.01 Provisional Rejection, 35 U.S.C. 103(a), 
Common Assignee or at Least One Common Inventor 

Claim [1] provisionally rejected under 35 U.S.C. 103(a) as 
being obvious over copending Application No. [2] which has a 
common [3] with the instant application. Based upon the earlier 
effective U.S. filing date of the copending application, it would 
constitute prior art under 35 
U.S.C. 102(e) if published or patented. 
This provisional rejection under 35 U.S.C. 103(a) is based 
upon a presumption of future publication or patenting of the conflicting 
application. [4]

This provisional rejection might be overcome either by a showing 
under 37 CFR 1.132 that any invention disclosed but not 
claimed in the copending application was derived from the inventor 
of this application and is thus not the invention “by another,” 
or by a showing of a date of invention for the instant application 
prior to the effective U.S. filing date of the copending application 
under 37 CFR 1.131. This rejection might also be overcome 
by 
showing that the copending application is disqualified under 
35 U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a). 
See MPEP § 706.02(l)(1) and § 706.02(l)(2).

Examiner Note:

1.This paragraph is used to provisionally reject claims not patentably 
distinct from the disclosure in a copending application 
having an earlier U.S. filing date and also having either a common 
assignee or at least one common inventor. This form paragraph 
should not be used in applications pending on or after December 
10, 2004 when the copending application is disqualified under 35 
U.S.C. 103(c) as prior art in a 35 U.S.C. 103(a) rejection. See 
MPEP § 706.02(l)(3). 

2.Use 35 U.S.C. 102(e) as amended by the American Inventors 
Protection Act (AIPA) to determine the copending application reference’s 
prior art date, unless the copending application reference 
is based directly, or indirectly, from an international application 
which has an international filing date prior to November 29, 2000. 
If the copending application reference is either a national stage of 
an international application (application under 35 U.S.C. 371) 
which has an international filing date prior to November 29, 2000, 
or a continuing application claiming benefit under 35 U.S.C. 120, 
121, or 365(c) to an international application having an international 
filing date prior to November 29, 2000, use pre-AIPA 35 
U.S.C. 102(e) to determine the copending application reference’s 
prior art date. See the Examiner Notes for form paragraphs 7.12and 7.12.01 to assist in the determination of the 35 U.S.C. 102(e) 
date.

3.If the claimed invention is fully disclosed in the copending 
application, use paragraph 7.15.01. 

4.In bracket 3, insert either --assignee-- or --inventor--. 

5.In bracket 4, insert explanation of obviousness. 

6.If the claimed invention is also claimed in the copending 
application, a provisional obviousness double patenting rejection 
should additionally be made using paragraph 8.33 and 8.37.

7.If evidence indicates that the copending application is also 
prior art under 35 U.S.C. 102(f) or (g) and the copending application 
has not been disqualified as prior art in a 35 U.S.C. 103(a)
rejection pursuant to 35 U.S.C. 103(c), a rejection should additionally 
be made under 35 U.S.C. 103(a) using paragraph 7.21 




 

(e.g., applicant has named the prior inventor in response to a 
requirement made using paragraph 8.28).

¶ 7.21.02 Rejection, 35 U.S.C. 103(a), Common Assignee 
or at Least One Common Inventor

Claim [1] rejected under 35 U.S.C. 103(a) as being obvious 
over [2].

The applied reference has a common [3] with the instant application. 
Based upon the earlier effective U.S. filing date of the reference, 
it constitutes prior art under 35 U.S.C. 102(e). This 
rejection under 35 U.S.C. 103(a) might be overcome by: (1) a 
showing under 37 CFR 1.132 that any invention disclosed but not 
claimed in the reference was derived from the inventor of this 
application and is thus not an invention “by another”; (2) a showing 
of a date of invention for the claimed subject matter of the 
application which corresponds to subject matter disclosed but not 
claimed in the reference, prior to the effective U.S. filing date of 
the reference under 37 CFR 1.131; or (3) an oath or declaration 
under 37 CFR 1.130 stating that the application and reference are 
currently owned by the same party and that the inventor named in 
the application is the prior inventor under 35 U.S.C. 104, together 
with a terminal disclaimer in accordance with 37 
CFR 1.321(c). 
This rejection might also be overcome by showing that the reference 
is disqualified under 35 U.S.C. 103(c) as prior art in a rejection 
under 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and §
706.02(l)(2). [4]

Examiner Note:

1.This paragraph is used to reject over a reference (patent or 
published application) with an earlier filing date that discloses the 
claimed invention, and that only qualifies as prior art under 35 
U.S.C. 102(e). If the reference qualifies as prior art under 35 
U.S.C. 102(a) or (b), then this form paragraph should not be used 
(form paragraph 7.21 should be used instead). The reference must 
have either a common assignee or at least one common inventor. 
This form paragraph should not be used in applications when the 
reference is disqualified under 35 U.S.C. 103(c) as prior art in a 
35 U.S.C. 103(a) rejection. See MPEP § 706.02(l)(3).

2.35 U.S.C. 102(e) as amended by the American Inventors 
Protection Act of 1999 (AIPA) must be applied if the reference is 
one of the following: 

a.a U.S. patent or a publication of a U.S. application for patent 
filed under 35 U.S.C. 111(a);

b.a U.S. patent issued directly or indirectly from, or a U.S. or 
WIPO publication of, an international application if the international 
application has an international filing date on or after 
November 29, 2000. 

See the Examiner Notes for form paragraph 7.12 to assist in the 
determination of the 35 U.S.C. 102(e) date of the reference.

3.Pre-AIPA 35 U.S.C 102(e) must be applied if the reference is 
a U.S. patent issued directly, or indirectly, from an international 
application filed prior to November 29, 2000. See the Examiner 
Notes for form paragraph 7.12.01 to assist in the determination of 
the 35 U.S.C. 102(e) date of the reference. 

4.In bracket 3, insert either --assignee-- or --inventor--.

5.In bracket 4, insert explanation of obviousness.



804.04Submission to Technology Center 
Director 

In order to promote uniform practice, every Office 
action containing a rejection on the ground of double 
patenting which relies on the parent application rejecting 
the claims in a divisional or continuing application 
where the divisional or continuing application 
was filed because of a requirement to restrict made by 
the examiner under 35 U.S.C. 121, including a 
requirement to elect species, must be submitted to the 
Technology Center Director for approval prior to 
mailing. If the rejection on the ground of double patenting 
is disapproved, it shall not be mailed but other 
appropriate action shall be taken. Note MPEP §
 
1003.

805Effect of Improper Joinder in 
Patent [R-3]

35 U.S.C. 121, last sentence, provides “the validity 
of a patent shall not be questioned for failure of the 
Director to require the application to be restricted 
to one invention.” In other words, under this statute, 
no patent can be held void for improper joinder of 
inventions claimed therein.

806Determination of Distinctness or 
Independence of Claimed Inventions 
[R-3]

The general principles relating to distinctness or 
independence may be summarized as follows:

(A)Where inventions are independent (i.e., no 
disclosed relation therebetween), restriction to one 
thereof is ordinarily proper, MPEP § 806.06.

(B)Where inventions are related as disclosed but 
are distinct as claimed, restriction may be proper.

(C)Where inventions are related as disclosed but 
are not distinct as claimed, restriction is never proper. 



(D)A reasonable number of species may be 
claimed when there is an allowable claim generic 
thereto. 37 CFR 1.141, MPEP § 806.04.

Where restriction is required by the Office double 
patenting cannot be held, and thus, it is imperative the 
requirement should never be made where related 
inventions as claimed are not distinct. For (B) and (C) 
see MPEP § 806.05 - § 806.05(j) and § 809.03. 




 

See MPEP § 802.01 for criteria for patentably distinct 
inventions.

806.01Compare Claimed Subject 
Matter [R-3]

In passing upon questions of double patenting and 
restriction, it is the claimed subject matter that is considered 
and such claimed subject matter must be compared 
in order to determine the question of 
distinctness or independence. However, a provisional 
election of a single species may be required 
where only generic claims are presented and the 
generic claims recite such a multiplicity of species 
that an unduly extensive and burdensome search is 
necessary. See MPEP § 803.02 and § 808.01(a).



806.03Single Embodiment, Claims Defining 
Same Essential Features 
[R-3]

Where the claims of an application define the same 
essential characteristics of a single disclosed embodiment 
of an invention, restriction therebetween should 
never be required. This is because the claims are 
not directed to distinct inventions; rather they are
different definitions of the same disclosed subject 
matter, varying in breadth or scope of definition.

Where such claims are voluntarily presented in 
different applications having at least one common 
inventor or a common assignee (i.e., no restriction 
requirement was made by the Office), disclosing the 
same embodiments, see MPEP § 804 - § 804.02.

806.04Genus and/or Species Inventions 
[R-3]

Where an application includes claims directed 
to different embodiments or species that could fall 
within the scope of a generic claim, restriction 
between the species may be proper if the species are 
independent or distinct. However, 37 CFR 1.141 provides 
that an allowable generic claim may link a reasonable 
number of species embraced thereby. The 
practice is set forth in 37 CFR 1.146. 

37 CFR 1.146. Election of species.

In the first action on an application containing a generic claim 
to a generic invention (genus) and claims to more than one patentably 
distinct species embraced thereby, the examiner may require 
the applicant in the reply to that action to elect a species of his or 
her invention to which his or her claim will be restricted if no 
claim to the genus is found to be allowable. However, if such 
application contains claims directed to more than a reasonable 
number of species, the examiner may require restriction of the 
claims to not more than a reasonable number of species before 
taking further action in the application.

See MPEP § 806.04(d) for the definition of a 
generic claim, and MPEP § 806.04(e) for a discussion 
of claims that include one or more species.



806.04(b)Species May Be Independent 
or Related Inventions [R-3]

Species may be either independent or
related under the particular disclosure. Where species 
under a claimed genus are not connected in any 
of design, operation, or effect under the disclosure, 
the species are independent inventions. See MPEP 
§
 
802.01 and § 806.06. Where inventions as disclosed 
and claimed are both (A) species under a 
claimed genus and (B) related, then the question of 
restriction must be determined by both the practice 
applicable to election of species and the practice 
applicable to other types of restrictions such as those 
covered in MPEP § 806.05 - § 806.05(j). If 
restriction is improper under either practice, it should 
not be required.

For example, two different subcombinations usable 
with each other may each be a species of some common 
generic invention. If so, restriction practice 
under election of species and the practice applicable 
to restriction between combination and subcombinations 
must be addressed.

As a further example, species of carbon compounds 
may be related to each other as intermediate and final 
product. Thus, these species are not independent and 
in order to sustain a restriction requirement, distinctness 
must be shown. Distinctness is proven if the 
intermediate and final products do not overlap in 
scope and are not obvious variants and it can be 
shown that the intermediate product is useful other 
than to make the final product. Otherwise, the disclosed 
relationship would preclude their being issued 
in separate patents. See MPEP § 806.05(j) for 
restriction practice pertaining to related products, 
including intermediate-final product relationships.






 

806.04(d)Definition of a Generic Claim[R-3]

In an application presenting three species illustrated, 
for example, in Figures 1, 2, and 3, respectively, 
a generic claim should read on each of these 
views; but the fact that a claim does so read is not 
conclusive that it is generic. It may define only an element 
or subcombination common to the several species.


In general, a generic claim should require no 
material element additional to those required by
the species claims, and  each of the species claims 
must require all the limitations of the generic claim.



Once a generic claim is allowable, all of the 
claims drawn to species in addition to the elected species 
which require all the limitations of the 
generic claim will ordinarily be  allowable over the 
prior art in view of the allowability of the 
generic claim, since the additional species will depend 
thereon or otherwise require all of the limitations 
thereof. When all or some of the claims directed to 
one of the species in addition to the elected species do 
not require all the limitations of the generic claim, 
 see MPEP § 821.04(a).

806.04(e)Claims Limited to Species [R-5]

Claims are definitions or descriptions of inventions. 
Claims themselves are never species. The 
scope of a claim may be limited to a single disclosed 
embodiment (i.e., a single species, and thus be designated 
a specific species claim). Alternatively, a 
claim may encompass two or more of the disclosed 
embodiments (and thus be designated a 
generic or genus claim).

Species  always refer to the  different embodiments 
of the invention.

Species may be either independent or related as disclosed 
(see MPEP § 806.04 and §
 
806.04(b)).

806.04(f)Restriction Between Mutually 
Exclusive Species 
[R-3]

Where two or more species are claimed, a requirement 
for restriction to a single species may be proper 
if the species are mutually exclusive. Claims  to 
different species are mutually exclusive if one 
claim recites limitations disclosed for a first species 
but not  a second, while a second claim recites 
limitations disclosed only for the second species and 
not the first. This may also be expressed by saying 
that to require restriction between claims limited 
to species, the claims  must not overlap in scope.

806.04(h)Species Must Be Patentably 
Distinct From Each Other[R-3]



In making a requirement for restriction in an application 
claiming plural species, the examiner should 
group together species considered clearly unpatentable 
over each other .

Where generic claims are allowable, applicant 
may claim in the same application additional species 
as provided by 37 CFR 1.141. See MPEP § 806.04. 
Where an applicant files a divisional application 
claiming a species previously claimed but nonelected 
in the parent case pursuant to and consonant with a 
requirement to restrict a double patenting rejection of 
the species claim(s) would be prohibited under 35 
U.S.C. 121. See MPEP § 821.04(a) for rejoinder of 
species claims when a generic claim is allowable.

Where, however,  claims to a different species, or 
 a species disclosed but not claimed in a parent case 
as filed and first acted upon by the examiner, are 
voluntarily presented in a different application having 
at least one common inventor or a common assignee 
(i.e., no requirement for election pertaining to said 
species was made by the Office) there should be 
close investigation to determine whether a double 
patenting rejection would be appropriate. See 
MPEP § 804.01 and § 804.02.

806.04(i)Generic Claims Presented  
After Issue of Species [R-3]

If a generic claim is presented  after the 
issuance of a patent claiming one or more species 
within the scope of the generic claim, the Office may 
reject the generic claim on the grounds of obviousness-
type double patenting when the patent and 
application have at least once common inventor and/
or are either (1) commonly assigned/owned or (2) 
non-commonly assigned/owned but subject to a joint 




 

research agreement as set forth in 35 U.S.C. 103(c)(2) 
and (3). See MPEP § 804. Applicant may overcome 
such a rejection by filing a terminal disclaimer. See 
In re Goodman, 11 F.3d 1046, 1053, 29 USPQ2d 
2010, 2016 (Fed. Cir. 1993); In re Braithwaite,
379 
F.2d 594, 154 USPQ 29 (CCPA 1967).

806.05Related Inventions [R-5]

Where two or more related inventions are claimed, 
the principal question to be determined in connection 
with a requirement to restrict or a rejection on the 
ground of double patenting is whether or not 
the 
inventions as claimed are distinct. If they are 
distinct, 
restriction may be proper. If they are not distinct, 
restriction is never proper. If nondistinct inventions 
are claimed in separate applications or patents, double 
patenting must be held, except where the additional 
applications were filed consonant with a requirement 
to restrict.

Various pairs of related inventions are noted in the 
following sections. In applications claiming inventions 
in different statutory categories, only one-way 
distinctness is generally needed to support a restriction 
requirement. See MPEP § 806.05(c) (combination 
and subcombination) and § 806.05(j) (related 
products or related processes) for examples of when a 
two-way test is required for distinctness. Related 
inventions in the same statutory class are considered 
mutually exclusive, or not overlapping in scope, if a 
first invention would not infringe a second invention, 
and the second invention would not infringe the first 
invention 

806.05(a)Combination and Subcombination 
[R-3]

A combination is an organization of which a subcombination 
or element is a part.

806.05(c)Criteria of Distinctness Between 
Combination and Subcombination 
[R-5]

To support a requirement for restriction between 
combination and subcombination inventions, both 
two-way distinctness and reasons for insisting on 
restriction are necessary, i.e., there would be a serious 
search burden if restriction were not required
as evidenced by separate classification, status, or field 
of search. See MPEP § 808.02.

The inventions are distinct if it can be shown that a 
combination as claimed:

(A)does not require the particulars of the subcombination 
as claimed for patentability (to show 
novelty and unobviousness), and

(B)the subcombination can be shown to have 
utility either by itself or in another materially different 
combination. 

When these factors cannot be shown, such inventions 
are not distinct.

The following examples are included for general 
guidance.

I.SUBCOMBINATION ESSENTIAL TO 
COMBINATION

ABsp/Bsp No Restriction

Where a combination as claimed  requires the 
details of a subcombination as separately 
claimed, there is usually no evidence that combination 
ABsp is patentable without the details of Bsp. The 
inventions are not distinct and a requirement for 
restriction must not be made or maintained, even if 
the subcombination has separate utility. This situation 
can be diagrammed as combination ABsp (“sp” is an 
abbreviation for “specific”), and subcombination Bsp. 
Thus the specific characteristics required by the subcombination 
claim Bsp are also required by the combination 
claim. See MPEP § 806.05(d) for situations 
where two or more subcombinations are separately 
claimed.

II.SUBCOMBINATION NOT ESSENTIAL 
TO COMBINATION

A. ABbr/Bsp Restriction Proper

Where a combination as claimed does not 
require the details of the subcombination as separately 
claimed and the subcombination has separate 
utility, the inventions are distinct and restriction is 
proper if reasons exist for insisting upon the restriction, 
i.e., there would be a serious search burden if 
restriction were not required as evidenced by separate 
classification, status, or field of search.




 

This situation can be diagramed as combination 
ABbr (“br” is an abbreviation for “broad”), and subcombination 
Bsp (“sp” is an abbreviation for “specific”). 
Bbr indicates that in the combination the 
subcombination is broadly recited and that the specific 
characteristics required by the subcombination 
claim Bsp are not required by the combination claim.

Since claims to both the subcombination and combination 
are presented, the omission of details of the 
claimed subcombination Bsp in the combination claim 
ABbr is evidence that the combination does not rely 
upon the specific limitations of the subcombination 
for its patentability. If subcombination Bsp has separate 
utility, the inventions are distinct and restriction is 
proper if reasons exist for insisting upon the restriction.


In applications claiming plural inventions capable 
of being viewed as related in two ways, for example, 
as both combination-subcombination and also as species 
under a claimed genus, both applicable criteria 
for distinctness must be demonstrated to support a 
restriction requirement. See also MPEP § 806.04(b).

Form paragraph 8.15 may be used in combination-
subcombination restriction requirements.



¶ 8.15 Combination-Subcombination

Inventions [1] and [2] are related as combination and subcombination. 
Inventions in this relationship are distinct if it can be 
shown that (1) the combination as claimed does not require the 
particulars of the subcombination as claimed for patentability, and 
(2) that the subcombination has utility by itself or in other combinations 
(MPEP § 806.05(c)). In the instant case, the combination 
as claimed does not require the particulars of the subcombination 
as claimed because [3]. The subcombination has separate utility 
such as [4].

The examiner has required restriction between combination 
and subcombination inventions. Where applicant elects a subcombination, 
and claims thereto are subsequently found allowable, 
any claim(s) depending from or otherwise requiring all the limitations 
of the allowable subcombination will be examined for patentability 
in accordance with 37 CFR 1.104. See MPEP § 
821.04(a). Applicant is advised that if any claim presented in a 
continuation or divisional application is anticipated by, or includes 
all the limitations of, a claim that is allowable in the present application, 
such claim may be subject to provisional statutory and/or 
nonstatutory double patenting rejections over the claims of the 
instant application. 

Examiner Note:

1.This form paragraph is to be used when claims are presented 
to both combination(s) and subcombination(s) (MPEP § 
806.05(c)).

2.In bracket 3, specify the limitations of the claimed subcombination 
that are not required by the claimed combination, or the 
evidence that supports the conclusion that the combination does 
not rely upon the specific details of the subcombination for patentability. 
See MPEP § 806.05(c), subsection II and § 806.05(d).

3.In bracket 4, suggest utility other than used in the combination.


4.Conclude restriction requirement with one of form paragraphs 
8.21.01 through 8.21.03.



The burden is on the examiner to suggest an example 
of separate utility. If applicant proves or provides 
an argument, supported by facts, that the utility suggested 
by the examiner cannot be accomplished, the 
burden shifts to the examiner to document a viable 
separate utility or withdraw the requirement.

B. ABsp/ABbr/Bsp Restriction Proper

The presence of a claim to combination ABsp does 
not alter the propriety of a restriction requirement 
properly made between combination ABbr and subcombination 
Bsp. Claim ABbr is an evidence claim 
which indicates that the combination does not rely 
upon the specific details of the subcombination for its 
patentability. If a restriction requirement can be properly 
made between combination ABbr and subcombination 
Bsp, any claim to combination ABsp would be 
grouped with combination ABbr.

If the combination claims are amended after a 
restriction requirement such that each combination, as 
claimed, requires all the limitations of the subcombination 
as claimed, i.e., if the evidence claim ABbr is 
deleted or amended to require Bsp, the restriction 
requirement between the combination and subcombination 
should not be maintained.

If a claim to Bsp is determined to be allowable, any 
claims requiring Bsp, including any combination 
claims of the format ABsp, must be considered for 
rejoinder. See MPEP § 821.04.




 

III.PLURAL COMBINATIONS REQUIRING A 
SUBCOMBINATION COMMON TO EACH 
COMBINATION

When an application includes a claim to a single 
subcombination, and that subcombination is required 
by plural claimed combinations that are properly 
restrictable, the subcombination claim is a linking 
claim and will be examined with the elected combination 
(see MPEP § 809.03). The subcombination claim 
links the otherwise restrictable combination inventions 
and should be listed in form paragraph 8.12. The 
claimed plural combinations are evidence that the 
subcombination has utility in more than one combination. 
Restriction between plural combinations may be 
made using form paragraph 8.14.01. See MPEP 
§
 
806.05(j).

806.05(d)Subcombinations Usable Together 
[R-5]

Two or more claimed subcombinations, disclosed 
as usable together in a single combination, and which 
can be shown to be separately usable, are usually 
restrictable when the subcombinations do not overlap 
in scope and are not obvious variants.

To support a restriction requirement where applicant 
separately claims plural subcombinations usable 
together in a single combination and claims a combination 
that requires the particulars of at least one of 
said subcombinations, both two-way distinctness and 
reasons for insisting on restriction are necessary. Each 
subcombination is distinct from the combination as 
claimed if:

(A)the combination does not require the particulars 
of the subcombination as claimed for patentability 
(e.g., to show novelty and unobviousness), and

(B)the subcombination can be shown to have 
utility either by itself or in another materially different 
combination.

See MPEP § 806.05(c). Furthermore, restriction is 
only proper when there would be a serious burden if 
restriction were not required, as evidenced by separate 
classification, status, or field of search. 

Where claims to two or more subcombinations are 
presented along with a claim to a combination that 
includes the particulars of at least two subcombinations, 
the presence of the claim to the second subcombination 
is evidence that the details of the first 
subcombination are not required for patentability (and 
vice versa). For example, if an application claims 
ABC/B/C wherein ABC is a combination claim and B 
and C are each subcombinations that are properly 
restrictable from each other, the presence of a claim to 
C provides evidence that the details of B are not 
required for the patentability of combination ABC.

Upon determining that all claims directed to an 
elected combination invention are allowable, the 
examiner must reconsider the propriety of the restriction 
requirement. Where the combination is allowable 
in view of the patentability of at least one of the subcombinations, 
the restriction requirement between the 
elected combination and patentable subcombination(
s) will be withdrawn; furthermore, any subcombinations 
that were searched and determined to be 
allowable must also be rejoined. If a subcombination 
is elected and determined to be allowable, nonelected 
claims requiring all the limitations of the allowable 
claim will be rejoined in accordance with MPEP § 
821.04.  

Form paragraph 8.16 may be used in restriction 
requirements between subcombinations.



¶ 8.16 Subcombinations, Usable Together

Inventions [1] and [2] are related as subcombinations disclosed 
as usable together in a single combination. The subcombinations 
are distinct if they do not overlap in scope and are not obvious 
variants, and if it is shown that at least one subcombination is separately 
usable. In the instant case subcombination [3] has separate 
utility such as [4]. See MPEP § 806.05(d).

The examiner has required restriction between subcombinations 
usable together. Where applicant elects a subcombination 
and claims thereto are subsequently found allowable, any claim(s) 
depending from or otherwise requiring all the limitations of the 
allowable subcombination will be examined for patentability in 
accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant 
is advised that if any claim presented in a continuation or divisional 
application is anticipated by, or includes all the limitations 
of, a claim that is allowable in the present application, such claim 
may be subject to provisional statutory and/or nonstatutory double 
patenting rejections over the claims of the instant application. 

Examiner Note:

1.This form paragraph is to be used when claims are presented 
to subcombinations usable together (MPEP § 806.05(d)).

2.In bracket 3, insert the appropriate group number or identify 
the subcombination.

3.In bracket 4, suggest utility other than with the other subcombination.





 

4.Conclude restriction requirement with one of form paragraphs 
8.21.01 through 8.21.03.



The examiner must show, by way of example, that 
one of the subcombinations has utility other than in 
the disclosed combination.

Care must be taken to determine if the subcombinations 
are generically claimed.

Where subcombinations as disclosed and claimed 
are both (a) species under a claimed genus and (b) 
related, then the question of restriction must be determined 
by both the practice applicable to election of 
species and the practice applicable to related inventions. 
If restriction is improper under either practice, it 
should not be required (MPEP § 806.04(b)).

If applicant proves or provides an argument, supported 
by facts, that the other use, suggested by the 
examiner, cannot be accomplished or is not reasonable, 
the burden is on the examiner to document a viable 
alternative use or withdraw the requirement.

806.05(e)Process and Apparatus for Its 
Practice [R-5]

Process and apparatus for its practice can be shown 
to be distinct inventions, if either or both of the following 
can be shown: (A) that the process as claimedcan be practiced by another materially different apparatus 
or by hand; or (B) that the apparatus as claimedcan be used to practice another materially different 
process.

Form paragraph 8.17 may be used to make restriction 
requirements between process and apparatus.



¶ 8.17 Process and Apparatus

Inventions [1] and [2] are related as process and apparatus for 
its practice. The inventions are distinct if it can be shown that 
either: (1) the process as claimed can be practiced by another 
materially different apparatus or by hand, or (2) the apparatus as 
claimed can be used to practice another materially different process. 
(MPEP § 806.05(e)). In this case [3].

Examiner Note:

1.This form paragraph is to be used when claims are presented 
to both a process and apparatus for its practice (MPEP § 
806.05(e)).

2.In bracket 3, use one or more of the following reasons:

(a)--the process as claimed can be practiced by another materially 
different apparatus such as......--,

(b)--the process as claimed can be practiced by hand--,

(c)--the apparatus as claimed can be used to practice another 
materially different process such as......--.

3.A process can be practiced by hand if it can be performed 
without using any apparatus.

4.Conclude restriction requirement with one of form paragraphs 
8.21.01 through 8.21.03.



The burden is on the examiner to provide reasonable 
examples that recite material differences.

If applicant proves or provides convincing argument 
that there is no material difference or that a process 
cannot be performed by hand (if examiner so 
argued), the burden is on the examiner to document 
another materially different process or apparatus or 
withdraw the requirement.

806.05(f)Process of Making and ProductMade [R-5]

A process of making and a product made by the 
process can be shown to be distinct inventions if 
either or both of the following can be shown: (A) that 
the process as claimed is not an obvious process of 
making the product and the process as claimed can be 
used to make another materially different product; or 
(B) that the product as claimed can be made by 
another materially different process.

Allegations of different processes or products need 
not be documented.

A product defined by the process by which it can be 
made is still a product claim (In re Bridgeford, 357 
F.2d 679, 149 USPQ 55 (CCPA 1966)) and can be 
restricted from the process if the examiner can demonstrate 
that the product as claimed can be made by 
another materially different process; defining the 
product in terms of a process by which it is made is 
nothing more than a permissible technique that applicant 
may use to define the invention.

If applicant convincingly traverses the requirement, 
the burden shifts to the examiner to document a viable 
alternative process or product, or withdraw the 
requirement.

Form paragraphs 8.18 and 8.21.04 should be used 
in restriction requirements between product and process 
of making.

¶ 8.18 Product and Process of Making

Inventions [1] and [2] are related as process of making and 
product made. The inventions are distinct if either or both of the 
following can be shown: (1) that the process as claimed can be 




 

used to make another materially different product or (2) that the 
product as claimed can be made by another materially different 
process (MPEP § 806.05(f)). In the instant case [3].

Examiner Note:

1.This form paragraph is to be used when claims are presented 
to both a product and the process of making the product (MPEP 
§ 806.05(f)).

2.In bracket 3, use one or more of the following reasons:

(a)--the process as claimed can be used to make a materially different 
product such as......--,

(b)--the product as claimed can be made by a materially different 
process such as......--.

3.Conclude the basis for the restriction requirement with one of 
form paragraphs 8.21.01 through 8.21.03.

4.All restriction requirements between a product and a process 
of making the product should be followed by form paragraph 
8.21.04 to notify the applicant that if a product claim is found 
allowable, process claims that depend from or otherwise require 
all the limitations of the patentable product may be rejoined.



¶ 8.21.04 Notice of Potential Rejoinder of Process Claims 
in Ochiai/Brouwer Situation

The examiner has required restriction between product and 
process claims. Where applicant elects claims directed to the 
product, and the product claims are subsequently found allowable, 
withdrawn process claims that depend from or otherwise require 
all the limitations of the allowable product claim will be considered 
for rejoinder. All claims directed to a nonelected process 
invention must require all the limitations of an allowable product 
claim for that process invention to be rejoined.

In the event of rejoinder, the requirement for restriction 
between the product claims and the rejoined process claims will 
be withdrawn, and the rejoined process claims will be fully examined 
for patentability in accordance with 37 CFR 1.104. Thus, to 
be allowable, the rejoined claims must meet all criteria for patentability 
including the requirements of 35 U.S.C. 101, 102, 103 and 
112. Until all claims to the elected product are found allowable, an 
otherwise proper restriction requirement between product claims 
and process claims may be maintained. Withdrawn process claims 
that are not commensurate in scope with an allowable product 
claim will not be rejoined. See MPEP § 821.04(b). Additionally, 
in order to retain the right to rejoinder in accordance with the 
above policy, applicant is advised that the process claims should 
be amended during prosecution to require the limitations of the 
product claims. Failure to do so may result in a loss of the right 
to rejoinder. Further, note that the prohibition against double patenting 
rejections of 35 U.S.C. 121 does not apply where the 
restriction requirement is withdrawn by the examiner before the 
patent issues. See MPEP § 804.01.

Examiner Note:

This form paragraph should appear at the end of any requirement 
for restriction between a product and a process of making 
the product (see form paragraph 8.18) or between a product and a 
process of using the product (see form paragraph 8.20).



806.05(g)Apparatus and Product Made  
[R-3]

An apparatus and a product made by the apparatus 
can be shown to be distinct inventions if either or both 
of the following can be shown: (A) that the apparatus 
as claimed is not an obvious apparatus for making the 
product and the apparatus as claimed can be used to 
make another materially different product; or (B) 
that the product as claimed can be made by another 
materially different apparatus.

Form paragraph 8.19 may be used for restriction 
requirements between apparatus and product made.



¶ 8.19 Apparatus and Product Made

Inventions [1] and [2] are related as apparatus and product 
made. The inventions in this relationship are distinct if either or 
both of the following can be shown: (1) that the apparatus as 
claimed is not an obvious apparatus for making the product and 
the apparatus can be used for making a materially different product 
or (2) that the product as claimed can be made by another 
materially different apparatus (MPEP § 806.05(g)). In this case 
[3].

Examiner Note:

1.This form paragraph is to be used when claims are presented 
to both the apparatus and product made (MPEP § 806.05(g)).

2.In bracket 3, use one or more of the following reasons:

(a)--the apparatus as claimed is not an obvious apparatus for 
making the product and the apparatus as claimed can be used to 
make a different product such as......--,

(b)--the product can be made by a materially different apparatus 
such as......--.

3.Conclude restriction requirement with one of form paragraphs 
8.21.01 through 8.21.03.



The examiner must show by way of example either 
(A) that the apparatus as claimed is not an obvious 
apparatus for making the product and the apparatus as 
claimed can be used to make another materially 
different product or (B) that the product as claimedcan be made by another  materially different apparatus.


The burden is on the examiner to provide an example, 
but the example need not be documented.

If applicant either proves or provides convincing 
argument that the alternative example suggested by 
the examiner is not workable, the burden is on the 
examiner to suggest another viable example or withdraw 
the restriction requirement.




 

806.05(h)Product and Process of Using[R-3]

A product and a process of using the product can be 
shown to be distinct inventions if either or both of the 
following can be shown: (A) the process of using as 
claimed can be practiced with another materially different 
product; or (B) the product as claimed can be 
used in a materially different process.

The burden is on the examiner to provide an example, 
but the example need not be documented.

If the applicant either proves or provides a convincing 
argument that the alternative use suggested by the 
examiner cannot be accomplished, the burden is on 
the examiner to support a viable alternative use or 
withdraw the requirement.

Form paragraphs 8.20 and 8.21.04 should
be used in restriction requirements between the product 
and method of using.



¶ 8.20 Product and Process of Using

Inventions [1] and [2] are related as product and process of 
use. The inventions can be shown to be distinct if either or both of 
the following can be shown: (1) the process for using the product 
as claimed can be practiced with another materially different 
product or (2) the product as claimed can be used in a materially 
different process of using that product. See MPEP § 806.05(h). In 
the instant case [3].

Examiner Note:

1.This form paragraph is to be used when claims are presented 
to both the product and process of using the product (MPEP § 
806.05(h). If claims to a process specially adapted for (i.e., not 
patentably distinct from) making the product are also presented 
such process of making claims should be grouped with the product 
invention. See MPEP § 806.05(i).

2.In bracket 3, use one or more of the following reasons:

(a)--the process as claimed can be practiced with another materially 
different product such as......--,

(b)--the product as claimed can be used in a materially different 
process such as......--.

3.Conclude the basis for the restriction requirement with one of 
form paragraphs 8.21.01 through 8.21.03.

4.All restriction requirements between a product and a process 
of using the product should be followed by form paragraph 
8.21.04 to notify the applicant that if a product claim is found 
allowable, process claims that depend from or otherwise require 
all the limitations of the patentable product may be rejoined.

¶ 8.21.04 Notice of Potential Rejoinder of Process Claims 
in Ochiai/Brouwer Situation

The examiner has required restriction between product and 
process claims. Where applicant elects claims directed to the 
product, and the product claims are subsequently found allowable, 
withdrawn process claims that depend from or otherwise require 
all the limitations of the allowable product claim will be considered 
for rejoinder. All claims directed to a nonelected process 
invention must require all the limitations of an allowable product 
claim for that process invention to be rejoined.

In the event of rejoinder, the requirement for restriction 
between the product claims and the rejoined process claims will 
be withdrawn, and the rejoined process claims will be fully examined 
for patentability in accordance with 37 CFR 1.104. Thus, to 
be allowable, the rejoined claims must meet all criteria for patentability 
including the requirements of 35 U.S.C. 101, 102, 103 and 
112. Until all claims to the elected product are found allowable, an 
otherwise proper restriction requirement between product claims 
and process claims may be maintained. Withdrawn process claims 
that are not commensurate in scope with an allowable product 
claim will not be rejoined. See MPEP § 821.04(b). Additionally, 
in order to retain the right to rejoinder in accordance with the 
above policy, applicant is advised that the process claims should 
be amended during prosecution to require the limitations of the 
product claims. Failure to do so may result in a loss of the right 
to rejoinder. Further, note that the prohibition against double patenting 
rejections of 35 U.S.C. 121 does not apply where the 
restriction requirement is withdrawn by the examiner before the 
patent issues. See MPEP § 804.01.

Examiner Note:

This form paragraph should appear at the end of any requirement 
for restriction between a product and a process of making 
the product (see form paragraph 8.18) or between a product and a 
process of using the product (see form paragraph 8.20).



806.05(i)Product, Process of Making, 
and Process of Using  [R-3]

37 CFR 1.141. Different inventions in one national 
application.



(b)Where claims to all three categories, product, process of 
making, and process of use, are included in a national application, 
a three way requirement for restriction can only be made where 
the process of making is distinct from the product. If the process 
of making and the product are not distinct, the process of using 
may be joined with the claims directed to the product and the process 
of making the product even though a showing of distinctness 
between the product and process of using the product can be 
made.

Where an application contains claims to a product, 
claims to a process specially adapted for (i.e., not pat





 

entably distinct from, as defined in MPEP 
§
 
806.05(f)) making the product, and claims to a process 
of using the product, applicant may be 
required to elect either (A) the product and process of 
making it; or (B) the process of using. If the 
examiner cannot make a showing of distinctness 
between the process of using and the product (MPEP 
§
 
806.05(h)), restriction cannot be required. 



Form paragraph 8.20 (See MPEP § 806.05(h))
may be used in product, process of making and process 
of using situations where the product cannot 
be restricted from the process of making the product.

See MPEP § 821.04(b) for rejoinder practice pertaining 
to product and process inventions.



806.05(j)Related Products; Related 
Processes [R-5]

To support a requirement for restriction between 
two or more related product inventions, or between 
two or more related process inventions, both two-way 
distinctness and reasons for insisting on restriction are 
necessary, i.e., separate classification, status in the art, 
or field of search. See MPEP § 808.02. See MPEP 
§
 
806.05(c) for an explanation of the requirements to 
establish two-way distinctness as it applies to inventions 
in a combination/subcombination relationship. 
For other related product inventions, or related process 
inventions, the inventions are distinct if 

(A)the inventions as claimed do not overlap in 
scope, i.e., are mutually exclusive;

(B)the inventions as claimed are not obvious 
variants; and 

(C)the inventions as claimed are either not capable 
of use together or can have a materially different 
design, mode of operation, function, or effect. See 
MPEP § 802.01.

The burden is on the examiner to provide an example 
to support the determination that the inventions 
are distinct, but the example need not be documented. 
If applicant either proves or provides convincing evidence 
that the example suggested by the examiner is 
not workable, the burden is on the examiner to suggest 
another viable example or withdraw the restriction 
requirement.

As an example, an intermediate product and a final 
product can be shown to be distinct inventions if the 
intermediate and final products are mutually exclusive 
inventions (not overlapping in scope) that are not 
obvious variants, and the intermediate product as 
claimed is useful to make other than the final product 
as claimed. Typically, the intermediate loses its identity 
in the final product. See also MPEP § 806.05(d)
for restricting between combinations disclosed as 
usable together. See MPEP § 809 - § 809.03 if a 
generic claim or claim linking multiple products or 
multiple processes is present.

Form paragraph 8.14.01 may be used to restrict 
between related products or related processes; form 
paragraph 8.14 may be used in intermediate-final 
product restriction requirements; form paragraph 8.16may be used to restrict between subcombinations.



¶ 8.14.01 Distinct Products or Distinct Processes

Inventions [1] and [2] are directed to related [3]. The related 
inventions are distinct if the (1) the inventions as claimed are 
either not capable of use together or can have a materially different 
design, mode of operation, function, or effect; (2) the inventions 
do not overlap in scope, i.e., are mutually exclusive; and (3) 
the inventions as claimed are not obvious variants. See MPEP § 
806.05(j). In the instant case, the inventions as claimed [4]. Furthermore, 
the inventions as claimed do not encompass overlapping 
subject matter and there is nothing of record to show them to 
be obvious variants.

Examiner Note:

1.This form paragraph may be used when claims are presented 
to two or more related product inventions, or two or more related 
process inventions, wherein the inventions as claimed are mutually 
exclusive, i.e., there is no product (or process) that would 
infringe both of the identified inventions. Use form paragraph 
8.15 to restrict between combination(s) and subcombination(s).

2.If a generic claim or claim linking multiple product inventions 
or multiple process inventions is present, see MPEP § 809 - 
§ 809.03.

3.In bracket 3, insert --products -- or --processes--.

4.In bracket 4, explain why the inventions as claimed are either 
not capable of use together or can have a materially different 
design, mode of operation, function, or effect.

5.Conclude restriction requirement with one of form paragraphs 
8.21.01 through 8.21.03.



¶ 8.14 Intermediate-Final Product

Inventions [1] and [2] are related as mutually exclusive species 
in an intermediate-final product relationship. Distinctness is 
proven for claims in this relationship if the intermediate product is 
useful to make other than the final product and the species are pat





 

entably distinct (MPEP § 806.05(j)). In the instant case, the intermediate 
product is deemed to be useful as [3] and the inventions 
are deemed patentably distinct because there is nothing on this 
record to show them to be obvious variants. 

Examiner Note:

1.This form paragraph is to be used when claims are presented 
to both an intermediate and final product (MPEP § 806.05(j)).

2.Conclude restriction requirement with one of form paragraphs 
8.21.01 through 8.21.03.

¶ 8.16 Subcombinations, Usable Together

Inventions [1] and [2] are related as subcombinations disclosed 
as usable together in a single combination. The subcombinations 
are distinct if they do not overlap in scope and are not obvious 
variants, and if it is shown that at least one subcombination is separately 
usable. In the instant case subcombination [3] has separate 
utility such as [4]. See MPEP § 806.05(d).

The examiner has required restriction between subcombinations 
usable together. Where applicant elects a subcombination 
and claims thereto are subsequently found allowable, any claim(s) 
depending from or otherwise requiring all the limitations of the 
allowable subcombination will be examined for patentability in 
accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant 
is advised that if any claim presented in a continuation or divisional 
application is anticipated by, or includes all the limitations 
of, a claim that is allowable in the present application, such claim 
may be subject to provisional statutory and/or nonstatutory double 
patenting rejections over the claims of the instant application. 

Examiner Note:

1.This form paragraph is to be used when claims are presented 
to subcombinations usable together (MPEP § 806.05(d)).

2.In bracket 3, insert the appropriate group number or identify 
the subcombination.

3.In bracket 4, suggest utility other than with the other subcombination.


4.Conclude restriction requirement with one of form paragraphs 
8.21.01 through 8.21.03.

806.06Independent Inventions [R-5]

Inventions as claimed are independent if there is no 
disclosed relationship between the inventions, that is, 
they are unconnected in design, operation, and effect. 
If it can be shown that two or more inventions are 
independent, and if there would be a serious burden 
on the examiner if restriction is not required, applicant 
should be required to restrict the claims presented to 
one of such independent inventions. For example:

(A)Two different combinations, not disclosed as 
capable of use together, having different modes of 
operation, different functions and different effects are 
independent. An article of apparel and a locomotive 
bearing would be an example. A process of painting a 
house and a process of boring a well would be a second 
example.

(B)Where the two inventions are process and 
apparatus, and the apparatus cannot be used to practice 
the process or any part thereof, they are independent. 
A specific process of molding is independent 
from a molding apparatus that cannot be used to practice 
the specific process.

Form paragraph 8.20.02 may be used to restrict 
between independent, unrelated inventions. Form 
paragraph 8.20.03 may be used to restrict between an 
unrelated product and process. 

¶ 8.20.02 Unrelated Inventions

 Inventions [1] and [2] are unrelated. Inventions are unrelated 
if it can be shown that they are not disclosed as capable of use 
together, and they have different designs, modes of operation, and 
effects. (MPEP § 802.01 and § 806.06). In the instant case, the different 
inventions [3] .

Examiner Note:

1.This form paragraph is to be used only when claims are presented 
to unrelated inventions, e. g., a necktie and a locomotive 
bearing not disclosed as capable of use together.

2.In bracket 3, insert reasons for concluding that the inventions 
are unrelated.

3.This form paragraph must be followed by one of form paragraphs 
8.21.01, 8.21.02 or 8.21.03. 



¶ 8.20.03 Unrelated Product and Process Inventions

 Inventions [1] and [2] are directed to an unrelated product and 
process. Product and process inventions are unrelated if it can be 
shown that the product cannot be used in, or made by, the process. 
See MPEP § 802.01 and § 806.06. In the instant case, [3] .

Examiner Note:

1.In bracket 3, insert reasons for concluding that the inventions 
are unrelated.

2.This form paragraph must be followed by one of form paragraphs 
8.21.01, 8.21.02 or 8.21.03.



807Patentability Report Practice Has 
No Effect on Restriction Practice 

Patentability report practice (MPEP § 705), has no 
effect upon, and does not modify in any way, the practice 
of restriction, being designed merely to facilitate 




 

the handling of cases in which restriction cannot properly 
be required.

808Reasons for Insisting Upon Restriction 
[R-3]

Every requirement to restrict has two aspects: 
(A)
 
the reasons (as distinguished from the mere statement 
of conclusion) why each invention as 
claimed is either independent or distinct from 
the other(s); and (B) the reasons why there would 
be a serious burden on the examiner if restriction is 
not required, i.e., the reasons for insisting upon 
restriction therebetween as set forth in the following 
sections.

808.01Reasons for Holding of 
Independence or Distinctness 
[R-3]

The particular reasons relied on by the examiner 
for holding that the inventions as claimed are 
either independent or distinct should be concisely 
stated. A mere statement of conclusion is inadequate. 
The reasons upon which the conclusion is based 
should be given.

For example, relative to a combination and a subcombination 
thereof, the examiner should point out 
the reasons why he or she considers the subcombination 
to have utility by itself or in other combinations, 
and why he or she considers that the combination as 
claimed does not require the particulars of the subcombination 
as claimed. 

Each relationship of claimed inventions should be 
similarly treated and the reasons for the conclusions 
of distinctness or independence set forth. Form paragraphs 
8.01, 8.02, and 8.14 - 8.20.02 may be used as 
appropriate to explain why the inventions as claimed 
are independent or distinct. See MPEP § 806.05 - 
§
 
806.06.

808.01(a)Species [R-5]

Where there is no disclosure of a relationship 
between species (see MPEP § 806.04(b)), they are 
independent inventions. A requirement for restriction 
is permissible if there is a patentable difference 
between the species as claimed and there would be a 
serious burden on the examiner if restriction is not 
required. See MPEP § 803 and §
 
808.02. 

Where there is a relationship disclosed between 
species, such disclosed relation must be discussed and 
reasons advanced leading to the conclusion that the 
disclosed relation does not prevent restriction, in 
order to establish the propriety of restriction.

When a requirement for restriction between either 
independent or distinct species is made, applicant 
must elect a single disclosed species even if applicant 
disagrees with the examiner’s restriction requirement.

Election of species should not be required 
between claimed species that are considered 
clearly unpatentable (obvious) over each other. In 
making a requirement for restriction in an application 
claiming plural species, the examiner should group 
together species considered clearly unpatentable over 
each other.

Election of species may be required prior to a 
search on the merits (A) in applications containing 
claims to a plurality of species with no generic claims, 
and (B) in applications containing both species claims 
and generic or Markush claims.

In applications where only generic claims are presented, 
restriction cannot be required unless the 
generic claims recite or encompass such a multiplicity 
of species that an unduly extensive and burdensome 
search would be necessary to search the 
entire scope of the 
claim. See MPEP § 803.02 and § 
809.02(a). If applicant presents species claims to 
more than one patentably distinct species of the 
invention after an Office action on only generic 
claims, with no restriction requirement, the Office 
may require the applicant to elect a single species for 
examination.

In all applications where a generic claim is found 
allowable, the application should be treated as indicated 
in MPEP § 809 and § 821.04(a). See MPEP § 
803.02 and § 809.02(a) for guidance regarding how to 
require restriction between species.

808.02Establishing Burden [R-5]

Where, as disclosed in the application, the several 
inventions claimed are related, and such related 
inventions are not patentably distinct as claimed, 
restriction under 35 U.S.C. 121 is never proper 
(MPEP § 806.05). If applicant voluntarily files claims 




 

to such related inventions in different applications, 
double patenting may be held.

Where the  inventions as claimed are shown to be 
independent or distinct under the criteria of MPEP § 
806.05(c) - § 806.06, the examiner, in order to establish 
reasons for insisting upon restriction, must 
explain why there would be a serious burden on the 
examiner if restriction is not required. Thus the 
examiner must show by appropriate explanation one 
of the following:

(A)Separate classification thereof: This shows 
that each invention has attained recognition in the art 
as a separate subject for inventive effort, and also a 
separate field of search. Patents need not be cited to 
show separate classification.

(B)A separate status in the art when they are 
classifiable together: Even though they are classified 
together, each invention can be shown to have formed 
a separate subject for inventive effort when the examiner 
can show a recognition of separate inventive 
effort by inventors. Separate status in the art may be 
shown by citing patents which are evidence of such 
separate status, and also of a separate field of search.

(C)A different field of search: Where it is necessary 
to search for one of the inventions in a manner 
that is not likely to result in finding art pertinent to the 
other invention(s) (e.g., searching different classes/
subclasses or electronic resources, or employing different 
search queries, a different field of search is 
shown, even though the two are classified together. 
The indicated different field of search must in fact be 
pertinent to the type of subject matter covered by the 
claims. Patents need not be cited to show different 
fields of search.

Where, however, the classification is the same and 
the field of search is the same and there is no clear 
indication of separate future classification and field of 
search, no reasons exist for dividing among independent 
or related inventions.

809Linking Claims [R-5]

There are a number of situations which arise in 
which an application has claims to two or more properly 
divisible inventions, so that a requirement to 
restrict the claims of the application to one would be 
proper, but presented in the same case are one or more 
claims (generally called “linking” claims) which, 
if allowable, would require rejoinder of the otherwise 
divisible inventions. See MPEP § 821.04 for information 
pertaining to rejoinder practice.

Linking claims and the inventions they link 
together are usually either all directed to products or 
all directed to processes (i.e., a product claim linking 
properly divisible product inventions, or a process 
claim linking properly divisible process inventions). 
The most common types of linking claims which, if 
allowable, act to prevent restriction between inventions 
that can otherwise be shown to be divisible, are 

(A)genus claims linking species claims; and

(B)subcombination claims linking plural combinations.


Where an application includes claims to distinct 
inventions as well as linking claims, restriction can 
nevertheless be required. 

The linking claims must be examined with, and 
thus are considered part of, the invention elected. 
When all claims directed to the elected invention are 
allowable, should any linking claim be allowable, the 
restriction requirement between the linked inventions 
must be withdrawn. Any claim(s) directed to the nonelected 
invention(s), previously withdrawn from consideration, 
which depends from or requires all the 
limitations of the allowable linking claim must be 
rejoined and will be fully examined for patentability. 
Where the requirement for restriction in an application 
is predicated upon the nonallowability of generic 
or other type of linking claims, applicant is entitled to 
retain in the application claims to the nonelected 
invention or inventions. Where such withdrawn 
claims have been canceled by applicant pursuant to 
the restriction requirement, upon the allowance of the 
linking claim(s), the examiner must notify applicant 
that any canceled, nonelected claim(s) which depends 
from or requires all the limitations of the allowable 
linking claim may be reinstated by submitting the 
claim(s) in an amendment. Upon entry of the amendment, 
the amended claim(s) will be fully examined for 
patentability. See MPEP § 821.04 for additional information 
regarding rejoinder. 

809.02(a)Election of Species Required 
[R-3]

Where restriction between species is appropriate 
(see MPEP § 808.01(a)) the examiner should 




 

send a letter including only a restriction requirement 
or place a telephone requirement to restrict (the latter 
being encouraged). See MPEP §
 
812.01 for telephone 
practice in restriction requirements.

Action as follows should be taken:

(A)Identify generic claims or indicate that no 
generic claims are present. See MPEP § 806.04(d) for 
definition of a generic claim.

(B)Clearly identify each (or in aggravated cases 
at least exemplary ones) of the disclosed species, to 
which claims are to be restricted. The species are 
preferably identified as the species of figures 1, 2, and 
3 or the species of examples I, II, and III, respectively. 
In the absence of distinct figures or examples to identify 
the several species, the mechanical means, the 
particular material, or other distinguishing characteristic 
of the species should be stated for each species 
identified. If the species cannot be conveniently identified, 
the claims may be grouped in accordance with 
the species to which they are restricted. Provide reasons 
why the species are independent or distinct.

(C)Applicant should then be required to elect a 
single disclosed species under 35 U.S.C. 121, and 
advised as to the requisites of a complete reply and his 
or her rights under 37 CFR 1.141.



To be complete, a reply to a requirement made 
according to this section should include a proper election 
along with a listing of all claims readable thereon, 
including any claims subsequently added.

In those applications wherein a requirement for 
restriction is accompanied by an action on the 
elected claims, such action will be considered to be 
an action on the merits and the next action may be 
made final where appropriate in accordance with 
MPEP § 706.07(a).

For treatment of claims held to be drawn to nonelected 
inventions, see MPEP § 821 et seq.

¶ 8.01 Election of Species; Species Claim(s) Present

This application contains claims directed to the following patentably 
distinct species [1]. The species are independent or distinct 
because [2].

Applicant is required under 35 U.S.C. 121 to elect a single disclosed 
species for prosecution on the merits to which the claims 
shall be restricted if no generic claim is finally held to be allowable. 
Currently, [3] generic.

Applicant is advised that a reply to this requirement must 
include an identification of the species that is elected consonant 
with this requirement, and a listing of all claims readable thereon, 
including any claims subsequently added. An argument that a 
claim is allowable or that all claims are generic is considered nonresponsive 
unless accompanied by an election.

Upon the allowance of a generic claim, applicant will be entitled 
to consideration of claims to additional species which depend 
from or otherwise require all the limitations of an allowable 
generic claim as provided by 37 CFR 1.141. If claims are added 
after the election, applicant must indicate which are readable upon 
the elected species. MPEP § 809.02(a).

Examiner Note:

1.In bracket 1, identify the species from which an election is to 
be made.

2.In bracket 2, explain why the inventions are independent or 
distinct. See, e.g., form paragraphs 8.14.01 and 8.20.02.

3.In bracket 3 insert the appropriate generic claim information.

4.Conclude restriction requirement with one of form paragraphs 
8.21.01-8.21.03.

¶ 8.02 Election of Species; No Species Claim Present

Claim [1] generic to the following disclosed patentably distinct 
species: [2]. The species are independent or distinct because [3]. 
Applicant is required under 35 U.S.C. 121 to elect a single disclosed 
species, even though this requirement is traversed. Applicant 
is advised that a reply to this requirement must include an 
identification of the species that is elected consonant with this 
requirement, and a listing of all claims readable thereon, including 
any claims subsequently added. An argument that a claim is 
allowable or that all claims are generic is considered nonresponsive 
unless accompanied by an election.

Upon the allowance of a generic claim, applicant will be entitled 
to consideration of claims to additional species which depend 
from or otherwise require all the limitations of an allowable 
generic claim as provided by 37 CFR 1.141. If claims are added 
after the election, applicant must indicate which are readable upon 
the elected species. MPEP § 809.02(a).

Examiner Note:

1.This form paragraph should be used for the election of 
requirement described in MPEP § 803.02 (Markush group) and 
MPEP § 808.01(a) where only generic claims are presented.

2.In bracket 2, clearly identify the species from which an election 
is to be made.

3.In bracket 3, explain why the inventions are independent or 
distinct. See, e.g., form paragraphs 8.14.01 and 8.20.02.

4.Conclude restriction requirement with one of form paragraphs 
8.21.01-8.21.03.



809.03Restriction Between Linked 
Inventions [R-5]

Where an application includes two or more otherwise 
properly divisible inventions that are linked by a 
claim which, if allowable, would require rejoinder 




 

(See MPEP § 809 and § 821.04), the examiner 
should require restriction, either by a written Office 
action that includes only a restriction requirement or 
by a telephoned requirement to restrict (the latter 
being encouraged). Examiners should use form paragraph 
8.12 to make restrictions involving linking 
claims when the linking claim is other than a genus 
claim linking species inventions. When the linking 
claim is a genus claim linking species inventions, 
examiners should use form paragraph 8.01 or 8.02(see MPEP § 809.02(a)).



¶ 8.12 Restriction, Linking Claims

Claim [1] link(s) inventions [2] and [3]. The restriction 
requirement [4] the linked inventions is subject to the nonallowance 
of the linking claim(s), claim [5]. Upon the indication of 
allowability of the linking claim(s), the restriction requirement as 
to the linked inventions shall be withdrawn and any claim(s) 
depending from or otherwise requiring all the limitations of the 
allowable linking claim(s) will be rejoined and fully examined for 
patentability in accordance with 37 CFR 1.104. Claims that 
require all the limitations of an allowable linking claim will be 
entered as a matter of right if the amendment is presented prior to 
final rejection or allowance, whichever is earlier. Amendments 
submitted after final rejection are governed by 37 CFR 1.116; 
amendments submitted after allowance are governed by 37 CFR 
1.312. 

Applicant(s) are advised that if any claim presented in a continuation 
or divisional application is anticipated by, or includes all 
the limitations of, the allowable linking claim, such claim may be 
subject to provisional statutory and/or nonstatutory double patenting 
rejections over the claims of the instant application. 

Where a restriction requirement is withdrawn, the provisions of 
35 U.S.C. 121 are no longer applicable. In re Ziegler, 443 F.2d 
1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also 
MPEP § 804.01. 

Examiner Note:

1.This form paragraph must be included in any restriction 
requirement with at least one linking claim present.

2.In bracket 4, insert either --between-- or --among--.

3.In bracket 5, insert the claim number(s) of the linking claims.

4.See related form paragraphs 8.45, 8.46 and 8.47.



Where the requirement for restriction in an application 
is predicated upon the nonallowability of generic 
or other type of linking claims, applicant is entitled to 
retain in the application claims to the nonelected 
invention or inventions.

For traverse of a restriction requirement with linking 
claims, see MPEP § 818.03(d).

For treatment of claims held to be drawn to nonelected 
inventions, see MPEP § 821 et seq.

810Action on the Merits [R-3]

In general, in an application when only a nonfinal 
written requirement to restrict is made, no action 
on the merits is given. A 1-month (not less than 30 
days) shortened statutory period will be set for reply 
when a written restriction requirement is made without 
an action on the merits. This period may be 
extended under the provisions of 37 CFR 1.136(a). 
The Office action making the restriction requirement 
final ordinarily includes an action on the merits of the 
claims of the elected invention. See 37 CFR 1.143. In 
those applications wherein a requirement for restriction 
or election is made via telephone and applicant 
makes an oral election of a single invention, the written 
record of the restriction requirement will be 
accompanied by a complete action on the merits of 
the elected claims. See MPEP § 812.01. When preparing 
a final action in an application where applicant 
has traversed the restriction requirement, see MPEP § 
821.01.



811Time for Making Requirement 
[R-3]

37 CFR 1.142(a), second sentence, indicates 
that a restriction requirement “will normally be 
made before any action upon the merits; however, it 
may be made at any time before final action .” This 
means the examiner should make a proper requirement 
as early as 
possible 
in the prosecution, in the 
first action if possible, otherwise, as soon as the need 
for a proper requirement develops.

Before making a restriction requirement after the 
first action on the merits, the examiner will consider 
whether there will be a serious burden if restriction is 
not required.

811.02New Requirement After 
Compliance With Preceding Requirement 
[R-3]

Since 37 CFR 1.142(a) provides that restriction is 
proper at any stage of prosecution up to final action, a 
second requirement may be made when it becomes 
proper, even though there was a prior requirement 




 

with which applicant complied. Ex parte Benke, 1904 
C.D. 63, 108 O.G. 1588 (Comm’r Pat. 1904).

811.03Repeating After Withdrawal 
Proper [R-3]

Where a requirement to restrict is made and thereafter 
withdrawn as improper, if restriction
becomes proper at a later stage in the prosecution, 
restriction may again be required.

811.04Proper Even Though Grouped 
Together in Parent Application

Even though inventions are grouped together in a 
requirement in a parent application, restriction or 
election among the inventions may be required in the 
divisional applications, if proper.

812Who Should Make the Requirement 
[R-3]

The requirement should be made by an examiner 
who would examine at least one of the inventions.

An examiner should not require restriction in an 
application if none of the claimed inventions is 
classifiable in his or her Technology Center. Such an 
application should be transferred to a Technology 
Center wherein at least one of the claimed inventions 
would be examined.

812.01Telephone Restriction Practice[R-3]

If an examiner determines that a requirement for 
restriction should be made in an application, the 
examiner should formulate a draft of such restriction 
requirement including an indication of those claims 
considered to be linking or generic.  Thereupon, the 
examiner should telephone the attorney or agent of 
record and request an oral election, with or without 
traverse , after the attorney or agent has had time to 
consider the restriction requirement. However, no 
telephone communication need be made where the 
requirement for restriction is complex, the application 
is being prosecuted by the applicant pro se, or the 
examiner knows from past experience that an election 
will not be made by telephone. The examiner should 
arrange for a second telephone call within a reasonable 
time, generally within 3 working days. If the 
attorney or agent objects to making an oral election, 
or fails to respond, a restriction letter will be 
mailed, and this letter should contain reference to the 
unsuccessful telephone call.  When an oral election 
is made, the examiner will then proceed to incorporate 
into the Office action a formal restriction requirement 
including the date of the election, the attorney’s or 
agent’s name, and a complete record of the telephone 
interview, followed by a complete action on the 
elected invention as claimed, including linking or 
generic claims if present.

Form paragraphs 8.23 or 8.23.01 should be used to 
make a telephone election of record.

¶ 8.23 Requirement, When Elected by Telephone

During a telephone conversation with [1] on [2] a provisional 
election was made [3] traverse to prosecute the invention of [4], 
claim [5]. Affirmation of this election must be made by applicant 
in replying to this Office action. Claim [6] withdrawn from further 
consideration by the examiner, 37 CFR 1.142(b), as being drawn 
to a non-elected invention.

Examiner Note:

1.In bracket 3, insert --with-- or --without--, whichever is 
applicable.

2.In bracket 4, insert either the elected group or species.

3.An action on the merits of the claims to the elected invention 
should follow.

¶ 8.23.01 Requirement, No Election by Telephone

A telephone call was made to [1] on [2] to request an oral election 
to the above restriction requirement, but did not result in an 
election being made.

Examiner Note:

1.In bracket 1, insert the name of the applicant or attorney or 
agent contacted.

2.In bracket 2, insert the date(s) of the telephone contact(s).

3.This form paragraph should be used in all instances where a 
telephone election was attempted and the applicant’s representative 
did not or would not make an election.

4.This form paragraph should not be used if no contact was 
made with applicant or applicant’s representative.

If, on examination, the examiner finds the claims 
to an invention elected without traverse to be 
allowable and no nonelected invention is eligible 
for rejoinder (see MPEP § 821.04), the letter should 
be attached to the Notice of Allowability form PTOL-
37 and should include cancellation of the nonelected 
claims, a statement that the prosecution is closed, and 
that a notice of allowance will be sent in due course. 
Correction of formal matters in the above-noted situation 
which cannot be handled by a telephone call and 




 

thus requires action by the applicant should be handled 
under the Ex parte Quayle practice, using Office 
Action Summary form PTOL-326.

Should the elected invention as claimed be 
found allowable in the first action, and an oral 
traverse was noted, the examiner should include in his 
or her action a statement under MPEP § 821.01, making 
the restriction requirement final and giving 
applicant 1 month to either cancel the  claims 
drawn to the nonelected invention or take other 
appropriate action. (37 
CFR 1.144). Failure to take 
action will be treated as an authorization to cancel the 
nonelected claims by an examiner’s amendment and 
pass the application to issue. Prosecution of the application 
is otherwise closed.

In either situation (traverse or no traverse), caution 
should be exercised to determine if any of the 
allowable claims are linking or generic claims , 
or if any nonelected inventions are eligible for rejoinder 
(see MPEP § 821.04), before canceling 
claims drawn to the nonelected invention.

Where the respective inventions would be 
examined in different Technology Centers (TCs), the 
requirement for restriction should be made only after 
consultation with and approval by all TCs involved. If 
an oral election would cause the application to be 
examined in another TC, the initiating TC should 
transfer the application with a signed memorandum of 
the restriction requirement and a record of the interview. 
The receiving TC will incorporate the substance 
of this memorandum in its official letter as indicated 
above. Differences as to restriction should be settled 
by the existing chain of command, e.g., supervisory 
patent examiner or TC director.

This practice is limited to use by examiners who 
have at least negotiation authority. Other examiners 
must have the prior approval of their supervisory 
patent examiner.

814Indicate Exactly How Application 
Is To Be Restricted [R-3]

The examiner must provide a clear and detailed 
record of the restriction requirement to provide a clear 
demarcation between restricted inventions so that it 
can be determined whether inventions claimed in a 
continuing application are consonant with the restriction 
requirement and therefore subject to the prohibition 
against double patenting rejections under 35 
U.S.C. 121. Geneva Pharms. Inc. v. GlaxoSmithKline 
PLC, 349 F.3d 1373, 1381, 68 USPQ2d 1865, 1871 
(Fed. Cir. 2003). See also MPEP § 804.01.

I. SPECIES

The mode of indicating how to require restriction 
between species is set forth in MPEP § 809.02(a).

The particular limitations in the claims and 
the reasons why such limitations are considered to 
support restriction of the claims to a particular 
disclosed species should be mentioned  to make the 
requirement clear.



II. INVENTIONS OTHER THAN SPECIES

It is necessary to read all of the claims  to determine 
what the claims cover. When doing this, the 
claims directed to each separate invention should 
be noted along with a statement of the invention
to which they are drawn.



In setting forth the restriction requirement, separate 
inventions should be identified by a grouping of 
the claims with a short description of the total extent 
of the invention claimed in each group, specifying the 
type or relationship of each group as by stating the 
group is drawn to a process, or to a subcombination, 
or to a product, etc., and should indicate the classification 
or separate status of each group, as for example, 
by class and subclass. See MPEP § 817 for additional 
guidance.

While every claim should be accounted for, the 
omission to group a claim, or placing a claim in the 
wrong group will not affect the propriety of a final 
requirement where the requirement is otherwise 
proper and the correct disposition of the omitted or 
erroneously grouped claim is clear.



III. LINKING CLAIMS

The generic or other linking claims should not be 
associated with any one of the linked inventions since 
such claims must be examined with  the  elected 
 invention. See MPEP § 809.

815Make Requirement Complete [R-3]

When making a restriction requirement every 
effort should be made to have the requirement com





 

plete. If some of the claimed inventions are classifiable 
in another art unit and the examiner has any 
doubt as to the proper line among the same, the application 
should be referred to the examiner of the other 
art unit for information on that point and such examiner 
should render the necessary assistance.



817Outline of Letter for Restriction 
Requirement [R-5]

The following outline should be used to set forth a 
requirement to restrict.

OUTLINE OF RESTRICTION REQUIRE-
MENT

(A)Statement of the requirement to restrict and 
that it is being made under 35 U.S.C. 121

(1)Identify each group by Roman numeral.

(2)List claims in each group. Check accuracy 
of numbering of the claims; look for same claims in 
two groups; and look for omitted claims.

(3)Give short description of total extent of the 
subject matter claimed in each group, pointing out 
critical claims of different scope and identifying 
whether the claims are directed to a combination, subcombination, 
process, apparatus, or product.

(4)Classify each group.

Form paragraphs 8.08-8.11 should be used to group 
inventions.

¶ 8.08 Restriction, Two Groupings

Restriction to one of the following inventions is required under 
35 U.S.C. 121:

I.Claim [1], drawn to [2], classified in class [3], subclass 
[4].

II.Claim [5], drawn to [6], classified in class [7], subclass [8].

¶ 8.09 Restriction, 3rd Grouping

III.Claim [1], drawn to [2], classified in class [3], subclass 
[4].

¶ 8.10 Restriction, 4th Grouping

IV.Claim [1], drawn to [2], classified in class [3], subclass 
[4].

¶ 8.11 Restriction, Additional Groupings

[1].Claim[2], drawn to [3], classified in class [4], subclass [5].

Examiner Note:

In bracket 1, insert the appropriate roman numeral, e.g., --V--, -
-VI--, etc.

If restriction is required between species, form 
paragraph 8.01 or 8.02 should be used to set forth the 
patentably distinct species and reasons for holding the 
species are independent or distinct. See MPEP 
§
 
809.02(a). 

(B)Take into account claims not grouped, indicating 
their disposition.

(1)Linking claims

(i)Identify

(ii)Statement of groups to which linking 
claims may be assigned for examination

(2)Other ungrouped claims

(3)Indicate disposition, e.g., improperly 
dependent, canceled, etc.

(C)Allegation of independence or distinctness

(1)Point out facts which show independence 
or distinctness

(2)Treat the inventions as claimed, don’t 
merely state the conclusion that inventions in fact are 
independent or distinct, e.g.,

(i)Subcombination - Subcombination disclosed 
as usable together

Each usable alone or in other identified combination


Demonstrate by examiner’s suggestion

(ii)Combination - Subcombination

Combination as claimed does not require 
subcombination

AND

Subcombination usable alone or in other 
combination

Demonstrate by examiner’s suggestion

(iii)Process - Apparatus

Process can be carried out by hand or by 
other apparatus

Demonstrate by examiner’s suggestion

OR

Demonstrate apparatus can be used in other 
process (rare).

(iv)Process of making and/or Apparatus for 
making — Product made

Claimed product can be made by other process 
(or apparatus)

Demonstrate by examiner’s suggestion

OR

Demonstrate process of making (or apparatus 
for making) can produce other product (rare)

(D)Provide reasons for insisting upon restriction




 

(1)Separate status in the art

(2)Different classification

(3)Same classification but recognition of 
divergent subject matter

(4)Divergent fields of search, or

(5)Search required for one group not required 
for the other

(E)Summary statement

(1)Summarize (i) independence or distinctness 
and (ii) reasons for insisting upon restriction 

(2)Include paragraph advising as to reply 
required

(3)Indicate effect of allowance of linking 
claims, if any present

(4)Indicate effect of cancellation of evidence 
claims (see MPEP § 806.05(c))

(5)Indicate effect of allowance of product 
claims if restriction was required between a product 
and a process of making and/or using the product.

Form paragraphs 8.14-8.20.02 may be used as 
appropriate to set forth the reasons for the holding of 
independence or distinctness. Form paragraph 8.13may be used as a heading.

¶ 8.13 Distinctness (Heading)

The inventions are independent or distinct, each from the other 
because:

Examiner Note:

This form paragraph should be followed by one of form paragraphs 
8.14-8.20.02 to show independence or distinctness. 

One of form paragraphs 8.21.01 through 8.21.03must be used at the conclusion of each restriction 
requirement.



¶ 8.21.01 Conclusion to All Restriction Requirements: 
Different Classification

Because these inventions are independent or distinct for the 
reasons given above and there would be a serious burden on the 
examiner if restriction is not required because the inventions have 
acquired a separate status in the art in view of their different classification, 
restriction for examination purposes as indicated is 
proper.

Examiner Note:

THIS FORM PARAGRAPH (OR ONE OF FORM PARAGRAPHS 
8.21.02 OR 8.21.03) MUST BE ADDED AS A CONCLUSION 
TO ALL RESTRICTION REQUIREMENTS 
employing any of form paragraphs 8.01, 8.02, or 8.14 to 8.20.03.

¶ 8.21.02 Conclusion to All Restriction Requirements: 
Recognized Divergent Subject Matter

Because these inventions are independent or distinct for the 
reasons given above and there would be a serious burden on the 
examiner if restriction is not required because the inventions have 
acquired a separate status in the art due to their recognized divergent 
subject matter, restriction for examination purposes as indicated 
is proper.

Examiner Note:

THIS FORM PARAGRAPH (OR ONE OF FORM PARAGRAPHS 
8.21.01 OR 8.21.03) MUST BE ADDED AS A CONCLUSION 
TO ALL RESTRICTION REQUIREMENTS 
employing any of form paragraphs 8.01, 8.02, or 8.14 to 8.20.03.

¶ 8.21.03 Conclusion to All Restriction Requirements: 
Different Search 

Because these inventions are independent or distinct for the 
reasons given above and there would be a serious burden on the 
examiner if restriction is not required because the inventions 
require a different field of search (see MPEP § 808.02), restriction 
for examination purposes as indicated is proper.

Examiner Note:

THIS FORM PARAGRAPH (OR ONE OF FORM PARAGRAPHS 
8.21.01 OR 8.21.02) MUST BE ADDED AS A CONCLUSION 
TO ALL RESTRICTION REQUIREMENTS 
employing any of form paragraphs 8.01, 8.02, or 8.14 to 8.20.03.



Form paragraph 8.23.02 must be included in all 
restriction requirements for applications having joint 
inventors.

¶ 8.23.02 Joint Inventors, Correction of Inventorship

Applicant is reminded that upon the cancellation of claims to a 
non-elected invention, the inventorship must be amended in compliance 
with 37 CFR 1.48(b) if one or more of the currently 
named inventors is no longer an inventor of at least one claim 
remaining in the application. Any amendment of inventorship 
must be accompanied by a request under 37 CFR 1.48(b) and by 
the fee required under 37 CFR 1.17(i).

Examiner Note:

This form paragraph must be included in all restriction requirements 
for applications having joint inventors.

818Election and Reply [R-3]

Election is the designation of the particular one of 
two or more disclosed inventions that will be prosecuted 
in the application.

A reply should be made to each point raised by the 
examiner’s action, and may include a traverse or compliance.





 

A traverse of a requirement to restrict is a statement 
of the reasons upon which the applicant relies for his 
or her conclusion that the requirement is in error.



Where a rejection or objection is included with a 
restriction requirement, applicant, besides making a 
proper election must also distinctly and specifically 
point out the supposed errors in the examiner’s rejection 
or objection. See 37 CFR 1.111.

818.01Election Fixed by Action on 
Claims

Election becomes fixed when the claims in an 
application have received an action on their merits by 
the Office.

818.02Election Other Than Express 

Election may be made in other ways than expressly 
in reply to a requirement as set forth in MPEP 
§
 
818.02(a) and § 818.02(c).

818.02(a)By Originally Presented Claims 

Where claims to another invention are properly 
added and entered in the application before an action 
is given, they are treated as original claims for purposes 
of restriction only.

The claims originally presented and acted upon by 
the Office on their merits determine the invention 
elected by an applicant in the application, and in any 
request for continued examination (RCE) which has 
been filed for the application. Subsequently presented 
claims to an invention other than that acted upon 
should be treated as provided in MPEP § 821.03.

818.02(b)Generic Claims Only — No 
Election of Species [R-3]

Where only generic claims are first presented and 
prosecuted in an application in which no election of a 
single invention has been made, and applicant later 
presents species claims to more than one patentably 
distinct species of the invention, the examiner 
may require applicant to elect a single species. The 
practice of requiring election of species in cases with 
only generic claims of the unduly extensive and burdensome 
search type is set forth in MPEP § 808.01(a).

818.02(c)By Optional Cancellation of 
Claims

Where applicant is claiming two or more inventions 
(which may be species or various types of related 
inventions) and as a result of action on the claims, he 
or she cancels the claims to one or more of such 
inventions, leaving claims to one invention, and such 
claims are acted upon by the examiner, the claimed 
invention thus acted upon is elected.

818.03Express Election and Traverse[R-3]

37 CFR 1.143. Reconsideration of requirement.

If the applicant disagrees with the requirement for restriction, 
he may request reconsideration and withdrawal or modification of 
the requirement, giving the reasons therefor. (See § 1.111). In 
requesting reconsideration the applicant must indicate a provisional 
election of one invention for prosecution, which invention 
shall be the one elected in the event the requirement becomes 
final. The requirement for restriction will be reconsidered on such 
a request. If the requirement is repeated and made final, the examiner 
will at the same time act on the claims to the invention 
elected.

Election in reply to a requirement may be made 
either with or without an accompanying traverse of 
the requirement.

Applicant must make his or her own election; the 
examiner will not make the election for the applicant. 
37 CFR 1.142, 37 CFR 1.143.

818.03(a)Reply Must Be Complete 

As shown by the first sentence of 37 CFR 1.143, 
the traverse to a requirement must be complete as 
required by 37 CFR 1.111(b) which reads in part: “In 
order to be entitled to reconsideration or further 
examination, the applicant or patent owner must reply 
to the Office action. The reply by the applicant or 
patent owner must be reduced to a writing which distinctly 
and specifically points out the supposed errors 
in the examiner’s action and must reply to every 
ground of objection and rejection in the prior Office 
action. . . . The applicant’s or patent owner’s reply 
must appear throughout to be a bona fide attempt to 
advance the application or the reexamination proceeding 
to final action. . . .” 

Under this rule, the applicant is required to specifically 
point out the reasons on which he or she bases 




 

his or her conclusions that a requirement to restrict is 
in error. A mere broad allegation that the requirement 
is in error does not comply with the requirement of 
37 
CFR § 1.111. Thus the required provisional election 
(see MPEP § 818.03(b)) becomes an election 
without traverse.

818.03(b)Must Elect, Even When Re-
quirement Is Traversed [R-3]

As noted in the second sentence of 37 CFR 1.143, 
a provisional election must be made even though the 
requirement is traversed.

All requirements for restriction should include form 
paragraph 8.22.

¶ 8.22 Requirement for Election and Means for Traversal

Applicant is advised that the reply to this requirement to be 
complete must include (i) an election of a species or invention to 
be examined even though the requirement be traversed (37 CFR 
1.143) and (ii) identification of the claims encompassing the 
elected invention. 

 The election of an invention or species may be made with or 
without traverse. To reserve a right to petition, the election must 
be made with traverse. If the reply does not distinctly and specifically 
point out supposed errors in the restriction requirement, the 
election shall be treated as an election without traverse. 

Should applicant traverse on the ground that the inventions or 
species are not patentably distinct, applicant should submit evidence 
or identify such evidence now of record showing the inventions 
or species to be obvious variants or clearly admit on the 
record that this is the case. In either instance, if the examiner finds 
one of the inventions unpatentable over the prior art, the evidence 
or admission may be used in a rejection under 35 U.S.C.103(a) of 
the other invention.

Examiner Note:

This form paragraph must be used in Office actions containing 
a restriction requirement with or without an action on the merits.

818.03(c)Must Traverse To Preserve 
Right of Petition [R-3]

37 CFR 1.144. Petition from requirement for restriction.

After a final requirement for restriction, the applicant, in 
addition to making any reply due on the remainder of the action, 
may petition the Director to review the requirement. Petition may 
be deferred until after final action on or allowance of claims to the 
invention elected, but must be filed not later than appeal. A petition 
will not be considered if reconsideration of the requirement 
was not requested (see § 1.181).

If applicant does not distinctly and specifically 
point out supposed errors in the restriction requirement, 
the election should be treated as an election 
without traverse and be so indicated to the applicant 
by use of form paragraph 8.25.02.



¶ 8.25.02 Election Without Traverse Based on Incomplete 
Reply

Applicant’s election of [1] in the reply filed on [2] is 
acknowledged. Because applicant did not distinctly and specifically 
point out the supposed errors in the restriction requirement, 
the election has been treated as an election without traverse 
(MPEP § 818.03(a)).



818.03(d)Traverse of Restriction 
Requirement With Linking 
Claims [R-3]



Election of a single invention in reply to a restriction 
requirement, combined with a traverse of 
only the nonallowance of the linking claims, is 
an agreement with the position taken by the Office 
that restriction is proper if the linking claim is not 
allowable and improper if it is allowable. If the 
Office allows such a claim, it is bound to withdraw 
the requirement and to act on all linked inventions 
which depend from or otherwise require all the limitations 
of the allowable linking claim. But once all 
linking claims are canceled 37 CFR 1.144 would not 
apply, since the record would be one of agreement as 
to the propriety of restriction.

Where, however, there is a traverse on the ground 
that there is some relationship (other than and in addition 
to the linking claim) that also prevents restriction, 
the merits of the requirement are contested and 
not admitted.  If restriction is made final in spite of 
such traverse, the right to petition is preserved even 
though all linking claims are canceled. When a final 
restriction requirement is contingent on the nonallowability 
of the linking claims, applicant may petition 
from the requirement under 37 CFR 1.144without waiting for a final action on the merits of the 
linking claims or applicant may defer his or her petition 
until the linking claims have been finally 
rejected, but not later than appeal. See 37 CFR 1.144and MPEP § 818.03(c).






 

819Office Generally Does Not Permit 
Shift [R-3]

The general policy of the Office is not to permit the 
applicant to shift to claiming another invention after 
an election is once made and action given on the 
elected subject matter. Note that the applicant cannot, 
as a matter of right, file a request for continued examination 
(RCE) to obtain continued examination on the 
basis of claims that are independent and distinct from 
the claims previously claimed and examined (i.e., 
applicant cannot switch inventions by way of an RCE 
as a matter of right). When claims are presented 
which the examiner holds are drawn to an invention 
other than the one elected, he or she should treat the 
claims as outlined in MPEP § 821.03.

Where a continued prosecution application (CPA) 
filed under 37 CFR 1.53(d) is a continuation of its 
parent application and not a divisional,  an express 
election made in the prior (parent) application in reply 
to a restriction requirement carries over to the CPA 
unless otherwise indicated by applicant. In no other 
type of continuing application does an election 
carry over from the prior application. See Bristol-
Myers Squibb Co. v. Pharmachemie BV, 361 F.3d 
1343, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir. 
2004)(An original restriction requirement in an earlier 
filed application does not carry over to claims of a 
continuation application in which the examiner does 
not reinstate or refer to the restriction requirement in 
the parent application.). 

Where a genus claim is allowable, applicant may 
prosecute a reasonable number of additional species 
claims thereunder, in accordance with 37 CFR 1.141.

Where an interference is instituted prior to an applicant’s 
election, the subject matter of the interference 
issues is not elected. An applicant may, after the termination 
of the interference, elect any one of the 
inventions claimed.



821Treatment of Claims Held To Be 
Drawn to Nonelected Inventions[R-3]

Claims held to be drawn to nonelected inventions, 
including claims drawn to nonelected species or 
inventions that may be eligible for rejoinder, are 
treated as indicated in MPEP § 821.01 through 
§
 
821.04. 

The propriety of a requirement to restrict, if traversed, 
is reviewable by petition under 37 CFR 1.144. 
In re Hengehold, 440 F.2d 1395, 169 USPQ 473 
(CCPA 1971).

All claims that the examiner holds as not being 
directed to the elected subject matter are withdrawn 
from further consideration by the examiner in accordance 
with 37 CFR 1.142(b). See MPEP  § 821.01through §
 
821.04. The examiner should clearly set 
forth in the Office action the reasons why the claims 
withdrawn from consideration are not readable on the 
elected invention. Applicant may traverse the requirement 
pursuant to 37 CFR 1.143. If a final requirement 
for restriction is made by the examiner, applicant may 
file a petition under 37 
CFR 1.144 for review of the 
restriction requirement.

821.01After Election With Traverse[R-3]

Where the initial requirement is traversed, it should 
be reconsidered. If, upon reconsideration, the examiner 
is still of the opinion that restriction is proper, it 
should be repeated and made final in the next Office 
action. (See MPEP § 803.01.) In doing so, the examiner 
should reply to the reasons or arguments 
advanced by applicant in the traverse. Form paragraph 
8.25 should be used to make a restriction requirement 
final.



¶ 8.25 Answer to Arguments With Traverse

Applicant’s election with traverse of [1] in the reply filed on 
[2] is acknowledged. The traversal is on the ground(s) that [3]. 
This is not found persuasive because [4].

The requirement is still deemed proper and is therefore made 
FINAL.

Examiner Note:

1.In bracket 1, insert the invention elected.

2.In bracket 3, insert in summary form, the ground(s) on which 
traversal is based.

3.In bracket 4, insert the reasons why the traversal was not 
found to be persuasive.



If the examiner, upon reconsideration, is of the 
opinion that the requirement for restriction is 
improper in whole or in part, he or she should 
clearly state in the next Office action that the 




 

requirement for restriction is withdrawn in whole 
or in part, specify which groups have been rejoined, 
and give an action on the merits of all the claims 
directed to the elected invention and any invention 
rejoined with the elected invention.

If the requirement is repeated and made final, in 
that and in each subsequent action, the claims to the 
nonelected invention should be treated by using form 
paragraph 8.05.



¶ 8.05 Claims Stand Withdrawn With Traverse

Claim [1] withdrawn from further consideration pursuant to 37 
CFR 1.142(b), as being drawn to a nonelected [2], there being no 
allowable generic or linking claim. Applicant timely traversed the 
restriction (election) requirement in the reply filed on [3].

Examiner Note:

In bracket 2, insert --invention-- or --species--.



This will show that applicant has retained the right 
to petition from the requirement under 37 CFR 1.144. 
(See MPEP § 818.03(c).)

When the application is otherwise in condition 
for allowance, and has not received a final 
action, the examiner should notify applicant of his 
or her options using form paragraph 8.03. 



¶ 8.03 In Condition for Allowance, Non-elected Claims 
Withdrawn with Traverse

This application is in condition for allowance except for the 
presence of claim [1] directed to an invention non-elected with 
traverse in the reply filed on [2]. Applicant is given ONE 
MONTH or THIRTY DAYS from the date of this letter, whichever 
is longer, to cancel the noted claims or take other appropriate 
action (37 CFR 1.144). Failure to take action during this period 
will be treated as authorization to cancel the noted claims by 
Examiner’s Amendment and pass the case to issue. Extensions of 
time under 37 CFR 1.136(a) will not be permitted since this application 
will be passed to issue.

The prosecution of this case is closed except for consideration 
of the above matter.

See also MPEP § 821.04 - § 821.04(b) for rejoinder 
of certain nonelected inventions when the claims to 
the elected invention are allowable.

When preparing a final action in an application 
where there has been a traversal of a requirement for 
restriction, the examiner should indicate in the Office 
action that a complete reply must include cancellation 
of the claims drawn to the nonelected invention, or 
other appropriate action (37 CFR 1.144). See form 
paragraph 8.24.



¶ 8.24 Reply to Final Must Include Cancellation of Claims 
Non-elected with Traverse

This application contains claim [1] drawn to an invention nonelected 
with traverse in the reply filed on [2]. A complete reply to 
the final rejection must include cancellation of nonelected claims 
or other appropriate action (37 CFR 1.144). See MPEP § 821.01.

Examiner Note:

For use in FINAL rejections of applications containing claims 
drawn to an invention non-elected with traverse.



Where a reply to a final action has otherwise placed 
the application in condition for allowance, the failure 
to cancel claims drawn to the nonelected invention(
s) not eligible for rejoinder or to take appropriate 
action will be construed as authorization to cancel 
these claims by examiner’s amendment and pass the 
application to issue after the expiration of the period 
for reply.

Note that the petition under 37 CFR 1.144 must be 
filed not later than appeal. This is construed to mean 
appeal to the Board of Patent Appeals and Interferences. 
If the application is ready for allowance after 
appeal and no petition has been filed, the examiner 
should simply cancel  nonelected claims that are 
not eligible for rejoinder by examiner’s amendment, 
calling attention to the provisions of 37 CFR 1.144.

821.02After Election Without Traverse[R-3]

Where the initial requirement is not traversed, if 
adhered to, appropriate action should be given on the 
elected claims. Form paragraphs 8.25.01 or 8.25.02should be used by the examiner to acknowledge the 
election without traverse. 



¶ 8.25.01 Election Without Traverse

Applicant’s election without traverse of [1] in the reply filed on 
[2] is acknowledged.

¶ 8.25.02 Election Without Traverse Based on Incomplete 
Reply

Applicant’s election of [1] in the reply filed on [2] is 
acknowledged. Because applicant did not distinctly and specifically 
point out the supposed errors in the restriction requirement, 




 

the election has been treated as an election without traverse 
(MPEP § 818.03(a)).



Claims to the nonelected invention should be 
treated by using form paragraph 8.06.



¶ 8.06 Claims Stand Withdrawn Without Traverse

Claim [1] withdrawn from further consideration pursuant to 
37 CFR 1.142(b) as being drawn to a nonelected [2], there being 
no allowable generic or linking claim. Election was made without 
traverse in the reply filed on [3].

Examiner Note:

In bracket 2, insert --invention--, or --species--.



This will show that applicant has not retained the 
right to petition from the requirement under 37 CFR 
1.144.

Under these circumstances, when the application is 
otherwise ready for allowance, the claims to the 
nonelected invention, except for claims directed 
to nonelected species and nonelected inventions 
eligible for rejoinder, may be canceled by an examiner’s 
amendment, and the application passed to issue.

See MPEP § 821.01 and § 821.04 et seq.

¶ 8.07 Ready for Allowance, Non-elected Claims 
Withdrawn Without Traverse

This application is in condition for allowance except for the 
presence of claim [1] directed to [2] nonelected without traverse. 
Accordingly, claim [3] been canceled.

Examiner Note:

In bracket 2, insert --an invention--, --inventions--, --a species-
-, or --species--.



821.03Claims for Different Invention 
Added After an Office Action[R-3]

Claims added by amendment following action by 
the examiner, MPEP § 818.01, § 818.02(a), to an 
invention other than previously claimed, should be 
treated as indicated by 37 CFR 1.145.

37 CFR 1.145. Subsequent presentation of claims for 
different invention.

If, after an office action on an application, the applicant presents 
claims directed to an invention distinct from and independent 
of the invention previously claimed, the applicant will be 
required to restrict the claims to the invention previously claimed 
if the amendment is entered, subject to reconsideration and review 
as provided in §§ 1.143 and 1.144

The action should include form paragraph 8.04.

¶ 8.04 Election by Original Presentation

Newly submitted claim [1] directed to an invention that is 
independent or distinct from the invention originally claimed for 
the following reasons: [2]

Since applicant has received an action on the merits for the 
originally presented invention, this invention has been constructively 
elected by original presentation for prosecution on the merits. 
Accordingly, claim [3] withdrawn from consideration as 
being directed to a non-elected invention. See 37 CFR 1.142(b)
and MPEP § 821.03.

A complete action on all claims to the elected 
invention should be given.



An amendment canceling all claims drawn to the 
elected invention and presenting only claims drawn to 
the nonelected invention should not be entered. Such 
an amendment is nonresponsive. Applicant should be 
notified by using form paragraph 8.26.

¶ 8.26 Canceled Elected Claims, Non-Responsive

The amendment filed on [1] canceling all claims drawn to the 
elected invention and presenting only claims drawn to a non-
elected invention is non-responsive (MPEP § 821.03). The 
remaining claims are not readable on the elected invention 
because [2].

Since the above-mentioned amendment appears to be a bona 
fide attempt to reply, applicant is given a TIME PERIOD of ONE 
(1) MONTH or THIRTY (30) DAYS, whichever is longer, from 
the mailing date of this notice within which to supply the omission 
or correction in order to avoid abandonment. EXTENSIONS OF 
THIS TIME PERIOD UNDER 37 CFR 1.136(a) ARE AVAILABLE.


The practice set forth in this section is not applicable 
where a provisional election of a single species 
was made in accordance with MPEP § 803.02 and 
applicant amends the claims such that the elected species 
is cancelled, or where applicant presents claims 
that could not have been restricted from the claims 
drawn to other elected invention had they been presented 
earlier.

821.04Rejoinder [R-3]

The propriety of a restriction requirement 
should be reconsidered when all the claims directed to 
the elected invention are in condition for allowance, 
and the nonelected invention(s) should be considered 
for rejoinder. Rejoinder involves withdrawal of a 




 

restriction requirement between an allowable elected 
invention and a nonelected invention and examination 
of the formerly nonelected invention on the merits.

In order to be eligible for rejoinder, a claim to a 
nonelected invention must depend from or otherwise 
require all the limitations of an allowable claim. A 
withdrawn claim that does not require all the limitations 
of an allowable claim will not be rejoined. Furthermore, 
where restriction was required between a 
product and a process of making and/or using the 
product, and the product invention was elected and 
subsequently found allowable, all claims to a nonelected 
process invention must depend from or otherwise 
require all the limitations of an allowable claim 
for the claims directed to that process invention to be 
eligible for rejoinder. See MPEP § 821.04(b). In order 
to retain the right to rejoinder, applicant is advised 
that the claims to the nonelected invention(s) should 
be amended during prosecution to require the limitations 
of the elected invention. Failure to do so may 
result in a loss of the right to rejoinder.

Rejoined claims must be fully examined for patentability 
in accordance with 37 CFR 1.104. Thus, to be 
allowable, the rejoined claims must meet all criteria 
for patentability including the requirements of 
35 
U.S.C. 101, 102, 103 and 112.

The requirement for restriction between the 
rejoined inventions must be withdrawn. Any claim(s) 
presented in a continuation or divisional application 
that are anticipated by, or rendered obvious over, the 
claims of the parent application may be subject to 
a 
double patenting rejection when the restriction 
requirement is withdrawn in the parent application. In 
re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-
32 (CCPA 1971). See also MPEP § 804.01.

The provisions of MPEP § 706.07 govern the propriety 
of making an Office action final in rejoinder situations. 
If rejoinder occurs after the first Office action 
on the merits, and if any of the rejoined claims are 
unpatentable, e.g., if a rejection under 35 U.S.C. 112, 
first paragraph is made, then the next Office action 
may be made final where the new ground of rejection 
was necessitated by applicant’s amendment (or based 
on information submitted in an IDS filed during the 
time period set forth in 37 CFR 1.97(c) with the fee 
set forth in 37 CFR 1.17(p)). See MPEP § 706.07(a).

If restriction is required between product and process 
claims, for example, and all the product claims 
would be allowable in the first Office action on the 
merits, upon rejoinder of the process claims, it would 
not be proper to make the first Office action on the 
merits final if the rejoined process claim did not comply 
with the requirements of 35 U.S.C. 112, first paragraph. 
This is because the rejoinder did not occur 
after the first Office action on the merits. Note that the 
provisions of MPEP § 706.07(b) govern the propriety 
of making a first Office action on the merits final.

Amendments submitted after final rejection are 
governed by 37 CFR 1.116

Where applicant voluntarily presents claims to the 
product and process, for example, in separate applications 
(i.e., no restriction requirement was made by the 
Office), and one of the applications issues as a patent, 
the remaining application may be rejected under the 
doctrine of obviousness-type double patenting, where 
appropriate (see MPEP § 804 - § 804.03), and applicant 
may overcome the rejection by the filing of a terminal 
disclaimer under 37 CFR 1.321(c) where 
appropriate. Similarly, if copending applications separately 
present product and process claims, provisionalobviousness-type double patenting rejections should 
be made where appropriate. However, once a determination 
as to the patentability of the product has been 
reached any process claim directed to making or using 
an allowable product should not be rejected over prior 
art without consultation with a Technology Center 
Director.

See MPEP § 706.02(n) for the applicability of 
35 
U.S.C. 103(b) to biotechnological processes and 
compositions of matter.

See MPEP § 2116.01 for guidance on the treatment 
of process claims which make or use a novel, nonobvious 
product.

821.04(a)Rejoinder Between Product Inventions; 
Rejoinder Between 
Process Inventions [R-5]

Where restriction was required between independent 
or distinct products, or between independent or 
distinct processes, and all claims directed to an 
elected invention are allowable, any restriction 
requirement between the elected invention and any 
nonelected invention that depends from or otherwise 
requires all the limitations of an allowable claim 
should be withdrawn. For example, a requirement for 




 

restriction should be withdrawn when a generic claim, 
linking claim, or subcombination claim is allowable 
and any previously withdrawn claim depends from or 
otherwise requires all the limitations thereof. Claims 
that require all the limitations of an allowable claim 
will be rejoined and fully examined for patentability 
in accordance with 37 
CFR 1.104. Claims that do not 
require all the limitations of an allowable claim 
remain withdrawn from consideration. However, in 
view of the withdrawal of the restriction requirement, 
if any claim presented in a continuing application 
includes all the limitations of a claim that is allowable 
in the parent application, such claim may be subject to 
a double patenting rejection over the claims of the 
parent application. Once a restriction requirement is 
withdrawn, the provisions of 35 U.S.C. 121 are no 
longer applicable. See In re Ziegler, 443 F.2d 1211, 
1215, 170 USPQ 129, 131-32 (CCPA 1971). See also 
MPEP § 804.01.

An amendment presenting additional claims that 
depend from or otherwise require all the limitations of 
an allowable claim will be entered as a matter of right 
if the amendment is presented prior to final rejection 
or allowance, whichever is earlier. Amendments submitted 
after final rejection are governed by 37 CFR 
1.116; amendments submitted after allowance are 
governed by 37 CFR 1.312.

When all claims to the nonelected invention(s) 
depend from or otherwise require all the limitations of 
an allowable claim, applicant must be advised that 
claims drawn to the nonelected invention have been 
rejoined and the restriction requirement has been 
withdrawn. Form paragraph 8.45 may be used.



¶ 8.45 Elected Invention Allowable, Rejoinder of All 
Previously Withdrawn Claims

Claim [1] allowable. Claim [2], previously withdrawn from 
consideration as a result of a restriction requirement, [3] all the 
limitations of an allowable claim. Pursuant to the procedures set 
forth in MPEP § 821.04(a), the restriction requirement [4] 
inventions [5], as set forth in the Office action mailed on [6], is 
hereby withdrawn and claim [7] hereby rejoined and fully 
examined for patentability under 37 CFR 1.104. In view of the 
withdrawal of the restriction requirement, applicant(s) are advised 
that if any claim presented in a continuation or divisional application 
is anticipated by, or includes all the limitations of, a claim that 
is allowable in the present application, such claim may be subject 
to provisional statutory and/or nonstatutory double patenting 
rejections over the claims of the instant application.

Once the restriction requirement is withdrawn, the provisions 
of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 
F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also 
MPEP § 804.01.

Examiner Note:

1.Where the elected invention is directed to a product and previously 
nonelected process claims are rejoined, form paragraph 
8.43 should be used instead of this paragraph.

2.This form paragraph should be used whenever ALL previously 
withdrawn claims depend from or otherwise require all the 
limitations of an allowable claim (e.g., a generic claim, linking 
claim, or subcombination claim) and wherein the non-elected 
claims have NOT been canceled. Use form paragraph 8.46, 8.47, 
or 8.47.01 as appropriate where the nonelected claims HAVE 
BEEN canceled. Use form paragraph 8.49 or 8.50 as appropriate 
when the elected invention is allowable and the restriction 
requirement is withdrawn at least in part.

3.In bracket 2, insert the number(s) of the rejoined claim(s) followed 
by either -- is-- or -- are--.

4. In bracket 3 insert-- requires-- or -- require--.

5.In bracket 4, insert either --between-- or --among--.

6.In bracket 5, insert the group(s), species, or subject matter of 
the invention(s) being rejoined.

7.In bracket 7, insert the number(s) of the rejoined claim(s) followed 
by either --is-- or --are--.



When no claims directed to the nonelected invention(
s) depend from or otherwise require all the limitations 
of an allowable claim, form paragraph 8.49 
should be used to explain why all nonelected claims 
are withdrawn from further consideration.



¶ 8.49 Elected Invention Allowable, Claims Stand 
Withdrawn as Not In Required Form

Claim [1] allowable. The restriction requirement [2] , as set 
forth in the Office action mailed on [3] , has been reconsidered in 
view of the allowability of claims to the elected invention pursuant 
to MPEP § 821.04(a). The restriction requirement is hereby 
withdrawn as to any claim that requires all the limitations of 
an allowable claim. Claim [4] , directed to [5] withdrawn from 
further consideration because [6] require all the limitations of an 
allowable generic linking claim as required by 37 CFR 1.141.

In view of the above noted withdrawal of the restriction 
requirement, applicant is advised that if any claim presented in a 
continuation or divisional application is anticipated by, or includes 
all the limitations of, a claim that is allowable in the present application, 
such claim may be subject to provisional statutory and/or 
nonstatutory double patenting rejections over the claims of the 
instant application.

Once a restriction requirement is withdrawn, the provisions of 
35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 
F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also 
MPEP § 804.01.




 

Examiner Note:

1. This form paragraph is applicable where a restriction 
requirement was made between related product inventions or 
between related process inventions. See MPEP § 806.05(j) and § 
821.04(a).

2.This form paragraph (or form paragraph 8.50) should be used 
upon the allowance of a linking claim, generic claim, or subcombination 
claim when none of the nonelected claims require all the 
limitations of an allowable claim.

3.In bracket 2, insert -- between-- or --among-- followed by 
identification of the inventions (i.e., groups or species) restricted.

4.In bracket 5, insert the subject matter of the claimed invention 
or species not being rejoined followed by -- remains-- or --
remain--.

5.In bracket 6, insert --it does not-- or --they do not all--.



Note that each additional invention is considered 
separately. When claims to one nonelected invention 
depend from or otherwise require all the limitations 
of an allowable claim, and claims to another 
nonelected invention do not, applicant must be 
advised as to which claims have been rejoined and 
which claims remain withdrawn from further consideration. 
Form paragraph 8.50 may be used.



¶ 8.50 Elected Invention Allowable, Some Claims No 
Longer Considered Withdrawn

Claim [1] allowable. The restriction requirement [2] , as set 
forth in the Office action mailed on [3] , has been reconsidered in 
view of the allowability of claims to the elected invention pursuant 
to MPEP § 821.04(a). The restriction requirement is hereby 
withdrawn as to any claim that requires all the limitations of 
an allowable claim. Claim [4] , directed to [5] no longer withdrawn 
from consideration because the claim(s) requires all the 
limitations of an allowable claim. However, claim [6] , directed to 
[7] withdrawn from consideration because [8] require all the limitations 
of an allowable claim.

In view of the above noted withdrawal of the restriction 
requirement, applicant is advised that if any claim presented in a 
continuation or divisional application is anticipated by, or includes 
all the limitations of, a claim that is allowable in the present application, 
such claim may be subject to provisional statutory and/or 
nonstatutory double patenting rejections over the claims of the 
instant application.

Once a restriction requirement is withdrawn, the provisions of 
35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 
F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also 
MPEP § 804.01.

Examiner Note:

1. This form paragraph is applicable where a restriction 
requirement was made between related product inventions or 
between related process inventions. See MPEP § 806.05(j) and § 
821.04(a).

2.This form paragraph should be used upon the allowance of a 
linking claim, generic claim, or subcombination claim when, 
some, but not all, of the nonelected claims require all the limitations 
of an allowable claim.

3.In bracket 2, insert -- between-- or --among-- followed by 
identification of the inventions (i.e., groups or species) restricted.

4.In bracket 5, insert the subject matter of the claimed invention 
or species being rejoined followed by either -- is-- or -- are--.

5. In bracket 7, insert the subject matter of the claimed invention 
or species not being rejoined followed by -- remains-- or --
remain--.

6.In bracket 8, insert --it does not-- or --they do not all--.

7.If all of the claims are in proper form, i.e., they include all the 
limitations of an allowable claim, one of form paragraphs 8.45, 
8.46 or 8.47 must be used. 



Where the application claims an allowable invention 
and discloses but does not claim an additional 
invention that depends on or otherwise requires all the 
limitations of the allowable claim, applicant may add 
claims directed to such additional invention by way of 
amendment pursuant to 37 CFR 1.121. Amendments 
submitted after allowance are governed by 37 CFR 
1.312; amendments submitted after final rejection are 
governed by 37 CFR 1.116.

Form paragraph 8.46 (or form paragraph 8.47 or 
8.47.01 if appropriate) must be used to notify applicant 
when nonelected claim(s) which depended from 
or required all the limitations of an allowable claim 
were canceled by applicant and may be reinstated by 
submitting the claim(s) in an amendment.



¶ 8.46 Elected Invention Allowable, Non-elected Claims 
Canceled, Other Issues Remain Outstanding

Claim [1] allowable. The restriction requirement [2] inventions 
[3], as set forth in the Office action mailed on [4], has been reconsidered 
in view of the allowability of claims to the elected invention 
pursuant to MPEP § 821.04(a). The restriction requirement 
is hereby withdrawn as to any claim that requires all the limitations 
of an allowable claim. Claim [5] , which required all the 
limitations of an allowable claim, previously withdrawn from consideration 
as a result of the restriction requirement, [6] canceled 
by applicant in the reply filed on [7] . The canceled, nonelected 
claim(s) may be reinstated by applicant if submitted in a timely 
filed amendment in reply to this action. Upon entry of the amendment, 
such amended claim(s) will be examined for patentability 
under 37 CFR 1.104.

In view of the withdrawal of the restriction requirement as set 
forth above, applicant(s) are advised that if any claim presented in 
a continuation or divisional application is anticipated by, or 
includes all the limitations of, a claim that is allowable in the 
present application, such claim may be subject to provisional stat





 

utory and/or nonstatutory double patenting rejections over the 
claims of the instant application.

Once the restriction requirement is withdrawn, the provisions 
of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 
F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also 
MPEP § 804.01.

Examiner Note:

1.This form paragraph is applicable where a restriction requirement 
was made between related product inventions or between 
related process inventions. See MPEP § 806.05(j) and § 
821.04(a).

2.This form paragraph (or form paragraph 8.47 or 8.47.01) 
must be used upon the allowance of a linking claim, generic 
claim, or subcombination claim following a restriction requirement 
with at least one of these claim types present and wherein 
the non-elected claims requiring all the limitations of an allowable 
claim HAVE BEEN canceled. Use form paragraph 8.45 where the 
nonelected claims have NOT been canceled and all previously 
withdrawn claims are rejoined. Use form paragraph 8.49 or 8.50 
as appropriate when the elected invention is allowable and the 
restriction requirement is withdrawn at least in part.

3.If no issues remain outstanding and application is otherwise 
ready for allowance, use form paragraph 8.47 or 8.47.01 instead 
of this form paragraph.

4. In bracket 2, insert either --between-- or --among--.

5. In bracket 3, insert the group(s), species, or subject matter of 
the invention(s) that were restricted.

6. In bracket 5, insert the number of each claim that required 
all the limitations of an allowable claim but was canceled as a 
result of the restriction requirement.

7. In bracket 6, insert either --was-- or --were--.

¶ 8.47 Elected Invention Allowable, Non-elected Claims 
Canceled, Before Final Rejection, No Outstanding Issues 
Remaining

Claim [1] allowable. The restriction requirement [2] inventions 
[3], as set forth in the Office action mailed on [4], has been reconsidered 
in view of the allowability of claims to the elected invention 
pursuant to MPEP § 821.04(a). The restriction requirement 
is hereby withdrawn as to any claim that requires all the limitations 
of an allowable claim. Claim [5] , which required all the 
limitations of an allowable claim, previously withdrawn from consideration 
as a result of the restriction requirement, [6] canceled 
by applicant in the reply filed on [7] . The canceled, nonelected 
claim(s) may be reinstated by applicant if submitted in an amendment, 
limited to the addition of such claim(s), filed within a time 
period of ONE MONTH, or THIRTY DAYS, whichever is longer, 
from the mailing date of this letter. Upon entry of the amendment, 
such amended claim(s) will be examined for patentability under 
37 CFR 1.104. If NO such amendment is submitted within the set 
time period, the application will be passed to issue. PROSECUTION 
ON THE MERITS IS OTHERWISE CLOSED.

In view of the withdrawal of the restriction requirement as to 
the linked inventions, applicant(s) are advised that if any claim 
presented in a continuation or divisional application is anticipated 
by, or includes all the limitations of, a claim that is allowable in 
the present application, such claim may be subject to provisional 
statutory and/or nonstatutory double patenting rejections over the 
claims of the instant application.

Once the restriction requirement is withdrawn, the provisions 
of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 
F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also 
MPEP § 804.01.

Examiner Note:

1.This form paragraph is applicable where a restriction requirement 
was made between related product inventions or between 
related process inventions and the application has not been finally 
rejected. See MPEP § 806.05(j) and § 821.04(a). After final rejection, 
use form paragraph 8.47.01 instead of this form paragraph.

2.This form paragraph (or form paragraph 8.46 or 8.47.01) 
must be used upon the allowance of a linking claim, generic 
claim, or subcombination claim following a restriction requirement 
with at least one of these claim types present and wherein 
the non-elected claims requiring all the limitations of an allowable 
claim HAVE BEEN canceled. Use form paragraph 8.45 where the 
nonelected claims have NOT been canceled and all previously 
withdrawn claims are rejoined. Use form paragraph 8.49 or 8.50as appropriate when the elected invention is allowable and the 
restriction requirement is withdrawn at least in part. 

3.This form paragraph should be used only when there are no 
outstanding issues remaining and is to be used with only a PTO-
90C cover sheet.

4.In bracket 2, insert either --between-- or --among--.

5.In bracket 3, insert the group(s), species, or subject matter of 
the invention(s) that were restricted.

6.In bracket 5, insert the number of each claim that required all 
the limitations of an allowable claim but was canceled as a result 
of the restriction requirement.

7.In bracket 6, insert either --was-- or --were--.

¶ 8.47.01 Elected Invention Allowable, Non-elected 
Claims Canceled, After Final Rejection, No Outstanding 
Issues Remaining

Claim [1] allowable. The restriction requirement [2] inventions 
[3], as set forth in the Office action mailed on [4], has been reconsidered 
in view of the allowability of claims to the elected invention 
pursuant to MPEP § 821.04(a). The restriction requirement 
is hereby withdrawn as to any claim that requires all the limitations 
of an allowable claim. In view of the withdrawal of the 
restriction requirement as set forth above, applicant(s) are advised 
that if any claim presented in a continuation or divisional application 
is anticipated by, or includes all the limitations of, a claim that 
is allowable in the present application, such claim may be subject 
to provisional statutory and/or nonstatutory double patenting 
rejections over the claims of the instant application.

Once the restriction requirement is withdrawn, the provisions 
of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 
F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also 
MPEP § 804.01.

Examiner Note:

1.This form paragraph is applicable where a restriction requirement 
was made between related product inventions or between 
related process inventions and the application has been finally 




 

rejected. See MPEP § 806.05(j) and § 821.04(a). Before final 
rejection, use form paragraph 8.47 instead of this form paragraph.

2.This form paragraph (or form paragraph 8.46) must be used 
upon the allowance of a linking claim, generic claim, or subcombination 
claim following a restriction requirement with at least 
one of these claim types present and wherein the non-elected 
claims requiring all the limitations of an allowable claim HAVE 
BEEN canceled. Use form paragraph 8.45 where the nonelected 
claims have NOT been canceled and all previously withdrawn 
claims are rejoined. Use form paragraph 8.49 or 8.50 as appropriate 
when the elected invention is allowable and the restriction 
requirement is withdrawn at least in part. 

3.This form paragraph should be used only when there are no 
outstanding issues remaining and is to be used with only a PTO-
90C cover sheet.

4.In bracket 2, insert either --between-- or --among--.

5.In bracket 3, insert the group(s), species, or subject matter of 
the invention(s) that were restricted.



If the election is traversed, an additional paragraph 
worded as form paragraph 8.03 should be added to the 
holding. 

¶ 8.03 In Condition for Allowance, Non-elected Claims 
Withdrawn with Traverse

This application is in condition for allowance except for the 
presence of claim [1] directed to an invention non-elected with 
traverse in the reply filed on [2]. Applicant is given ONE 
MONTH or THIRTY DAYS from the date of this letter, whichever 
is longer, to cancel the noted claims or take other appropriate 
action (37 CFR 1.144). Failure to take action during this period 
will be treated as authorization to cancel the noted claims by 
Examiner’s Amendment and pass the case to issue. Extensions of 
time under 37 CFR 1.136(a) will not be permitted since this application 
will be passed to issue.

The prosecution of this case is closed except for consideration 
of the above matter.

821.04(b)Rejoinder of Process Requiring 
an Allowable Product [R-5]

Where claims directed to a product and to a process 
of making and/or using the product are presented in 
the same application, applicant may be called upon 
under 35 U.S.C. 121 to elect claims to either the product 
or a process. See MPEP § 806.05(f) and 
§
 
806.05(h). The claims to the nonelected invention 
will be withdrawn from further consideration under 
37 CFR 1.142. See MPEP §
 
821 through § 821.03. 
However, if applicant elects a claim(s) directed to a 
product which is subsequently found allowable, withdrawn 
process claims which depend from or otherwise 
require all the limitations of an allowable 
product claim will be considered for rejoinder. All 
claims directed to a nonelected process invention 
must depend from or otherwise require all the limitations 
of an allowable product claim for that process 
invention to be rejoined. Upon rejoinder of claims 
directed to a previously nonelected process invention, 
the restriction requirement between the elected product 
and rejoined process(es) will be withdrawn.

If applicant cancels all the claims directed to a nonelected 
process invention before rejoinder occurs, the 
examiner should not withdraw the restriction requirement. 
This will preserve applicant’s rights under 
35 
U.S.C. 121.

Where the application as originally filed discloses 
the product and the process for making and/or using 
the product, and only claims directed to the product 
are presented for examination, applicant may present 
claims directed to the process of making and/or using 
the allowable product by way of amendment pursuant 
to 37 CFR 1.121. In view of the rejoinder procedure, 
and in order to expedite prosecution, applicants are 
encouraged to present such process claims, preferably 
as dependent claims, in the application at an early 
stage of prosecution. Process claims which depend 
from or otherwise require all the limitations of the 
patentable product will be entered as a matter of right 
if the amendment is presented prior to final rejection 
or allowance, whichever is earlier. However, if applicant 
files an amendment adding claims to a process 
invention, and the amendment includes process 
claims which do not depend from or otherwise require 
all the limitations of an allowable product, all claims 
directed to that newly added invention may be withdrawn 
from consideration, via an election by original 
presentation (see MPEP § 821.03).

Amendments submitted after allowance are governed 
by 37 CFR 1.312. Amendments to add only 
process claims which depend from or otherwise 
require all the limitations of an allowed product claim 
and which meet the requirements of 35 U.S.C. 101, 
102, 103, and 112 may be entered.

Amendments submitted after final rejection are 
governed by 37 CFR 1.116. When all claims to the 
elected product are in condition for allowance, all process 
claims eligible for rejoinder (see MPEP 
§
 
821.04) must be considered for patentability.

If an amendment after final rejection that otherwise 
complies with the requirements of 37 CFR 1.116




 

would place all the elected product claim(s) in condition 
for allowance and thereby require rejoinder of 
process claims that raise new issues requiring further 
consideration (e.g., issues under 35 U.S.C. 101 or 112, 
first paragraph), the amendment could be denied 
entry. For example, if pending nonelected process 
claims depend from a finally rejected product claim, 
and the amendment (or affidavit or other evidence that 
could have been submitted earlier) submitted after 
final rejection, if entered, would put the product 
claim(s) in condition for allowance, entry of the 
amendment (or evidence submission) would not be 
required if it would raise new issues that would 
require further consideration, such as issues under 
35 
U.S.C. 101 or 112, first paragraph necessitated by 
rejoinder of previously nonelected process claims.

Before mailing an advisory action in the above situation, 
it is recommended that applicant be called and 
given the opportunity to cancel the process claims to 
place the application in condition for allowance with 
the allowable product claims, or to file an RCE to 
continue prosecution of the process claims in the 
same application as the product claims.

In after final situations when no amendment or evidence 
is submitted, but applicant submits arguments 
that persuade the examiner that all the product claims 
are allowable, in effect the final rejection of the product 
claims is not sustainable, and any rejection of the 
rejoined process claims must be done in a new Office 
action. If the process claims would be rejected, applicant 
may be called before mailing a new Office action 
and given the opportunity to cancel the process claims 
and to place the application in condition for allowance 
with the allowable product claims. If a new Office 
action is prepared indicating the allowability of the 
product claim and including a new rejection of the 
process claims, the provisions of MPEP § 706.07 govern 
the propriety of making the Office action final.

Form paragraph 8.21.04 should be included in any 
requirement for restriction between a product and a 
process of making or process of using the product. 
See MPEP § 806.05(f) and § 806.05(h).

Form paragraph 8.42 or 8.43 should be used to 
notify applicant of the rejoinder of process inventions 
which depend from or otherwise require all the limitations 
of an allowable product claim.



¶ 8.42 Allowable Product, Rejoinder of at Least One 
Process Claim, Less Than All Claims

Claim [1] directed to an allowable product. Pursuant to the procedures 
set forth in MPEP § 821.04(b), claim [2], directed to the 
process of making or using the allowable product, previously 
withdrawn from consideration as a result of a restriction requirement, 
[3] hereby rejoined and fully examined for patentability 
under 37 CFR 1.104. Claim [4], directed to the invention(s) of [5]
require all the limitations of an allowable product claim, and [6]
NOT been rejoined.

Because a claimed invention previously withdrawn from consideration 
under 37 CFR 1.142 has been rejoined, the restriction 
requirement [7] groups [8] as set forth in the Office action 
mailed on [9] is hereby withdrawn. In view of the withdrawal of 
the restriction requirement as to the rejoined inventions, applicant(
s) are advised that if any claim presented in a continuation or 
divisional application is anticipated by, or includes all the limitations 
of, a claim that is allowable in the present application, such 
claim may be subject to provisional statutory and/or nonstatutory 
double patenting rejections over the claims of the instant application.


Once the restriction requirement is withdrawn, the provisions 
of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 
F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also 
MPEP § 804.01.

Examiner Note:

1.If ALL previously withdrawn process claims are being 
rejoined, then form paragraph 8.43 should be used instead of this 
form paragraph. All claims directed to a nonelected process invention 
must require all the limitations of an allowable product claim 
for that process invention to be rejoined. See MPEP § 821.04(b). 

2.In bracket 1, insert the claim number(s) of the allowable 
product claims followed by either -- is-- or -- are--.

3.In bracket 2, insert the claim number(s) of ALL the rejoined 
process claims.

4.In bracket 3, insert either --is-- or --are--.

5.In bracket 4, insert the number(s) of the claims NOT being 
rejoined followed by either -- is-- or -- are--.

6.In bracket 5, insert the group(s) or subject matter of the 
invention(s) to which the claims NOT being rejoined are directed, 
followed by either --, do not all-- or --, does not--.

7.In bracket 6, insert --has-- or --have--.

8.In bracket 7, insert either -- among -- or -- between--.

9.In bracket 8, insert group numbers of the elected product and 
rejoined process.

¶ 8.43 Allowable Product, Rejoinder of All Previously 
Withdrawn Process Claims

Claim [1] directed to an allowable product. Pursuant to the procedures 
set forth in MPEP § 821.04(b), claim [2] , directed to the 
process of making or using an allowable product, previously withdrawn 
from consideration as a result of a restriction requirement, 
[3] hereby rejoined and fully examined for patentability under 37 
CFR 1.104.

Because all claims previously withdrawn from consideration 
under 37 CFR 1.142 have been rejoined, the restriction requirement 
as set forth in the Office action mailed on [4] is hereby 




 

withdrawn. In view of the withdrawal of the restriction requirement 
as to the rejoined inventions, applicant(s) are advised that if 
any claim presented in a continuation or divisional application is 
anticipated by, or includes all the limitations of, a claim that is 
allowable in the present application, such claim may be subject to 
provisional statutory and/or nonstatutory double patenting rejections 
over the claims of the instant application.

Once the restriction requirement is withdrawn, the provisions 
of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 
F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also 
MPEP § 804.01.

Examiner Note:

1.If LESS THAN ALL previously withdrawn claims are being 
rejoined, then form paragraph 8.42 should be used instead of this 
form paragraph. All claims directed to a nonelected process invention 
must require all the limitations of an allowable product claim 
for that process invention to be rejoined. See MPEP § 821.04(b).

2.In bracket 1, insert the claim number(s) of the allowable 
product claim(s) followed by either -- is-- or -- are--.

3.In bracket 2, insert the claim number(s) of the process 
claim(s) previously withdrawn from consideration. 

4.In bracket 3, insert either --is-- or --are--.

5.If rejoinder occurs after the first Office action on the merits 
and if any of the rejoined claims are unpatentable, e.g., if a rejection 
under 35 U.S.C. 112, first paragraph is made, then the next 
Office action may be made final if proper under MPEP § 
706.07(a). 



822Claims to Inventions That Are Not 
Distinct in Plural Applications of 
Same Inventive Entity [R-3]

The treatment of plural applications of the same 
inventive entity, none of which has become a patent, 
is treated in 37 CFR 1.78(b) as follows:

(b) Where two or more applications filed by the same 
applicant contain conflicting claims, elimination of such 
claims from all but one application may be required in the 
absence of good and sufficient reason for their retention 
during pendency in more than one application. 

See MPEP § 804.03 for conflicting subject matter, 
different inventors, common ownership.

See MPEP § 706.03(k) for rejection of one claim 
on another in the same application.

See MPEP § 706.03(w) and § 706.07(b) for res 
judicata.

See MPEP § 709.01 for one application in interference.


See MPEP § 806.04(h) to § 806.04(i) for species 
and genus in separate applications.

Wherever appropriate, such conflicting applications 
should be joined. This is particularly true 
where the two or more applications are due to, and 
consonant with, a requirement to restrict which the 
examiner now considers to be improper.

Form paragraph 8.29 should be used when the conflicting 
claims are identical or conceded by applicant 
to be not patentably distinct.



¶ 8.29 Conflicting Claims, Copending Applications

Claim [1] of this application conflict with claim [2] of Application 
No. [3]. 37 CFR 1.78(b) provides that when two or more 
applications filed by the same applicant contain conflicting 
claims, elimination of such claims from all but one application 
may be required in the absence of good and sufficient reason for 
their retention during pendency in more than one application. 
Applicant is required to either cancel the conflicting claims from 
all but one application or maintain a clear line of demarcation 
between the applications. See MPEP § 822.

Examiner Note:

This form paragraph is appropriate only when the conflicting 
claims are not patentably distinct.



822.01Copending Before the Examiner 
[R-3]

37 CFR 1.78. Claiming benefit of earlier filing date and 
cross-references to other applications. 



(b)Where two or more applications filed by the same applicant 
contain conflicting claims, elimination of such claims from 
all but one application may be required in the absence of good and 
sufficient reason for their retention during pendency in more than 
one application.





Where claims in one application are unpatent-
able 
over claims of another application of the same 
inventive entity (or different inventive entity with 
common ownership) because they contain conflicting 
claims, a complete examination should be 
made of the claims of each application and all appropriate 
rejections should be entered in each application, 
including rejections based upon prior art. The claims 
of each application may also be rejected on the 
grounds of “provisional” double patenting on the 
claims of the other application whether or not any 
claims avoid the prior art. Where appropriate, the 




 

same prior art may be relied upon in each of the applications. 
See also MPEP § 804.01 and § 822.



The “provisional” double patenting rejection 
should continue to be made by the examiner in each 
application as long as there are conflicting claims in 
more than one application unless that “provisional” 
double patenting rejection is the only rejection 
remaining in one of the applications. See MPEP 
§
 
804, subsection I.B. when the “provisional” double 
patenting rejection is the only rejection remaining in 
at least one application. 

823Unity of Invention Under the 
Patent Cooperation Treaty [R-3]

See Chapter 1800, in particular MPEP § 1850, 
§
 
1875, and § 1893.03(d), for a detailed discussion 
of unity of invention under the Patent Cooperation 
Treaty (PCT).