Editing MPEP 800
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{{Statute|35 U.S.C. 121. Divisional applications.}} | {{Statute|35 U.S.C. 121. Divisional applications.}} | ||
If two or more independent and distinct inventions are claimed | If two or more independent and distinct inventions are claimed | ||
in one application, the Director may require the application to be | in one application, the Director may require the application to be | ||
Line 48: | Line 49: | ||
{{Statute|37 CFR 1.141. Different inventions in one national application.}} | {{Statute|37 CFR 1.141. Different inventions in one national application.}} | ||
(a) Two or more independent and distinct inventions may not | (a) Two or more independent and distinct inventions may not | ||
be claimed in one national application, except that more than one | be claimed in one national application, except that more than one | ||
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{{Statute|35 U.S.C. 121. Divisional Applications.}} | {{Statute|35 U.S.C. 121. Divisional Applications.}} | ||
If two or more independent and distinct inventions are claimed | If two or more independent and distinct inventions are claimed | ||
in one application, the Director may require the application to be | in one application, the Director may require the application to be | ||
Line 1,474: | Line 1,477: | ||
the rule against “double patenting” must be applied. | the rule against “double patenting” must be applied. | ||
397 F.2d at 355, 158 USPQ at 215. | 397 F.2d at 355, 158 USPQ at 215. | ||
The decision in In re Schneller did not establish a | The decision in In re Schneller did not establish a | ||
Line 1,497: | Line 1,500: | ||
A fact situation similar to that in Schneller was presented | A fact situation similar to that in Schneller was presented | ||
to a Federal Circuit panel in In re Kaplan, | to a Federal Circuit panel in In re Kaplan, | ||
789 | 789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986). | ||
F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986). | |||
Kaplan had been issued a patent on a process of making | Kaplan had been issued a patent on a process of making | ||
chemicals in the presence of an organic solvent. | chemicals in the presence of an organic solvent. | ||
Line 1,734: | Line 1,736: | ||
application. | application. | ||
===804.01 Prohibition of Double | ===804.01 Prohibition of Double Patenting Rejections Under 35 U.S.C. 121=== | ||
35 U.S.C. 121 authorizes the Director to restrict | 35 U.S.C. 121 authorizes the Director to restrict | ||
Line 1,759: | Line 1,761: | ||
language and which, if acquiesced in, might result | language and which, if acquiesced in, might result | ||
in the issuance of several patents for the same invention. | in the issuance of several patents for the same invention. | ||
The prohibition against holdings of double patenting | The prohibition against holdings of double patenting | ||
Line 1,887: | Line 1,888: | ||
The use of a 37 CFR 1.131 affidavit in overcoming | The use of a 37 CFR 1.131 affidavit in overcoming | ||
a statutory double patenting rejection is inappropriate. | a statutory double patenting rejection is inappropriate. | ||
II.NONSTATUTORY | II.NONSTATUTORY | ||
Line 1,899: | Line 1,894: | ||
patenting can be avoided by filing a terminal disclaimer | patenting can be avoided by filing a terminal disclaimer | ||
in the application or proceeding in which the | in the application or proceeding in which the | ||
rejection is made. | rejection is made. | ||
The use of a terminal disclaimer in overcoming a nonstatutory | The use of a terminal disclaimer in overcoming a nonstatutory | ||
double patenting rejection is in the public | double patenting rejection is in the public | ||
Line 1,910: | Line 1,902: | ||
and the earlier expiration of patents whereby the | and the earlier expiration of patents whereby the | ||
inventions covered become freely available to the | inventions covered become freely available to the | ||
public | public. | ||
The use of a 37 CFR 1.131 affidavit in overcoming | The use of a 37 CFR 1.131 affidavit in overcoming | ||
Line 1,922: | Line 1,911: | ||
(CCPA 1965). 37 CFR 1.131 is inapplicable if the | (CCPA 1965). 37 CFR 1.131 is inapplicable if the | ||
claims of the application and the patent are “directed | claims of the application and the patent are “directed | ||
to substantially the same invention.” It is also | to substantially the same invention.” It is also inapplicable if there is a lack of “patentable distinctness” | ||
between the claimed subject matter. Knell v. Muller, | between the claimed subject matter. Knell v. Muller, | ||
174 USPQ 460 (Comm’r. Pat. 1971), citing the court | 174 USPQ 460 (Comm’r. Pat. 1971), citing the court | ||
Line 2,182: | Line 2,170: | ||
{{Statute|37 CFR 1.130. Affidavit or declaration to disqualify commonly owned patent or published application as prior art.}} | {{Statute|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 | (a)When any claim of an application or a patent under reexamination | ||
is rejected under 35 | is rejected under 35 | ||
Line 2,206: | Line 2,195: | ||
(b)[Reserved] | (b)[Reserved] | ||
|} | |} | ||
I.DOUBLE PATENTING | I.DOUBLE PATENTING | ||
Line 2,501: | Line 2,491: | ||
appropriate action shall be taken. Note MPEP § 1003. | appropriate action shall be taken. Note MPEP § 1003. | ||
==805 Effect of Improper Joinder in Patent== | ==805 Effect of Improper Joinder in Patent=== | ||
35 U.S.C. 121, last sentence, provides “the validity | 35 U.S.C. 121, last sentence, provides “the validity | ||
Line 2,510: | Line 2,500: | ||
inventions claimed therein. | inventions claimed therein. | ||
806Determination of Distinctness or | |||
Independence of Claimed Inventions | |||
[R-3] | |||
The general principles relating to distinctness or | The general principles relating to distinctness or | ||
Line 2,524: | Line 2,516: | ||
(C)Where inventions are related as disclosed but | (C)Where inventions are related as disclosed but | ||
are not distinct as claimed, restriction is never proper. | are not distinct as claimed, restriction is never proper. | ||
(D)A reasonable number of species may be | (D)A reasonable number of species may be | ||
Line 2,534: | Line 2,528: | ||
inventions as claimed are not distinct. For (B) and (C) | inventions as claimed are not distinct. For (B) and (C) | ||
see MPEP § 806.05 - § 806.05(j) and § 809.03. | see MPEP § 806.05 - § 806.05(j) and § 809.03. | ||
See MPEP § 802.01 for criteria for patentably distinct | See MPEP § 802.01 for criteria for patentably distinct | ||
inventions. | inventions. | ||
806.01Compare Claimed Subject | |||
Matter [R-3] | |||
In passing upon questions of double patenting and | In passing upon questions of double patenting and | ||
Line 2,551: | Line 2,551: | ||
necessary. See MPEP § 803.02 and § 808.01(a). | 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 | Where the claims of an application define the same | ||
Line 2,567: | Line 2,571: | ||
same embodiments, see MPEP § 804 - § 804.02. | same embodiments, see MPEP § 804 - § 804.02. | ||
806.04Genus and/or Species Inventions | |||
[R-3] | |||
Where an application includes claims directed | Where an application includes claims directed | ||
Line 2,578: | Line 2,583: | ||
practice is set forth in 37 CFR 1.146. | 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 | In the first action on an application containing a generic claim | ||
to a generic invention (genus) and claims to more than one patentably | to a generic invention (genus) and claims to more than one patentably | ||
Line 2,589: | Line 2,595: | ||
claims to not more than a reasonable number of species before | claims to not more than a reasonable number of species before | ||
taking further action in the application. | taking further action in the application. | ||
See MPEP § 806.04(d) for the definition of a | See MPEP § 806.04(d) for the definition of a | ||
Line 2,596: | Line 2,601: | ||
806.04(b)Species May Be Independent | |||
or Related Inventions [R-3] | |||
Species may be either independent or | Species may be either independent or | ||
Line 2,603: | Line 2,610: | ||
of design, operation, or effect under the disclosure, | of design, operation, or effect under the disclosure, | ||
the species are independent inventions. See MPEP | the species are independent inventions. See MPEP | ||
§ 802.01 and § 806.06. Where inventions as disclosed | § | ||
802.01 and § 806.06. Where inventions as disclosed | |||
and claimed are both (A) species under a | and claimed are both (A) species under a | ||
claimed genus and (B) related, then the question of | claimed genus and (B) related, then the question of | ||
Line 2,634: | Line 2,643: | ||
including intermediate-final product relationships. | including intermediate-final product relationships. | ||
806.04(d)Definition of a Generic Claim[R-3] | |||
In an application presenting three species illustrated, | In an application presenting three species illustrated, | ||
Line 2,642: | Line 2,658: | ||
conclusive that it is generic. It may define only an element | conclusive that it is generic. It may define only an element | ||
or subcombination common to the several species. | or subcombination common to the several species. | ||
In general, a generic claim should require no | In general, a generic claim should require no | ||
Line 2,647: | Line 2,664: | ||
the species claims, and each of the species claims | the species claims, and each of the species claims | ||
must require all the limitations of the generic claim. | must require all the limitations of the generic claim. | ||
Once a generic claim is allowable, all of the | Once a generic claim is allowable, all of the | ||
Line 2,658: | Line 2,677: | ||
one of the species in addition to the elected species do | one of the species in addition to the elected species do | ||
not require all the limitations of the generic claim, | not require all the limitations of the generic claim, | ||
see MPEP § 821.04(a). | see MPEP § 821.04(a). | ||
806.04(e)Claims Limited to Species [R-5] | |||
Claims are definitions or descriptions of inventions. | Claims are definitions or descriptions of inventions. | ||
Line 2,679: | Line 2,698: | ||
806.04(b)). | 806.04(b)). | ||
806.04(f)Restriction Between Mutually | |||
Exclusive Species | |||
[R-3] | |||
Where two or more species are claimed, a requirement | Where two or more species are claimed, a requirement | ||
Line 2,692: | Line 2,713: | ||
to species, the claims must not overlap in scope. | 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 | In making a requirement for restriction in an application | ||
Line 2,721: | Line 2,745: | ||
MPEP § 804.01 and § 804.02. | 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 | If a generic claim is presented after the | ||
Line 2,730: | Line 2,755: | ||
application have at least once common inventor and/ | application have at least once common inventor and/ | ||
or are either (1) commonly assigned/owned or (2) | 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) | 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 | and (3). See MPEP § 804. Applicant may overcome | ||
such a rejection by filing a terminal disclaimer. See | such a rejection by filing a terminal disclaimer. See | ||
Line 2,738: | Line 2,770: | ||
F.2d 594, 154 USPQ 29 (CCPA 1967). | F.2d 594, 154 USPQ 29 (CCPA 1967). | ||
806.05Related Inventions [R-5] | |||
Where two or more related inventions are claimed, | Where two or more related inventions are claimed, | ||
Line 2,768: | Line 2,800: | ||
invention | invention | ||
806.05(a)Combination and Subcombination | |||
[R-3] | |||
A combination is an organization of which a subcombination | A combination is an organization of which a subcombination | ||
Line 2,835: | Line 2,868: | ||
restriction were not required as evidenced by separate | restriction were not required as evidenced by separate | ||
classification, status, or field of search. | classification, status, or field of search. | ||
This situation can be diagramed as combination | This situation can be diagramed as combination | ||
Line 2,863: | Line 2,901: | ||
Form paragraph 8.15 may be used in combination- | Form paragraph 8.15 may be used in combination- | ||
subcombination restriction requirements. | 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 | The burden is on the examiner to suggest an example | ||
Line 2,896: | Line 2,981: | ||
claims of the format ABsp, must be considered for | claims of the format ABsp, must be considered for | ||
rejoinder. See MPEP § 821.04. | rejoinder. See MPEP § 821.04. | ||
III.PLURAL COMBINATIONS REQUIRING A | III.PLURAL COMBINATIONS REQUIRING A | ||
Line 2,913: | Line 3,003: | ||
Restriction between plural combinations may be | Restriction between plural combinations may be | ||
made using form paragraph 8.14.01. See MPEP | made using form paragraph 8.14.01. See MPEP | ||
§ 806.05(j). | § | ||
806.05(j). | |||
806.05(d)Subcombinations Usable Together | |||
[R-5] | |||
Two or more claimed subcombinations, disclosed | Two or more claimed subcombinations, disclosed | ||
Line 2,972: | Line 3,065: | ||
claim will be rejoined in accordance with MPEP § | claim will be rejoined in accordance with MPEP § | ||
821.04. | 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 | The examiner must show, by way of example, that | ||
Line 2,994: | Line 3,134: | ||
alternative use or withdraw the requirement. | 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 | Process and apparatus for its practice can be shown | ||
Line 3,002: | Line 3,143: | ||
process. | process. | ||
Form paragraph 8.17 may be used to make restriction | |||
requirements between process and apparatus. | |||
If applicant proves or provides convincing argument | ¶ 8.17 Process and Apparatus | ||
that there is no material difference or that a process | |||
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 | cannot be performed by hand (if examiner so | ||
argued), the burden is on the examiner to document | argued), the burden is on the examiner to document | ||
Line 3,012: | Line 3,191: | ||
withdraw the requirement. | withdraw the requirement. | ||
806.05(f)Process of Making and ProductMade [R-5] | |||
A process of making and a product made by the | A process of making and a product made by the | ||
Line 3,041: | Line 3,220: | ||
requirement. | 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 | An apparatus and a product made by the apparatus | ||
Line 3,052: | Line 3,317: | ||
materially different apparatus. | materially different apparatus. | ||
The examiner must show by way of example either | 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 | (A) that the apparatus as claimed is not an obvious | ||
apparatus for making the product and the apparatus as | apparatus for making the product and the apparatus as | ||
claimed can be used to make another materially | claimed can be used to make another materially | ||
different product or (B) that the product as claimedcan be made by another materially different apparatus. | 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, | The burden is on the examiner to provide an example, | ||
Line 3,067: | Line 3,368: | ||
the restriction requirement. | the restriction requirement. | ||
806.05(h)Product and Process of Using[R-3] | |||
A product and a process of using the product can be | A product and a process of using the product can be | ||
Line 3,085: | Line 3,391: | ||
withdraw the requirement. | 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 | (b)Where claims to all three categories, product, process of | ||
making, and process of use, are included in a national application, | making, and process of use, are included in a national application, | ||
Line 3,098: | Line 3,491: | ||
between the product and process of using the product can be | between the product and process of using the product can be | ||
made. | made. | ||
Where an application contains claims to a product, | Where an application contains claims to a product, | ||
claims to a process specially adapted for (i.e., not | claims to a process specially adapted for (i.e., not pat | ||
§ 806.05(f)) making the product, and claims to a process | |||
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 | of using the product, applicant may be | ||
required to elect either (A) the product and process of | required to elect either (A) the product and process of | ||
Line 3,108: | Line 3,510: | ||
examiner cannot make a showing of distinctness | examiner cannot make a showing of distinctness | ||
between the process of using and the product (MPEP | between the process of using and the product (MPEP | ||
§ 806.05(h)), restriction cannot be required. | § | ||
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 | See MPEP § 821.04(b) for rejoinder practice pertaining | ||
to product and process inventions. | to product and process inventions. | ||
806.05(j)Related Products; Related | |||
Processes [R-5] | |||
To support a requirement for restriction between | To support a requirement for restriction between | ||
Line 3,121: | Line 3,535: | ||
necessary, i.e., separate classification, status in the art, | necessary, i.e., separate classification, status in the art, | ||
or field of search. See MPEP § 808.02. See MPEP | or field of search. See MPEP § 808.02. See MPEP | ||
§ 806.05(c) for an explanation of the requirements to | § | ||
806.05(c) for an explanation of the requirements to | |||
establish two-way distinctness as it applies to inventions | establish two-way distinctness as it applies to inventions | ||
in a combination/subcombination relationship. | in a combination/subcombination relationship. | ||
Line 3,160: | Line 3,576: | ||
multiple processes is present. | 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 | ||
the | 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 | |||
of | 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 | |||
are | |||
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)). | |||
and ( | |||
2.Conclude restriction requirement with one of form paragraphs | |||
restriction | 8.21.01 through 8.21.03. | ||
of | |||
¶ 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). | |||
Where, | 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 | |||
double patenting | 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 | |||
on the | 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. | |||
The | 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. | |||
the | |||
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. | |||
with | |||
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, | |||
restriction | 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 | 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 | |||
examiner | 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 | |||
be | 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 | |||
The | |||
of | |||
(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 | 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: | |||
should be | |||
(A)Identify generic claims or indicate that no | |||
generic claims are present. See MPEP § 806.04(d) for | |||
definition of a generic claim. | |||
The | (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 | |||
of | 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 | |||
claims | 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 | |||
(4) | 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. | ||
claims | |||
4.See related form paragraphs 8.45, 8.46 and 8.47. | |||
and | |||
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 | |||
the | 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 | |||
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. | |||
in the | |||
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 | |||
a | 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 | |||
be | considered to be linking or generic. Thereupon, the | ||
invention | 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 | Where the respective inventions would be | ||
examined in different Technology Centers (TCs), the | |||
requirement for restriction should be made only after | |||
should be | 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 | |||
to | record of the restriction requirement to provide a clear | ||
(See MPEP § | 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 | |||
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 | |||
elected | 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 | |||
If | 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 | |||
and | |||
that | |||
(1)Identify each group by Roman numeral. | |||
1 | |||
(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. | |||
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: | |||
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 | |||
to | |||
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. | |||
claims | |||
(1)Linking claims | |||
(i)Identify | |||
( | (ii)Statement of groups to which linking | ||
claims may be assigned for examination | |||
claims | |||
(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 | |||
See MPEP § 706.03(w) and § 706.07(b) for res | Demonstrate by examiner’s suggestion | ||
judicata. | |||
(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 | See MPEP § 806.04(h) to § 806.04(i) for species | ||
and genus in separate applications. | and genus in separate applications. | ||
Wherever appropriate, such conflicting applications | Wherever appropriate, such conflicting applications | ||
should be joined. This is particularly true | should be joined. This is particularly true | ||
where the two or more applications are due to, and | where the two or more applications are due to, and | ||
consonant with, a requirement to restrict which the | consonant with, a requirement to restrict which the | ||
examiner now considers to be improper. | 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. | |||
(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 | ¶ 8.29 Conflicting Claims, Copending Applications | ||
sufficient reason for their retention during pendency in more than | |||
one application. | 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 | |||
Where claims in one application are | may be required in the absence of good and sufficient reason for | ||
over claims of another application of the same | their retention during pendency in more than one application. | ||
inventive entity (or different inventive entity with | Applicant is required to either cancel the conflicting claims from | ||
common ownership) because they contain conflicting | all but one application or maintain a clear line of demarcation | ||
claims, a complete examination should be | between the applications. See MPEP § 822. | ||
made of the claims of each application and all appropriate | |||
rejections should be entered in each application, | Examiner Note: | ||
including rejections based upon prior art. The claims | |||
of each application may also be rejected on the | This form paragraph is appropriate only when the conflicting | ||
grounds of “provisional” double patenting on the | claims are not patentably distinct. | ||
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. | 822.01Copending Before the Examiner | ||
[R-3] | |||
The “provisional” double patenting rejection | |||
should continue to be made by the examiner in each | 37 CFR 1.78. Claiming benefit of earlier filing date and | ||
application as long as there are conflicting claims in | cross-references to other applications. | ||
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 | (b)Where two or more applications filed by the same applicant | ||
patenting rejection is the only rejection remaining in | contain conflicting claims, elimination of such claims from | ||
at least one application. | 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 Chapter 1800, in particular MPEP § 1850, | |||
§ 1875, and § 1893.03(d), for a detailed discussion | |||
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 | of unity of invention under the Patent Cooperation | ||
Treaty (PCT). | Treaty (PCT). | ||