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Chapter 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting

801 Introduction[edit | edit source]

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

802 Basis for Practice in Statute and Rules[edit | edit source]

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

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

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

37 CFR 1.141. Different inventions in one national application.

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

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

37 CFR 1.142. Requirement for restriction.

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

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

The pertinent Patent Cooperation Treaty (PCT) Articles and Rules are cited and discussed in MPEP 1800.

802.01 Meaning of "Independent" and "Distinct"[edit | edit source]

35 U.S.C. 121 states that the Director may require restriction if two

or more "independent and distinct" inventions are claimed in one application.

In 37 CFR 1.141, the

statement is made that two or more "independent and distinct inventions" may not be claimed in one application.

"Independent", of course, means not dependent,

or unrelated. If "distinct" means the same thing, then its use in the statute and in the rule is redundant. If "distinct' means something different, then the question arises as to what the difference in meaning between these two words may be.

Dependent inventions could be, for example, a combination and a subcombination thereof; a process and an apparatus used to

practice the process; as composition and the process in which the composition is used; as process and the product made by such process, etc.

Dependent (or related) inventions such as

used for illustration above may be properly divided if they are, in fact, "distinct" inventions, even though dependent.

I. INDEPENDENT

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

II. RELATED BUT DISTINCT

Two or more inventions are related (i.e., not independent) if they are disclosed as connected in at least one of design, (e.g., structure or method of manufacture), operation, (e.g., function or method of use), or effect.

802.02 Definition of Restriction[edit | edit source]

Restriction is the practice of requiring an

applicant to elect a single claimed invention for examination when two or more independent inventions and/or two or more distinct inventions are claimed in an application.

803 Restriction — When Proper[edit | edit source]

Under the statute, the claims of an application may properly be required to be restricted to one of two or more claimed inventions only if they are able to support separate patents and they are either independent or distinct.

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

I. CRITERIA FOR RESTRICTION BETWEEN PATENTABLY DISTINCT INVENTIONS

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

(A)The inventions must be independent or distinct as claimed; and

(B)There would be a serious burden on the examiner if restriction is not required.

II. GUIDELINES

If there is an express admission that the claimed inventions would have been obvious over each other within the meaning of 35 U.S.C. 103, restriction should not be required.

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

803.01 Review by Examiner with at Least Partial Signatory Authority[edit | edit source]

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

803.02 Markush Claims[edit | edit source]

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

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

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

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

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

On the other hand, should the examiner determine that the elected species is allowable, the examination of the Markush-type claim will be extended. If prior art is then found that anticipates or renders obvious the Markush-type claim with respect to a nonelected species, the Markush-type claim shall be rejected and claims to the nonelected species held withdrawn from further consideration. The prior art search, however, will not be extended unnecessarily to cover all nonelected species. Should applicant, in response to this rejection of the Markush-type claim, overcome the rejection, as by amending the Markush-type claim to exclude the species anticipated or rendered obvious by the prior art, the amended Markush-type claim will be reexamined. The examination will be extended to the extent necessary to determine patentability of the Markush-type claim. In the event prior art is found during the reexamination that anticipates or renders obvious the amended Markush-type claim, the claim will be rejected and the action can be made final unless the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a). Amendments submitted after the final rejection further restricting the scope of the claim may be denied entry if they do not comply with the requirements of 37 CFR 1.116. See MPEP § 714.13.

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

803.03 Transitional Applications[edit | edit source]

PRACTICE RE TRANSITIONAL APPLICATION

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

. . .

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

(C)applicant disclosed a plurality of independent and distinct inventions in the present or parent application, but delayed presenting claims to more than one of the disclosed independent and distinct inventions in the present or parent application such that no restriction requirement could be made prior to April 8, 1995, and

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

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

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

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

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

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

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

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

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

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

803.03(a) Transitional Application — Linking Claim Allowable[edit | edit source]

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

803.03(b)Transitional Application — Generic Claim Allowable[edit | edit source]

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

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

803.04 Nucleotide Sequences[edit | edit source]

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

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

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

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

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

EXAMPLES OF NUCLEOTIDE SEQUENCE CLAIMS

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

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

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

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

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

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

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

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

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

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

804 Definition of Double Patenting[edit | edit source]

35 U.S.C. 101. Inventions Patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

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

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

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

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

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

There are generally two types of double patenting rejections. One is the "same invention" type double patenting rejection based on 35 U.S.C. 101 which states in the singular that an inventor "may obtain a patent." The second is the "nonstatutory-type" double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinguishing from claims in a first patent. Nonstatutory double patenting includes rejections based on either a one-way determination of obviousness or a two-way determination of obviousness. Nonstatutory double patenting could include a rejection which is not the usual "obviousness-type" double patenting rejection. This type of double patenting rejection is rare and is limited to the particular facts of the case.

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

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

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

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

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

I. INSTANCES WHERE DOUBLE PATENTING ISSUE CAN BE RAISED[edit | edit source]

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

A. Between Issued Patent and One or More Applications

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

B. Between Copending Applications—Provisional Rejections

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

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

1. Nonstatutory Double Patenting Rejections

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

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

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

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

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

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

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

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

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

D. Reexamination Proceedings

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

Double patenting may exist where a reference patent or application and the patent under reexamination are filed by inventive entities that have at least one inventor in common and/or are filed by a common owner/assignee. Where the patent under reexamination was granted on or after December 10, 2004, double patenting may also exist where the inventions claimed in the reference and reexamination proceeding resulted from activities undertaken within the scope of a joint research agreement pursuant to 35 U.S.C. 103(c)(2) and (3), and if evidence of the joint research agreement has been made of record in the patent being reexamined or in the reexamination proceeding. A double patenting rejection may NOT be made on this basis if the patent under reexamination issued before December 10, 2004. See MPEP § 804.04. The prior art exclusion under 35 U.S.C. 103(c) cannot be used to overcome an obvious double patenting rejection. See MPEP § 706.02(l) for more information on 35 U.S.C. 103(c). See MPEP § 2258for more information on making double patenting rejections in reexamination proceedings. Subsection II., below, describes situations wherein a double pat enting rejection would be appropriate. In particular, see paragraph II.B.1. for the analysis required to determine the propriety of an obviousness-type double patenting rejection.

II. REQUIREMENTS OF A DOUBLE PATENTING REJECTION (INCLUDING PROVISIONAL REJECTIONS)[edit | edit source]

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

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

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

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

(B) Whether a statutory basis exists; and

(C) Whether a nonstatutory basis exists.

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

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

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

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

A reliable test for double patenting under 35 U.S.C. 101 is whether a claim in the application could be literally infringed without literally infringing a corresponding claim in the patent. In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970). Is there an embodiment of the invention that falls within the scope of one claim, but not the other? If there is such an embodiment, then identical subject matter is not defined by both claims and statutory double patenting would not exist. For example, the invention defined by a claim reciting a compound having a “halogen” substituent is not identical to or substantively the same as a claim reciting the same compound except having a “chlorine” substituent in place of the halogen because “halogen” is broader than “chlorine.” On the other hand, claims may be differently worded and still define the same invention. Thus, a claim reciting a widget having a length of “36 inches” defines the same invention as a claim reciting the same widget having a length of “3 feet.”

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

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

B.Nonstatutory Double Patenting

A rejection based on nonstatutory double patenting is based on a judicially created doctrine grounded in public policy so as to prevent the unjustified or improper timewise extension of the right to exclude granted by a patent.

1. Obviousness-Type

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

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

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

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

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

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

(D)Evaluate any objective indicia of nonobviousness.

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

Any obviousness-type double patenting rejection should make clear:

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

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

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

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

(a)One-Way Obviousness

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

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

(b)Two-Way Obviousness

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

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

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

Although a delay in the processing of applications before the Office that would cause patents to issue in an order different from the order in which the applications were filed is a factor to be considered in determining whether a one-way or two-way obviousness determination is necessary to support a double patenting rejection, it may be very difficult to assess whether an applicant or the administrative process is primarily responsible for a delay in the issuance of a patent. On the one hand, it is applicant who presents claims for examination and pays the issue fee. On the other hand, the resolution of legitimate differences of opinion that must be resolved in an appeal process or the time spent in an interference proceeding can significantly delay the issuance of a patent. Nevertheless, the reasons for the delay in issuing a patent have been considered in assessing the propriety of a double patenting rejection. Thus, in Pierce v. Allen B. DuMont Laboratories, Inc., 297 F.2d 323, 131 USPQ 340 (3d. Cir. 1961), the court found that administrative delay may justify the extension of patent rights beyond 17 years but “a considered election to postpone acquisition of the broader [patent after the issuance of the later filed application] should not be tolerated.” In Pierce, the patentee elected to participate in an interference proceeding [after all claims in the application had been determined to be patentable] whereby the issuance of the broader patent was delayed by more than 7 years after the issuance of the narrower patent. The court determined that the second issued patent was invalid on the ground of double patenting. Similarly, in In re Emert, 124 F.3d 1458, 44 USPQ2d 1149 (Fed. Cir. 1997), the court found that the one-way test is appropriate where applicants, rather than the Office, had significant control over the rate of prosecution of the application at issue. In support of its finding that the applicants were responsible for delaying prosecution of the application during the critical period, the court noted that the applicants had requested and received numerous time extensions in various filings. More importantly, the court noted, after initially receiving an obviousness rejection of all claims, applicants had waited the maximum period to reply (6 months), then abandoned the application in favor of a substantially identical continuation application, then received another obviousness rejection of all claims, again waited the maximum period to reply, and then again abandoned the application in favor of a second continuation application substantially identical to the original filing. On the other hand, in General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 23 USPQ2d 1839 (Fed. Cir. 1992), the court elected not to hold the patentee accountable for a delay in issuing the first filed application until after the second filed application issued as a patent, even where the patentee had intentionally refiled the first filed application as a continuation-in-part after receiving a Notice of Allowance indicating that all claims presented were patentable. Similarly, where, through no fault of the applicant, the claims in a later filed application issue first, an obvious-type double patenting rejection is improper, in the absence of a two-way obviousness determination, because the applicant does not have complete control over the rate of progress of a patent application through the Office. In re Braat, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir. 1991). While acknowledging that allowance of the claims in the earlier filed application would result in the timewise extension of an invention claimed in the patent, the court was of the view that the extension was justified under the circumstances in this case, indicating that a double patenting rejection would be proper only if the claimed inventions were obvious over each other — a two-way obviousness determination.

2.Another Type of Nonstatutory Double Patenting Rejection

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

in appellant’s own terms: The combination ABC was old. He made two improvements on it, (1) adding X and (2) adding Y, the result still being a unitary clip of enhanced utility. While his invention can be practiced in the forms ABCX or ABCY, the greatest advantage and best mode of practicing the invention as disclosed is obtained by using both inventions in the combination ABCXY. His first application disclosed ABCXY and other matters. He obtained a patent claiming [a clip comprising] BCX and ABCX, . . . so claiming these combinations as to cover them no matter what other feature is incorporated in them, thus covering effectively ABCXY. He now, many years later, seeks more claims directed to ABCY and ABCXY. Thus, protection he already had would be extended, albeit in somewhat different form, for several years beyond the expiration of his patent, were we to reverse. 397 F.2d at 355-56, 158 USPQ at 216 (emphasis in original).

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

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

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

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

A fact situation similar to that in Schneller was presented to a Federal Circuit panel in In re Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986). Kaplan had been issued a patent on a process of making chemicals in the presence of an organic solvent. Among the organic solvents disclosed and claimed as being useful were tetraglyme and sulfolane. One unclaimed example in the patent was specifically directed to a mixture of these two solvents. The claims in the application to Kaplan and Walker, the application before the Office, were directed to essentially the same chemical process, but requiring the use of the solvent mixture of tetraglyme and sulfolane. In reversing the double patenting rejection, the court stated that the mere fact that the broad process claim of the patent requiring an organic solvent reads on or “dominates” the narrower claim directed to basically the same process using a specific solvent mixture does not, per se, justify a double patenting rejection. The court also pointed out that the double patenting rejection improperly used the disclosure of the joint invention (solvent mixture) in the Kaplan patent specification as though it were prior art.

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

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

3.Design/Plant — Utility Situations

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

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

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

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

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

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

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

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

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

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

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

Until applicant establishes the existence of a joint research agreement, the examiner cannot apply a double patenting rejection based on the possible existence of such an agreement. If in reply to an Office action applying a rejection under 35 U.S.C. 102(e)/103, applicant disqualifies the relied upon reference under the joint research agreement provision of 35 U.S.C. 103(c) and a subsequent double patenting rejection based upon the disqualified reference is applied, the next Office action may be made final even if applicant did not amend the claims (provided the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)). The Office action is properly made final because the new double patenting rejection was necessitated by the applicant’s amendment of the application.

804.01 Prohibition of Double PatentingRejections Under 35 U.S.C. 121[edit | edit source]

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

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

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

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

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

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

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

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

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

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

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

804.02 Avoiding a Double Patenting Rejection[edit | edit source]

I.STATUTORY

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

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

II.NONSTATUTORY

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

The use of a 37 CFR 1.131 affidavit in overcoming a double patenting rejection is inappropriate because the claim or claims in the application are being rejected over a patent which claims the rejected invention. In re Dunn, 349 F.2d 433, 146 USPQ 479 (CCPA 1965). 37 CFR 1.131 is inapplicable if the claims of the application and the patent are “directed to substantially the same invention.” It is also inappli cable if there is a lack of “patentable distinctness” between the claimed subject matter. Knell v. Muller, 174 USPQ 460 (Comm’r. Pat. 1971), citing the court decisions in In re Ward, 236 F.2d 428, 111 USPQ 101 (CCPA 1956); In re Teague, 254 F.2d 145, 117 USPQ 284 (CCPA 1958); and In re Hidy, 303 F.2d 954, 133 USPQ 65 (CCPA 1962).

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

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

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

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

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

Applicants are cautioned that reliance upon a common

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

IV.DISCLAIMING MULTIPLE DOUBLE PATENTING REFERENCES

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

Each one of the commonly owned conflicting double patenting references must be included in the terminal disclaimer to avoid the problem of dual ownership of patents to patentably indistinct inventions in the event that the patent issuing from the application being examined ceases to be commonly owned with any one of the double patenting references that have issued or may issue as a patent. Note that 37 CFR 1.321(c)(3) requires that a terminal disclaimer for commonly owned conflicting claims “[i]nclude a provision that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the rejection.”

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

V.REQUIREMENTS OF A TERMINAL DISCLAIMER

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

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

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

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

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

804.03 Commonly Owned Inventions of Different Inventive Entities; Non-Commonly Owned Inventions Subject to a Joint Research Agreement[edit | edit source]

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

. . .

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

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

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

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

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

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

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

. . .

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

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

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

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

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

(b)[Reserved]

I.DOUBLE PATENTING

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

C.Timing of Double Patenting Rejections

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

III.DETERMINING INVENTION PRIORITY

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

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

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

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

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

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

If the provisions of 35 U.S.C. 103(c)(1) apply to the commonly owned conflicting inventions of different inventive entities or if the provisions of 35 U.S.C. 103(c)(2) apply to non-commonly owned inventions subject to a joint research agreement and thereby obviate the obviousness rejection(s), double patenting rejection(s) should be made (or maintained) as appropriate. If, however, it is determined that the provisions of 35 U.S.C. 103(c) do NOT apply because the inventions were not commonly owned or subject to an obligation of assignment to the same person at the time the later invention was made, or because the claimed invention did NOT result from activities undertaken within the scope of a joint research agreement as required by 35 U.S.C. 103(c)(2) and (3), and there is evidence of record to indicate that a patent or application is prior art against the application being examined, the examiner should make (A) any appropriate double patenting rejection( s), and (B) the appropriate prior art rejection(s) under 35 U.S.C. 102 and/or 35 U.S.C. 103 in the application being examined. See Charts I-A, I-B, II-A, and II-B in MPEP § 804. Rejections under 35 U.S.C. 102 or 35 U.S.C. 103 cannot be obviated solely by filing a terminal disclaimer.

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

804.04 Submission to Technology Center Director[edit | edit source]

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

805 Effect of Improper Joinder in Patent[edit | edit source]

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

806 Determination of Distinctness or Independence of Claimed Inventions[edit | edit source]

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

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

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

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

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

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

See MPEP § 802.01 for criteria for patentably distinct inventions.

806.01 Compare Claimed Subject Matter[edit | edit source]

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

806.03 Single Embodiment, Claims Defining Same Essential Features[edit | edit source]

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

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

806.04 Genus and/or Species Inventions[edit | edit source]

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

37 CFR 1.146. Election of species.

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

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

806.04(b) Species May Be Independent or Related Inventions[edit | edit source]

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

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

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

806.04(d) Definition of a Generic Claim[edit | edit source]

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

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

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

806.04(e) Claims Limited to Species[edit | edit source]

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

Species always refer to the different embodiments of the invention.

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

806.04(b)).

806.04(f) Restriction Between Mutually Exclusive Species[edit | edit source]

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

806.04(h) Species Must Be Patentably Distinct From Each Other[edit | edit source]

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

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

Where, however, claims to a different species, or

a species disclosed but not claimed in a parent case

as filed and first acted upon by the examiner, are voluntarily presented in a different application having at least one common inventor or a common assignee (i.e., no requirement for election pertaining to said species was made by the Office) there should be close investigation to determine whether a double patenting rejection would be appropriate. See MPEP § 804.01 and § 804.02.

806.04(i) Generic Claims Presented After Issue of Species[edit | edit source]

If a generic claim is presented after the issuance of a patent claiming one or more species within the scope of the generic claim, the Office may reject the generic claim on the grounds of obviousness- type double patenting when the patent and application have at least once common inventor and/ or are either (1) commonly assigned/owned or (2) non-commonly assigned/owned but subject to a joint research agreement as set forth in 35 U.S.C. 103(c)(2) and (3). See MPEP § 804. Applicant may overcome such a rejection by filing a terminal disclaimer. See In re Goodman, 11 F.3d 1046, 1053, 29 USPQ2d 2010, 2016 (Fed. Cir. 1993); In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967).

806.05 Related Inventions[edit | edit source]

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

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

806.05(a)Combination and Subcombination[edit | edit source]

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

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

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

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

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

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

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

The following examples are included for general guidance.

I.SUBCOMBINATION ESSENTIAL TO COMBINATION

ABsp/Bsp No Restriction

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

II.SUBCOMBINATION NOT ESSENTIAL TO COMBINATION

A. ABbr/Bsp Restriction Proper

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

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

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

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

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

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

B. ABsp/ABbr/Bsp Restriction Proper

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

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

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

III.PLURAL COMBINATIONS REQUIRING A SUBCOMBINATION COMMON TO EACH COMBINATION

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

806.05(d) Subcombinations Usable Together[edit | edit source]

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

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

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

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

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

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

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

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

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

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

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

806.05(e) Process and Apparatus for Its Practice[edit | edit source]

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

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

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

806.05(f) Process of Making and ProductMade[edit | edit source]

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

Allegations of different processes or products need not be documented.

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

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

806.05(g) Apparatus and Product Made[edit | edit source]

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

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

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

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

806.05(h) Product and Process of Using[edit | edit source]

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

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

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

806.05(i) Product, Process of Making, and Process of Using[edit | edit source]

37 CFR 1.141. Different inventions in one national application.

. . .

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

Where an application contains claims to a product, claims to a process specially adapted for (i.e., not patentably distinct from, as defined in MPEP § 806.05(f)) making the product, and claims to a process of using the product, applicant may be required to elect either (A) the product and process of making it; or (B) the process of using. If the examiner cannot make a showing of distinctness between the process of using and the product (MPEP § 806.05(h)), restriction cannot be required.

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

806.05(j) Related Products; Related Processes[edit | edit source]

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

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

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

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

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

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

806.06 Independent Inventions[edit | edit source]

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.

807 Patentability Report Practice Has No Effect on Restriction Practice[edit | edit source]

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.

808 Reasons for Insisting Upon Restriction[edit | edit source]

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.

808.01 Reasons for Holding of Independence or Distinctness[edit | edit source]

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

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

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

808.01(a) Species[edit | edit source]

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

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

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

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

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

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

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

808.02 Establishing Burden[edit | edit source]

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

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

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

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

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

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

809 Linking Claims[edit | edit source]

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

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

(A)genus claims linking species claims; and

(B)subcombination claims linking plural combinations.

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

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

809.02(a) Election of Species Required[edit | edit source]

Where restriction between species is appropriate (see MPEP § 808.01(a)) the examiner should send a letter including only a restriction requirement or place a telephone requirement to restrict (the latter being encouraged). See MPEP § 812.01 for telephone practice in restriction requirements.

Action as follows should be taken:

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

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

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

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

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

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

809.03 Restriction Between Linked Inventions[edit | edit source]

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).

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.

810 Action on the Merits[edit | edit source]

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

811 Time for Making Requirement[edit | edit source]

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

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

811.02 New Requirement After Compliance With Preceding Requirement[edit | edit source]

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).

811.03 Repeating After Withdrawal Proper[edit | edit source]

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.

811.04 Proper Even Though Grouped Together in Parent Application[edit | edit source]

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.

812 Who Should Make the Requirement[edit | edit source]

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

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

812.01 Telephone Restriction Practice[edit | edit source]

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

If, on examination, the examiner finds the claims to an invention elected without traverse to be allowable and no nonelected invention is eligible for rejoinder (see MPEP § 821.04), the letter should be attached to the Notice of Allowability form PTOL- 37 and should include cancellation of the nonelected claims, a statement that the prosecution is closed, and that a notice of allowance will be sent in due course. Correction of formal matters in the above-noted situation which cannot be handled by a telephone call and thus requires action by the applicant should be handled under the Ex parte Quayle practice, using Office Action Summary form PTOL-326.

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

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

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

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

814 Indicate Exactly How Application Is To Be Restricted[edit | edit source]

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

I. SPECIES

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

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

II. INVENTIONS OTHER THAN SPECIES

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

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

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

III. LINKING CLAIMS

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

815 Make Requirement Complete[edit | edit source]

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

817 Outline of Letter for Restriction Requirement[edit | edit source]

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

OUTLINE OF RESTRICTION REQUIRE- MENT

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

(1)Identify each group by Roman numeral.

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

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

(4)Classify each group.

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

(1)Linking claims

(i)Identify

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

(2)Other ungrouped claims

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

(C)Allegation of independence or distinctness

(1)Point out facts which show independence or distinctness

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

(i)Subcombination - Subcombination disclosed as usable together

Each usable alone or in other identified combination Demonstrate by examiner’s suggestion

(ii)Combination - Subcombination

Combination as claimed does not require subcombination

AND

Subcombination usable alone or in other combination

Demonstrate by examiner’s suggestion

(iii)Process - Apparatus

Process can be carried out by hand or by other apparatus

Demonstrate by examiner’s suggestion

OR

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

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

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

Demonstrate by examiner’s suggestion

OR

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

(D)Provide reasons for insisting upon restriction

(1)Separate status in the art

(2)Different classification

(3)Same classification but recognition of divergent subject matter

(4)Divergent fields of search, or

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

(E)Summary statement

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

(2)Include paragraph advising as to reply required

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

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

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

818 Election and Reply[edit | edit source]

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.

818.01 Election Fixed by Action on Claims[edit | edit source]

Election becomes fixed when the claims in an application have received an action on their merits by the Office.

818.02 Election Other Than Express[edit | edit source]

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[edit | edit source]

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[edit | edit source]

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[edit | edit source]

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.

818.03 Express Election and Traverse[edit | edit source]

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[edit | edit source]

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 Requirement Is Traversed[edit | edit source]

As noted in the second sentence of 37 CFR 1.143, a provisional election must be made even though the requirement is traversed.

818.03(c) Must Traverse To Preserve Right of Petition[edit | edit source]

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.

818.03(d) Traverse of Restriction Requirement With Linking Claims[edit | edit source]

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).

819 Office Generally Does Not Permit Shift[edit | edit source]

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.

821 Treatment of Claims Held To Be Drawn to Nonelected Inventions[edit | edit source]

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 § 821.01 through § 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.

821.01 After Election With Traverse[edit | edit source]

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.

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.

This will show that applicant has retained the right to petition from the requirement under 37 CFR 1.144. (See MPEP § 818.03(c).)

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).

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.

821.02 After Election Without Traverse[edit | edit source]

Where the initial requirement is not traversed, if adhered to, appropriate action should be given on the elected claims.

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.

821.03 Claims for Different Invention Added After an Office Action[edit | edit source]

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

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.

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.

821.04 Rejoinder[edit | edit source]

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[edit | edit source]

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.

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.

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.

821.04(b) Rejoinder of Process Requiring an Allowable Product[edit | edit source]

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.

822 Claims to Inventions That Are Not Distinct in Plural Applications of Same Inventive Entity[edit | edit source]

The treatment of plural applications of the same inventive entity, none of which has become a patent, is treated in 37 CFR 1.78(b) as follows:

(b) Where two or more applications filed by the same applicant contain conflicting claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.

See MPEP § 804.03 for conflicting subject matter, different inventors, common ownership.

See MPEP § 706.03(k) for rejection of one claim on another in the same application.

See MPEP § 706.03(w) and § 706.07(b) for res judicata.

See MPEP § 709.01 for one application in interference.

See MPEP § 806.04(h) to § 806.04(i) for species and genus in separate applications.

Wherever appropriate, such conflicting applications should be joined. This is particularly true where the two or more applications are due to, and consonant with, a requirement to restrict which the examiner now considers to be improper.

822.01 Copending Before the Examiner[edit | edit source]

37 CFR 1.78. Claiming benefit of earlier filing date and cross-references to other applications.
. . . (b)Where two or more applications filed by the same applicant contain conflicting claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. . . .

Where claims in one application are unpatentable 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.

823 Unity of Invention Under the Patent Cooperation Treaty[edit | edit source]

See Chapter 1800, in particular MPEP § 1850, § 1875, and § 1893.03(d), for a detailed discussion of unity of invention under the Patent Cooperation Treaty (PCT).

← MPEP 700

↑ MPEP Table of Contents

MPEP 900 →

@@ Line 1: / Line 1: @@
-Introduction
+{{MPEP Chapter|700|900}}
+'''<big>Chapter 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting</big>'''
+<div class="noautonum">{{TOC limit|limit=3}}</div>
+==801 Introduction==
 This chapter is limited to a discussion of the subject
@@ Line 14: / Line 20: @@
 Trademark Office is covered in Chapter 1800.
-Basis for Practice in Statute and
+==802 Basis for Practice in Statute and Rules==
-Rules
 The basis for restriction and double patenting practices
 is found in the following statute and rules:
-U.S.C. 121. Divisional applications.
+{{Statute|35 U.S.C. 121. Divisional applications.}}
 If two or more independent and distinct inventions are claimed
 in one application, the Director may require the application to be
@@ Line 40: / Line 44: @@
 The validity of a patent shall not be questioned for failure of the
 Director to require the application to be restricted to one invention.
+|}
-CFR 1.141. Different inventions in one national
+{{Statute|37 CFR 1.141. Different inventions in one national application.}}
-application.
 (a) Two or more independent and distinct inventions may not
 be claimed in one national application, except that more than one
@@ Line 63: / Line 66: @@
 between the product and process of using the product can be
 made.
+|}
-CFR 1.142. Requirement for restriction.
+{{Statute|37 CFR 1.142. Requirement for restriction.}}
-(a)If two or more independent and distinct inventions are
+(a) If two or more independent and distinct inventions are
 claimed in a single application, the examiner in an Office action
 will require the applicant in the reply to that action to elect an
@@ Line 75: / Line 80: @@
 any time before final action.
-(b)Claims to the invention or inventions not elected, if not
+(b) Claims to the invention or inventions not elected, if not
 canceled, are nevertheless withdrawn from further consideration
 by the examiner by the election, subject however to reinstatement
 in the event the requirement for restriction is withdrawn or overruled.
+|}
 The pertinent Patent Cooperation Treaty (PCT)
-Articles and Rules are cited and discussed in Chapter
+Articles and Rules are cited and discussed in [[MPEP 1800]].
-. Sections 1850, 1875, and 1893.03(d) should be
-consulted for discussions on unity of invention:
-(A)before the International Searching Authority;
-(B)before the International Preliminary Examining
-Authority; and
-(C)in the National Stage under 35 U.S.C. 371.
-.01Meaning of “Independent” and
+===802.01 Meaning of "Independent" and "Distinct"===
-“Distinct” [R-5]
-U.S.C. 121 quoted in the preceding section
+* 35 U.S.C. 121 states that the Director may require restriction if two
-states that the Director may require restriction if two
+or more "independent and distinct" inventions are
-or more “independent and distinct” inventions are
+claimed in one application.
-claimed in one application. In 37 CFR 1.141, the
-statement is made that two or more “independent and
-distinct inventions” may not be claimed in one application.
+* In 37 CFR 1.141, the
+statement is made that two or more "independent and distinct inventions" may not be claimed in one application.
-This raises the question of the inventions as
+* '''"Independent"''', of course, means not dependent,
-between which the Director may require restriction.
+or unrelated. If '''"distinct"''' means the same thing, then
-This, in turn, depends on the construction of the
-expression “independent and distinct” inventions.
-“Independent”, of course, means not dependent,
-or unrelated. If “distinct” means the same thing, then
 its use in the statute and in the rule is redundant. If
-“distinct” means something different, then the question
+"distinct' means something different, then the question
 arises as to what the difference in meaning
-between these two words may be. The hearings before
+between these two words may be.
-the committees of Congress considering the codification
-of the patent laws indicate that 35 U.S.C. 121:
-“enacts as law existing practice with respect to division,
-at the same time introducing a number of
-changes.”
-The report on the hearings does not mention as a
+* Dependent inventions could be, for example, a combination and a subcombination thereof; a process and an apparatus used to
-change that is introduced, the inventions between
+practice the process; as composition and the process
-which the Director may properly require division.
+in which the composition is used; as process and
+the product made by such process, etc.
-The term “independent” as already pointed out,
+* Dependent (or related) inventions such as
-means not dependent, or unrelated. A large number
-of inventions between which, prior to the 1952 Act,
-division had been proper, are dependent inventions,
-such as, for example, combination and a subcombination
-thereof; as process and apparatus used in the
-practice of the process; as composition and the process
-in which the composition is used; as process and
-the product made by such process, etc. If section 121
-of the 1952 Act were intended to direct the Director
-never to approve division between dependent inventions,
-the word “independent” would clearly have
-been used alone. If the Director has authority or discretion
-to restrict independent inventions only, then
-restriction would be improper as between dependent
-inventions, e.g., the examples used for purpose of
-illustration above. Such was clearly not the intent of
-Congress. Nothing in the language of the statute and
-nothing in the hearings of the committees indicate any
-intent to change the substantive law on this subject.
-On the contrary, joinder of the term “distinct” with the
-term “independent”, indicates lack of such intent. The
-law has long been established that dependent inventions
-(frequently termed related inventions) such as
 used for illustration above may be properly divided if
-they are, in fact, “distinct” inventions, even though
+they are, in fact, "distinct" inventions, even though
 dependent.
-I.INDEPENDENT
+'''I. INDEPENDENT'''
-The term “independent” (i.e., unrelated)
+The term "independent" (i.e., unrelated)
 means that there is no disclosed relationship between
 the two or more inventions claimed, that is, they are
-unconnected in design, operation, and effect. For
+'''unconnected in design, operation, and effect'''. For
 example, a process and an apparatus incapable of
 being used in practicing the process are independent
 inventions. See also MPEP § 806.06 and § 808.01.
-II.RELATED BUT DISTINCT
+'''II. RELATED BUT DISTINCT'''
 Two or more inventions are related (i.e., not independent)
-if they are disclosed as connected in at least
+if they are disclosed as '''connected''' in at least
-one of design (e.g., structure or method of manufacture),
+one of '''design''', (e.g., structure or method of manufacture),
-operation (e.g., function or method of use), or
+'''operation''', (e.g., function or method of use), or
-effect. Examples of related inventions include combination
+'''effect'''.
-and part (subcombination) thereof, process and
-apparatus for its practice, process and product made,
-etc. In this definition the term related is used as an
-alternative for dependent in referring to inventions
-other than independent inventions.
-Related inventions are distinct if the inventions as
+===802.02 Definition of Restriction===
-claimed are not connected in at least one of design,
-operation, or effect (e.g., can be made by, or used in, a
-materially different process) and wherein at least one
-invention is PATENTABLE (novel and nonobvious)
-OVER THE OTHER (though they may each be
-unpatentable over the prior art). See MPEP
-§
-.05(c) (combination and subcombination) and
-§
-.05(j) (related products or related processes) for
-examples of when a two-way test is required for distinctness.
+* '''Restriction''' is the practice of requiring an
-It is further noted that the terms “independent” and
+applicant to elect a single claimed invention for
-“distinct” are used in decisions with varying meanings.
-All decisions should be read carefully to determine
-the meaning intended.
-.02Definition of Restriction [R-3]
-Restriction is the practice of requiring an
-applicant to elect a single claimed invention (e.g.,
-a combination or subcombination invention, a product
-or process invention, a species within a genus) for
 examination when two or more independent inventions
 and/or two or more distinct inventions are
 claimed in an application.
-Restriction — When Proper [R-3]
+==803 Restriction — When Proper==
 Under the statute, the claims of an application
@@ Line 218: / Line 148: @@
 two or more claimed inventions only if they are able
 to support separate patents and they are either independent
-(MPEP § 802.01, § 806.06, and
+or distinct.
-§
-.01) or distinct (MPEP §
-.05 -
-§
-.05(j)).
 If the search and examination of all the claims
@@ Line 238: / Line 155: @@
 even though they include claims to
 independent or distinct inventions.
 I. CRITERIA FOR RESTRICTION BETWEEN
 PATENTABLY DISTINCT INVENTIONS
 There are two criteria for a proper requirement for
 restriction between patentably distinct inventions:
-(A)The inventions must be independent (see
+(A)The inventions must be independent or distinct
-MPEP § 802.01, § 806.06, § 808.01) or distinct
+as claimed;
-as claimed (see MPEP § 806.05 - § 806.05(j));
 and
 (B)There would be a serious burden on the
-examiner if restriction is not required (see MPEP
+examiner if restriction is not required.
-§
-.02, §
-, and §
-.02).
 II. GUIDELINES
-Examiners must provide reasons and/or examples
-to support conclusions, but need not cite documents to
-support the restriction requirement in most cases.
-Where plural inventions are capable of being
-viewed as related in two ways, both applicable criteria
-for distinctness must be demonstrated to support a
-restriction requirement.
 If there is an express admission that the claimed
 inventions would have been obvious over each
 other within the meaning of 35 U.S.C. 103, restriction
-should not be required. In re Lee, 199 USPQ 108
+should not be required.
-(Comm’r Pat. 1978).
 For purposes of the initial requirement, a serious
@@ Line 286: / Line 180: @@
 by appropriate explanation of separate classification,
 or separate status in the art, or a different field of
-search as defined in MPEP §
+search as defined in MPEP § 808.02. That prima facie showing may be rebutted by appropriate showings or evidence by the applicant. Insofar as the criteria for
-.02. That prima facieshowing may be rebutted by appropriate showings or
-evidence by the applicant. Insofar as the criteria for
 restriction practice relating to Markush-type claims is
 concerned, the criteria is set forth in MPEP § 803.02.
 Insofar as the criteria for restriction or election practice
 relating to claims to genus-species, see MPEP
-§
+§ 806.04 - § 806.04(i) and § 808.01(a).
-.04 - § 806.04(i) and § 808.01(a).
-.01Review by Examiner with at
+===803.01 Review by Examiner with at Least Partial Signatory Authority===
-Least Partial Signatory Authority
-[R-3]
 Since requirements for restriction under 35 U.S.C.
@@ Line 324: / Line 211: @@
 for restriction.
-.02Markush Claims [R-5]
+===803.02 Markush Claims===
 A Markush-type claim recites alternatives in a format
-such as “selected from the group consisting of A,
+such as "selected from the group consisting of A,
-B and C.” See Ex parte Markush, 1925 C.D. 126
+B and C." See Ex parte Markush, 1925 C.D. 126
 (Comm’r Pat. 1925). The members of the Markush
 group (A, B, and C in the example above) ordinarily
@@ Line 346: / Line 233: @@
 also be claimed by using the Markush style of claiming.
 See MPEP § 2173.05(h).
 If the members of the Markush group are sufficiently
@@ Line 425: / Line 307: @@
 statement filed during the period set forth in
 CFR 1.97(c) with the fee set forth in 37 CFR
-.17(p). See MPEP §
+.17(p). See MPEP § 706.07(a).
-.07(a).
 On the other hand, should the examiner determine
@@ Line 453: / Line 333: @@
 examiner introduces a new ground of rejection that is
 neither necessitated by applicant’s amendment of the
 claims nor based on information submitted in an
 information disclosure statement filed during the
 period set forth in 37 CFR 1.97(c) with the fee set
-forth in 37 CFR 1.17(p). See MPEP §
+forth in 37 CFR 1.17(p). See MPEP § 706.07(a).
-.07(a).
 Amendments submitted after the final rejection further
 restricting the scope of the claim may be denied
 entry if they do not comply with the requirements of
-CFR 1.116. See MPEP §
+CFR 1.116. See MPEP § 714.13.
-.13.
 If a Markush claim depends from or otherwise
@@ Line 476: / Line 346: @@
 claim, see MPEP § 809.
-.03 Transitional Applications
+===803.03 Transitional Applications===
-[R-3]
 PRACTICE RE TRANSITIONAL APPLICATION
+{{Statute|37 CFR 1.129. Transitional procedures for limited examination after final rejection and restriction practice.}}
-CFR 1.129. Transitional procedures for limited
+{{Ellipsis}}
-examination after final rejection and restriction practice.
 (b)(1) In an application, other than for reissue or a design
 patent, that has been pending for at least three years as of June 8,
@@ Line 536: / Line 401: @@
 (3)The additional inventions for which the required fee
 has not been paid will be withdrawn from consideration under
-§
+§ 1.142(b). An applicant who desires examination of an invention
-.142(b). An applicant who desires examination of an invention
 so withdrawn from consideration can file a divisional application
 under 35 U.S.C. 121.
@@ Line 544: / Line 407: @@
 (c)The provisions of this section shall not be applicable to
 any application filed after June 8, 1995.
+|}
-“Restriction” under 37 CFR 1.129(b) applies to
+"Restriction" under 37 CFR 1.129(b) applies to
 both restriction requirements under 37 CFR 1.142 and
 election of species requirements under 37 CFR 1.146.
@@ Line 589: / Line 454: @@
 one of the disclosed independent and distinct inventions
 in the present or parent application such that no
 restriction requirement could be made prior to April 8,
 , and
@@ Line 684: / Line 543: @@
 a 20-year patent term.
-Form paragraph 8.41 may be used to notify applicant
+====803.03(a) Transitional Application — Linking Claim Allowable====
-that the application is a transitional application
-and is entitled to consideration of additional inventions
-upon payment of the required fee.
-¶ 8.41 Transitional Restriction or Election of Species
-Requirement To Be Mailed After June 8, 1995
-This application is subject to the transitional restriction provisions
-of Public Law 103-465, which became effective on June 8,
-, because:
-.the application was filed on or before June 8, 1995, and
-has an effective U.S. filing date of June 8, 1992, or earlier;
-.a requirement for restriction was not made in the present
-or a parent application prior to April 8, 1995; and
-.the examiner was not prevented from making a requirement
-for restriction in the present or a parent application prior to
-April 8, 1995, due to actions by the applicant.
-The transitional restriction provisions permit applicant to have
-more than one independent and distinct invention examined in the
-same application by paying a fee for each invention in excess of
-one.
-Final rules concerning the transition restriction provisions were
-published in the Federal Register at 60 FR 20195 (April 25, 1995)
-and in the Official Gazette at 1174 O.G. 15 (May 2, 1995). The
-final rules at 37 CFR 1.17(s) include the fee amount required to be
-paid for each additional invention as set forth in the following
-requirement for restriction. See the current fee schedule for the
-proper amount of the fee.
-Applicant must either: (1) elect the invention or inventions to
-be searched and examined and pay the fee set forth in 37 CFR
-.17(s) for each independent and distinct invention in excess of
-one which applicant elects; or (2) file a petition under 37 CFR
-.129(b) traversing the requirement.
-Examiner Note:
-.This form paragraph should be used in all restriction or election
-of species requirements made in applications subject to the
-transition restriction provisions set forth in 37 CFR 1.129(b)
-where the requirement is being mailed after June 8, 1995. The
-procedure is NOT applicable to any design or reissue application.
-.03(a)Transitional Application —
-Linking Claim Allowable [R-3]
 Whenever divided inventions in a transitional
 application are rejoined because a linking claim is
 allowable (MPEP § 809, § 821.04, and
-§
+§ 821.04(a)) and applicant paid the fee set forth in
-.04(a)) and applicant paid the fee set forth in
 CFR 1.17(s) for the additional invention, applicant
 should be notified that he or she may request a refund
 of the fee paid for that additional invention.
-.03(b)Transitional Application —
+====803.03(b)Transitional Application — Generic Claim Allowable====
-Generic Claim Allowable [R-3]
 Whenever claims drawn to an additional species in
@@ Line 766: / Line 567: @@
 species would no longer be withdrawn
 from consideration should be made as indicated in
-MPEP § 806.04(d), § 821.04, and §
+MPEP § 806.04(d), § 821.04, and § 821.04(a).
-.04(a).
+===803.04 Nucleotide Sequences===
+By statute, “[i]f two or more independent and distinct
-Flowchart
-.04 Nucleotide Sequences [R-3]
-By statute, “[i]f two or more independent and distinct
 inventions are claimed in one application, the
 Director may require the application to be
@@ Line 887: / Line 673: @@
 whole renders the claim allowable.
- Applications containing only composition
+Applications containing only composition
 claims
 reciting different combinations of individual
 nucleotide sequences, such as set forth in example
 (C), will be subject to a restriction requirement.
@@ Line 926: / Line 707: @@
 rejoinder. See MPEP § 821.04.
-Definition of Double Patenting[R-5]
+==804 Definition of Double Patenting==
-U.S.C. 101. Inventions Patentable.
+{{Statute|35 U.S.C. 101. Inventions Patentable.}}
 Whoever invents or discovers any new and useful process,
 machine, manufacture, or composition of matter or any new and
 useful improvement thereof, may obtain a patent therefor, subject
 to the conditions and requirements of this title.
+|}
-U.S.C. 121. Divisional Applications.
+{{Statute|35 U.S.C. 121. Divisional Applications.}}
 If two or more independent and distinct inventions are claimed
 in one application, the Director may require the application to be
@@ Line 955: / Line 736: @@
 The validity of a patent shall not be questioned for failure of the
 Director to require the application to be restricted to one invention.
+|}
@@ Line 962: / Line 744: @@
 doctrine is that:
-The public should . . . be able to act on the assumption that
+The public should . . . be able to act on the assumption that upon the expiration of the patent it will be free to use not only the invention claimed in the patent but also modifications
-upon the expiration of the patent it will be free to use not
-only the invention claimed in the patent but also modifications
 or variants which would have been obvious to those
 of ordinary skill in the art at the time the invention was
 made, taking into account the skill in the art and prior art
 other than the invention claimed in the issued patent.
-In re Zickendraht, 319 F.2d 225, 232, 138 USPQ
-, 27 (CCPA 1963) (Rich, J., concurring). Double
-patenting results when the right to exclude granted by
-a first patent is unjustly extended by the grant of a
-later issued patent or patents. In re Van Ornum, 686
-F.2d 937, 214 USPQ 761 (CCPA 1982).
 Before consideration can be given to the issue of
@@ Line 1,001: / Line 774: @@
 There are generally two types of double patenting
-rejections. One is the “same invention” type double
+rejections. One is the "'''same invention'''" type double
 patenting rejection based on 35 U.S.C. 101 which
-states in the singular that an inventor “may obtain
+states in the singular that an inventor "may obtain
-a
+a patent." The second is the "'''nonstatutory-type'''" double
-patent.” The second is the “nonstatutory-type” double
 patenting rejection based on a judicially created
 doctrine grounded in public policy and which is primarily
 intended to prevent prolongation of the patent
-term by prohibiting claims in a second patent not patentably
+term by '''prohibiting claims in a second patent not patentably
-distinguishing from claims in a first patent.
+distinguishing from claims in a first patent'''.
 Nonstatutory double patenting includes rejections
 based on either a one-way determination of obviousness
 or a two-way determination of obviousness.
 Nonstatutory double patenting could include a rejection
-which is not the usual “obviousness-type” double
+which is not the usual "obviousness-type" double
 patenting rejection. This type of double patenting
 rejection is rare and is limited to the particular facts of
-the case. In re Schneller, 397 F.2d 350, 158 USPQ
+the case.
-(CCPA 1968).
 Refer to Charts I-A, I-B, II-A, and II-B for an overview
@@ Line 1,034: / Line 799: @@
 to double patenting rejections in reexamination
 proceedings.
 Chart I-A. Conflicting Claims Between: Two ApplicationsChart I-A. Conflicting Claims Between: Two Applications
+Chart I-B. Conflicting Claims Between: Two ApplicationsChart I-B. Conflicting Claims Between: Two Applications
+Chart II-A. Conflicting Claims Between: Application and a PatentChart II-A. Conflicting Claims Between: Application and a Patent
+Chart II-B. Conflicting Claims Between: Application and a PatentChart II-B. Conflicting Claims Between: Application and a Patent
+======I. INSTANCES WHERE DOUBLE PATENTING ISSUE CAN BE RAISED======
+A double patenting issue may arise between two or
+more pending applications, or between one or more
+pending applications and a patent. A double patenting
+issue may likewise arise in a reexamination proceeding
+between the patent claims being reexamined and
+the claims of one or more applications and/or patents.
+Double patenting does not relate to international
+applications which have not yet entered the national
+stage in the United States.
+'''A. Between Issued Patent and One or More Applications'''
+Double patenting may exist between an issued
-Chart I-B. Conflicting Claims Between: Two ApplicationsChart I-B. Conflicting Claims Between: Two Applications
-Assignee Required to Either:
-(a) Name First Inventor of Conflicting
-Subject Matter under 102(f) or (g)
-or
-(b) Show Inventions Were Commonly
-Owned at Time of Applicant’s
-Invention
-Rejection under
-(f)/103(a)
-or 102(g)/103(a)
-based on evidence
-.21
-CHART I-B7.21
-(Provisional)2Rejection
-of Later Application
-under 102(e)/103(a)
-Provisional ObviousnessDouble-Patenting
-Rejection17.21.01 or 7.21.02CONFLICTING CLAIMS BETWEEN
-TWO APPLICATIONS8.33 & 8.35 or 8.37
-Provisional Obviousness
-Double-Patenting Rejection8.33 & 8.35 or 8.37
-Let Earlier Application
-Issue or Publish and Reject
-Later Application under
-(e)/103(a)
-.21
-Provisional Obviousness
-Double-Patenting
-Rejection18.33 & 8.35 or 8.37Same
-InventiveEntity
-And AndCurrently
-Commonly Owned:
-Different Inventive EntitiesRejection under
-(f)/103(a)
-or
-(g)/103(a)
-based on
-evidence(Provisional)2 Rejection
-of Later Application
-under 102(e)/103(a)
-.33 & 8.35 or 8.37
-Commonly Owned at Time
-of Applicant’s InventionNo Showing of Common Ownership at Time of Applicant’s Invention/No Joint Research Exclusion under 103(c)
-AndAndAnd/Or1 Where the reference is available as anticipatory prior art, a (provisional)2 rejection should be made under 102(e).
-Where the application being applied as a reference has NOT been published, the rejection under 102(e)/103(a) should be
-provisional.
-No Joint Research
-Exclusion under 103(c)
-No Joint Research
-Exclusion under 103(c)
-Proper Joint Research
-Exclusion under 103(c)
-DIFFERENT INVENTIONS(Not Patentably Distinct)
-Different Inventive
-Entities, At Least One
-Common Inventor, No
-Common Assignee
-No Common
-Assignee or
-Inventor
-.28
-Provisional Obviousness
-Double-Patenting
-Rejection7.21.01 or 7.21.02
-Proper Joint Research
-Exclusion under 103(c)
-Chart II-A. Conflicting Claims Between: Application and a PatentChart II-A. Conflicting Claims Between: Application and a Patent
-Chart II-B. Conflicting Claims Between: Application and a PatentChart II-B. Conflicting Claims Between: Application and a Patent
-Assignee Required to Either:
-(a) Name First Inventor of Conflicting
-Subject Matter under 102(f) or (g)
-or
-(b) Show Inventions Were Commonly
-Owned at Time of Applicant’s
-Invention
-Rejection under
-(f)/103(a)
-or 102(g)/103(a)
-based on evidence
-.21
-CHART II-BObviousness Double-
-Patenting Rejection1Rejection under
-(e)/103(a)
-.21.02 8.33 & 8.34 or 8.36
-Obviousness Double-
-Patenting Rejection8.33 & 8.34 or 8.36
-Rejection under
-(e)/103(a)
-.21
-Obviousness Double-
-Patenting Rejection18.33 & 8.34 or 8.36Same
-InventiveEntity
-And AndCurrently
-Commonly Owned:
-Different Inventive EntitiesRejection under
-(e)/103(a)
-Commonly Owned at Time of Applicant’s Invention
-No Showing of Common Ownership at Time of Applicant’s Invention/No Joint Research Exclusion under 103(c)
-AndAndAnd/OrNo Joint Research
-Exclusion under 103(c)
-No Joint Research
-Exclusion under 103(c)
-Proper Joint Research
-Exclusion under 103(c)
-DIFFERENT INVENTIONS(Not Patentably Distinct)
-Different Inventive
-Entities, At Least One
-Common Inventor, No
-Common Assignee
-No Common
-Assignee or
-Inventor
-Obviousness Double-
-Patenting Rejection
-Proper Joint Research
-Exclusion under 103(c)
-CONFLICTING CLAIMS BETWEEN
-AN APPLICATION AND A PATENTRejection under
-(f)/103(a)
-or
-(g)/103(a)
-based on
-evidence7.21
-.28
-.21.02 8.33 & 8.34 or 8.36
-Where the reference is available as anticipatory prior art, a rejection should be made under 102(e).
-I.INSTANCES WHERE DOUBLE PATENTING
-ISSUE CAN BE RAISED
-A double patenting issue may arise between two or
-more pending applications, or between one or more
-pending applications and a patent. A double patenting
-issue may likewise arise in a reexamination proceeding
-between the patent claims being reexamined and
-the claims of one or more applications and/or patents.
-Double patenting does not relate to international
-applications which have not yet entered the national
-stage in the United States.
-A.Between Issued Patent and One or More
-Applications
-Double patenting may exist between an issued
 patent and an application filed by the same inventive
 entity, or by a different inventive entity having a common
@@ Line 1,234: / Line 836: @@
 of the rights granted in the first patent.
-B.Between Copending Applications—Provisional
+'''B. Between Copending Applications—Provisional Rejections'''
-Rejections
 Occasionally, the examiner becomes aware of two
@@ Line 1,298: / Line 899: @@
 withdrawn without a terminal disclaimer.
+Where there are three applications containing
-Where there are three applications containing
 claims that conflict such that an ODP rejection is
 made in each application based upon the other two, it
@@ Line 1,316: / Line 912: @@
 link the other two applications to each other.
-.Statutory Double Patenting Rejections (35
+. Statutory Double Patenting Rejections (35 U.S.C. 101)
-U.S.C. 101)
 A terminal disclaimer cannot be filed to obviate a
@@ Line 1,345: / Line 940: @@
 patent.
-C.Between One or More Applications and a
+'''C. Between One or More Applications and a Published Application - Provisional Rejections'''
-Published Application - Provisional Rejections
 Double patenting may exist where a published
@@ Line 1,365: / Line 959: @@
 double patenting rejections in subsection B. above.
-D.Reexamination Proceedings
+'''D. Reexamination Proceedings'''
 A double patenting issue may raise a substantial
@@ Line 1,380: / Line 974: @@
 double patenting was not addressed during original
 prosecution, it may be considered during reexamination.
 Double patenting may exist where a reference
@@ Line 1,404: / Line 997: @@
 rejections in reexamination proceedings. Subsection
 II., below, describes situations wherein a double pat
 enting rejection would be appropriate. In particular,
 see paragraph II.B.1. for the analysis required to
@@ Line 1,416: / Line 1,002: @@
 patenting rejection.
-II.REQUIREMENTS OF A DOUBLE PATENTING
+======II. REQUIREMENTS OF A DOUBLE PATENTING REJECTION (INCLUDING PROVISIONAL REJECTIONS)======
-REJECTION (INCLUDING PROVISIONAL
-REJECTIONS)
 When a double patenting rejection is appropriate, it
@@ Line 1,441: / Line 1,025: @@
 invention drawn to identical subject matter. Miller v.
 Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel,
+F.2d 438, 164 USPQ 619 (CCPA 1970); and In
-F.2d 438, 164 USPQ 619 (CCPA 1970); and In
 re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA
 ). Where the claims of an application are not the
@@ Line 1,455: / Line 1,038: @@
 determine the following:
-(A)Whether a double patenting rejection is prohibited
+(A) Whether a double patenting rejection is prohibited
 by the third sentence of 35 U.S.C. 121 (see
 MPEP § 804.01; if such a prohibition applies, a double
 patenting rejection cannot be made);
-(B)Whether a statutory basis exists; and
+(B) Whether a statutory basis exists; and
-(C)Whether a nonstatutory basis exists.
+(C) Whether a nonstatutory basis exists.
 Each determination must be made on the basis of
@@ Line 1,486: / Line 1,069: @@
 ).
-A.Statutory Double Patenting — 35 U.S.C. 101
+A. Statutory Double Patenting — 35 U.S.C. 101
 In determining whether a statutory basis for a double
@@ Line 1,493: / Line 1,076: @@
 U.S.C. 101 prevents two patents from issuing on
-the same invention. “Same invention” means identical
+the same invention. "Same invention" means identical
 subject matter. Miller v. Eagle Mfg. Co., 151 U.S. 186
 (1984); In re Vogel, 422 F.2d 438, 164 USPQ 619
@@ Line 1,518: / Line 1,101: @@
 define the same invention. Thus, a claim reciting a
 widget having a length of “36 inches” defines the
 same invention as a claim reciting the same widget
 having a length of “3 feet.”
@@ Line 1,532: / Line 1,109: @@
 absence of a terminal disclaimer. Id.
-Form paragraphs 8.30 and 8.31 (between an issued
+If the “same invention” is not being claimed twice,
-patent and one or more applications) or 8.32 (provisional
+an analysis must be made to determine whether a nonstatutory
-rejections) may be used to make statutory double
+basis for double patenting exists.
-patenting rejections.
-¶ 8.30 35 U.S.C. 101, Statutory Basis for Double Patenting
+B.Nonstatutory Double Patenting
-“Heading” Only
-A rejection based on double patenting of the “same invention”
+A rejection based on nonstatutory double patenting
-type finds its support in the language of 35 U.S.C. 101 which
+is based on a judicially created doctrine grounded in
-states that “whoever invents or discovers any new and useful process...
+public policy so as to prevent the unjustified or
-may obtain a patent therefor...” (Emphasis added). Thus,
+improper timewise extension of the right to exclude
-the term “same invention,” in this context, means an invention
+granted by a patent.
-drawn to identical subject matter. See Miller v. Eagle Mfg. Co.,
-U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619
-(CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330
-(CCPA 1957).
-A statutory type (35 U.S.C. 101) double patenting rejection can
+. Obviousness-Type
-be overcome by canceling or amending the conflicting claims so
-they are no longer coextensive in scope. The filing of a terminal
-disclaimer cannot overcome a double patenting rejection based
-upon 35 U.S.C. 101.
-Examiner Note:
+A nonstatutory obviousness-type double patenting
+rejection is appropriate where the conflicting claims
-The above form paragraph must be used as a heading for all
+are not identical, but at least one examined application
-subsequent double patenting rejections of the statutory (same
+claim is not patentably distinct from the reference
-invention) type using either of form paragraphs 8.31 or 8.32.
+claim(s) because the examined application claim is
+either anticipated by, or would have been obvious
-¶ 8.31 Rejection, 35 U.S.C. 101, Double Patenting
+over, the reference claim(s). See, e.g., In re Berg, 140
+F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re
-Claim [1] rejected under 35 U.S.C. 101 as claiming the same
+Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir.
-invention as that of claim [2] of prior U.S. Patent No. [3]. This is a
+); and In re Longi, 759 F.2d 887, 225 USPQ 645
-double patenting rejection.
+(Fed. Cir. 1985). In determining whether a nonstatutory
+basis exists for a double patenting rejection, the
-Examiner Note:
+first question to be asked is — does any claim in the
+application define an invention that is anticipated by,
-.This form paragraph must be preceded by form paragraph
+or is merely an obvious variation of , an invention
-.30 and is used only for double patenting rejections of the same
+claimed in the patent? If the answer is yes, then an
-invention claimed in an earlier patent; that is, the “scope” of the
+“obviousness-type” nonstatutory double patenting
-inventions claimed is identical.
+rejection may be appropriate. Obviousness-type double
+patenting requires rejection of an application
-.If the conflicting claims are in another copending application,
+claim when the claimed subject matter is not patentably
-do not use this form paragraph. A provisional double patenting
+distinct from the subject matter claimed in a
-rejection should be made using form paragraph 8.32.
+commonly owned patent, or a non-commonly owned
+patent but subject to a joint research agreement as set
-.Do not use this form paragraph for nonstatutory-type double
+forth in 35 U.S.C. 103(c)(2) and (3), when the issuance
-patenting rejections. If nonstatutory type, use appropriate form
+of a second patent would provide unjustified
-paragraphs 8.33 to 8.39.
+extension of the term of the right to exclude granted
+by a patent. See Eli Lilly & Co. v. Barr Labs., Inc.,
-.This form paragraph may be used where the conflicting
+F.3d 955, 58 USPQ2d 1869 (Fed. Cir. 2001); Ex
-patent and the pending application are:
+parte Davis, 56 USPQ2d 1434, 1435-36 (Bd. Pat.
+App. & Inter. 2000).
-(a)by the same inventive entity, or
+A double patenting rejection of the obviousness-
+type, if not based on an anticipation rationale, is
+“analogous to [a failure to meet] the nonobviousness
+requirement of 35 U.S.C. 103” except that the patent
+principally underlying the double patenting rejection
+is not considered prior art. In re Braithwaite, 379 F.2d
+, 154 USPQ 29 (CCPA 1967). Therefore, the
+analysis employed in an obviousness-type double patenting
+rejection parallels the guidelines for analysis of
+a 35 U.S.C. 103 obviousness determination. In re
+Braat, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir.
+); In re Longi, 759 F.2d 887, 225 USPQ 645
+(Fed. Cir. 1985).
-(b)by a different inventive entity and are commonly assigned
+Since the analysis employed in an obviousness-type
-even though there is no common inventor, or
+double patenting determination parallels the guidelines
+for a 35 U.S.C. 103(a) rejection, the factual
+inquiries set forth in Graham v. John Deere Co., 383
+U.S. 1, 148 USPQ 459 (1966), that are applied for
+establishing a background for determining obviousness
+under 35 U.S.C. 103 are employed when making
+an obvious-type double patenting analysis. These factual
+inquiries are summarized as follows:
-(c)not commonly assigned but have at least one common inventor,
+(A)Determine the scope and content of a patent
-or
+claim relative to a claim in the application at issue;
-(d) made as a result of activities undertaken within the scope of
+(B)Determine the differences between the scope
-a joint research agreement.
+and content of the patent claim as determined in (A)
+and the claim in the application at issue;
-.In bracket 3, insert the number of the conflicting patent.
+(C)Determine the level of ordinary skill in the
+pertinent art; and
-.If the patent is to a different inventive entity and is commonly
+(D)Evaluate any objective indicia of nonobviousness.
-assigned with the application, form paragraph 8.27 should
-additionally be used to require the assignee to name the first
-inventor.
-.If evidence is of record to indicate that the patent is prior art
+The conclusion of obviousness-type double patenting
-under either 35 U.S.C. 102(f) or (g), a rejection should also be
+is made in light of these factual determinations.
-made using form paragraphs 7.15 and/or 7.19 in addition to this
-double patenting rejection.
-.If the patent is to a different inventive entity from the application
+Any obviousness-type double patenting rejection
-and the effective U.S. filing date of the patent antedates the
+should make clear:
-effective filing date of the application, a rejection under 35 U.S.C.
-(e) should additionally be made using form paragraph 7.15.02.
-¶ 8.32 Provisional Rejection, 35 U.S.C. 101, Double
+(A)The differences between the inventions
-Patenting
+defined by the conflicting claims — a claim in the
+patent compared to a claim in the application; and
-Claim [1] provisionally rejected under 35 U.S.C. 101 as claiming
+(B)The reasons why a person of ordinary skill in
-the same invention as that of claim [2] of copending Application
+the art would conclude that the invention defined in
-No. [3]. This is a provisional double patenting rejection since
+the claim at issue is anticipated by, or would have
-the conflicting claims have not in fact been patented.
+been an obvious variation of , the invention defined
+in a claim in the patent.
-Examiner Note:
+When considering whether the invention defined in
+a claim of an application would have been an obvious
+variation of the invention defined in the claim of a
+patent, the disclosure of the patent may not be used as
+prior art. General Foods Corp. v. Studiengesellschaft
+Kohle mbH, 972 F.2d 1272, 1279, 23 USPQ2d 1839,
+(Fed. Cir. 1992). This does not mean that one is
+precluded from all use of the patent disclosure.
-.This form paragraph must be preceded by form paragraph
+The specification can be used as a dictionary to
-.30 and is used only for double patenting rejections of the sameinvention claimed in another copending application; that is, the
+learn the meaning of a term in the patent claim. Toro
-scope of the claimed inventions is identical.
+Co. v. White Consol. Indus., Inc., 199 F.3d 1295,
+, 53 USPQ2d 1065, 1067 (Fed. Cir.
-.If the conflicting claims are from an issued patent, do not use
+)(“[W]ords in patent claims are given their ordinary
-this paragraph. See form paragraph 8.31.
+meaning in the usage of the field of the invention,
+unless the text of the patent makes clear that a
-.Do not use this paragraph for nonstatutory-type double patenting
+word was used with a special meaning.”); Renishaw
-rejections. See form paragraphs 8.33 to 8.39.
+PLC v. Marposs Societa' per Azioni, 158 F.3d 1243,
+, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998)
-.This form paragraph may be used where the conflicting
+(“Where there are several common meanings for a
-claims are in a copending application that is:
+claim term, the patent disclosure serves to point away
+from the improper meanings and toward the proper
-(a)by the same inventive entity, or
+meanings.”). See also MPEP § 2111.01. Further, those
+portions of the specification which provide support
-(b)by a different inventive entity and is commonly assigned
+for the patent claims may also be examined and considered
-even though there is no common inventor, or
+when addressing the issue of whether a claim
+in the application defines an obvious variation of an
-(c)not commonly assigned but has at least one common inventor,
+invention claimed in the patent. In re Vogel, 422 F.2d
-or
+, 441-42, 164
+USPQ 619, 622 (CCPA 1970). The
-(d)made as a result of activities undertaken within the scope of a
+court in Vogel recognized “that it is most difficult, if
-joint research agreement.
+not meaningless, to try to say what is or is not an obvious
+variation of a claim,” but that one can judge
-.Form paragraph 8.28 may be used along with this form paragraph
+whether or not the invention claimed in an application
-to resolve any remaining issues relating to priority under 35
+is an obvious variation of an embodiment disclosed in
-U.S.C. 102(f) or (g).
+the patent which provides support for the patent
+claim. According to the court, one must first “determine
-.In bracket 3, insert the number of the conflicting application.
+how much of the patent disclosure pertains to
+the invention claimed in the patent” because only
+“[t]his portion of the specification supports the patent
+claims and may be considered.” The court pointed out
+that “this use of the disclosure is not in contravention
+of the cases forbidding its use as prior art, nor is it
+applying the patent as a reference under 35 U.S.C.
+, since only the disclosure of the invention
+claimed in the patent may be examined.”
-.A provisional double patenting rejection should also be made
+(a)One-Way Obviousness
-in the conflicting application.
-.If the copending application is by a different inventive entity
+If the application at issue is the later filed application
-and is commonly assigned, form paragraph 8.27 should additionally
+or both are filed on the same day, only a one-way
-be used to require the assignee to name the first inventor.
+determination of obviousness is needed in resolving
+the issue of double patenting, i.e., whether the invention
-.If evidence is also of record to show that either application is
+defined in a claim in the application would have
-prior art unto the other under 35 U.S.C. 102(f) or (g), a rejection
+been anticipated by, or an obvious variation of ,
-should also be made in the other application using form paragraphs
+the invention defined in a claim in the patent. See,
-.15 and/or 7.19 in addition to this provisional double patenting
+e.g., In re Berg, 140 F.3d 1438, 46 USPQ2d 1226
-rejection.
+(Fed. Cir. 1998) (the court applied a one-way test
+where both applications were filed the same day). If a
-.If the applications do not have the same inventive entity and
+claimed invention in the application would have been
-effective U.S. filing date, a provisional 102(e) rejection should
+obvious over a claimed invention in the patent, there
+would be an unjustified timewise extension of the
+patent and an obvious-type double patenting rejection
+is proper. Unless a claimed invention in the application
+would have been anticipated by, or obvious
+over a claimed invention in the patent, no double patenting
+rejection of the obvious-type should be made,
-additionally be made in the later-filed application using form
+but this does not necessarily preclude a rejection
-paragraph 7.15.01.
+based on another type of nonstatutory double patenting
+(see MPEP § 804, paragraph II.B.2. below).
-If the “same invention” is not being claimed twice,
+Similarly, even if the application at issue is the earlier
-an analysis must be made to determine whether a nonstatutory
+filed application, only a one-way determination of
-basis for double patenting exists.
+obviousness is needed to support a double patenting
+rejection in the absence of a finding: (A) of administrative
+delay on the part of the Office causing delay in
+prosecution of the earlier filed application; and (B)
+that applicant could not have filed the conflicting
+claims in a single (i.e., the earlier filed) application.
+See MPEP § 804, paragraph II.B.1.(b) below.
-B.Nonstatutory Double Patenting
+(b)Two-Way Obviousness
-A rejection based on nonstatutory double patenting
+If the patent is the later filed application, the question
-is based on a judicially created doctrine grounded in
+of whether the timewise extension of the right to
-public policy so as to prevent the unjustified or
+exclude granted by a patent is justified or unjustified
-improper timewise extension of the right to exclude
+must be addressed. A two-way test is to be applied
-granted by a patent. In re Goodman, 11 F.3d 1046,
+only when the applicant could not have filed the
+claims in a single application and there is administrative
-USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759
+delay. In re Berg, 46 USPQ2d 1226 (Fed. Cir.
-F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van
+) (“The two-way exception can only apply when
-Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982);
+the applicant could not avoid separate filings, and
-In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA
+even then, only if the PTO controlled the rates of prosecution
-); In re Thorington, 418 F.2d 528, 163 USPQ 644
+to cause the later filed species claims to issue
-(CCPA 1969); In re White, 405 F.2d 904, 160 USPQ
+before the claims for a genus in an earlier application
-(CCPA 1969); In re Schneller, 397 F.2d 350, 158
-USPQ 210 (CCPA 1968); In re Sarett, 327 F.2d 1005,
-USPQ 474 (CCPA 1964).
-.Obviousness-Type
+In Berg’s case, the two applications could have
+been filed as one, so it is irrelevant to our disposition
-A nonstatutory obviousness-type double patenting
+who actually controlled the respective rates of prosecution.”).
-rejection is appropriate where the conflicting claims
+In the absence of administrative delay, a
-are not identical, but at least one examined application
+one-way test is appropriate. In re Goodman, 11 F.3d
-claim is not patentably distinct from the reference
+, 29 USPQ2d 2010 (Fed. Cir. 1993) (applicant’s
-claim(s) because the examined application claim is
+voluntary decision to obtain early issuance of claims
-either anticipated by, or would have been obvious
+directed to a species and to pursue prosecution of previously
-over, the reference claim(s). See, e.g., In re Berg, 140
+rejected genus claims in a continuation is a
-F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re
+considered election to postpone by the applicant and
-Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir.
+not administrative delay). Unless the record clearly
-); and In re Longi, 759 F.2d 887, 225 USPQ 645
+shows administrative delay by the Office and that
-(Fed. Cir. 1985). In determining whether a nonstatutory
+applicant could not have avoided filing separate applications,
-basis exists for a double patenting rejection, the
+the examiner may use the one-way obviousness
-first question to be asked is — does any claim in the
+determination and shift the burden to applicant to
-application define an invention that is anticipated by,
+show why a two-way obviousness determination is
-or is merely an obvious variation of , an invention
+required.
-claimed in the patent? If the answer is yes, then an
-“obviousness-type” nonstatutory double patenting
-rejection may be appropriate. Obviousness-type double
-patenting requires rejection of an application
-claim when the claimed subject matter is not patentably
-distinct from the subject matter claimed in a
-commonly owned patent, or a non-commonly owned
-patent but subject to a joint research agreement as set
-forth in 35 U.S.C. 103(c)(2) and (3), when the issuance
-of a second patent would provide unjustified
-extension of the term of the right to exclude granted
-by a patent. See Eli Lilly & Co. v. Barr Labs., Inc.,
-F.3d 955, 58 USPQ2d 1869 (Fed. Cir. 2001); Ex
-parte Davis, 56 USPQ2d 1434, 1435-36 (Bd. Pat.
-App. & Inter. 2000).
-A double patenting rejection of the obviousness-
+When making a two-way obviousness determination
-type, if not based on an anticipation rationale, is
+where appropriate, it is necessary to apply the
-“analogous to [a failure to meet] the nonobviousness
+Graham obviousness analysis twice, once with the
-requirement of 35 U.S.C. 103” except that the patent
+application claims as the claims in issue, and once
-principally underlying the double patenting rejection
+with the patent claims as the claims in issue. Where a
-is not considered prior art. In re Braithwaite, 379 F.2d
+two-way obviousness determination is required, an
-, 154 USPQ 29 (CCPA 1967). Therefore, the
+obvious-type double patenting rejection is appropriate
-analysis employed in an obviousness-type double patenting
+only where each analysis compels a conclusion that
-rejection parallels the guidelines for analysis of
+the invention defined in the claims in issue is an obvious
-a 35 U.S.C. 103 obviousness determination. In re
+variation of the invention defined in a claim in the
-Braat, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir.
+other application/patent. If either analysis does not
-); In re Longi, 759 F.2d 887, 225 USPQ 645
+compel a conclusion of obviousness, no double patenting
-(Fed. Cir. 1985).
+rejection of the obvious-type is made, but this
+does not necessarily preclude a nonstatutory double
+patenting rejection based on the fundamental reason
+to prevent unjustified timewise extension of the right
+to exclude granted by a patent. In re Schneller,
+F.2d 350, 158 USPQ 210 (CCPA 1968).
-Since the analysis employed in an obviousness-type
+Although a delay in the processing of applications
-double patenting determination parallels the guidelines
+before the Office that would cause patents to issue in
-for a 35 U.S.C. 103(a) rejection, the factual
+an order different from the order in which the applications
-inquiries set forth in Graham v. John Deere Co., 383
+were filed is a factor to be considered in determining
-U.S. 1, 148 USPQ 459 (1966), that are applied for
+whether a one-way or two-way obviousness
-establishing a background for determining obviousness
+determination is necessary to support a double patenting
-under 35 U.S.C. 103 are employed when making
+rejection, it may be very difficult to assess
-an obvious-type double patenting analysis. These factual
+whether an applicant or the administrative process is
-inquiries are summarized as follows:
+primarily responsible for a delay in the issuance of a
+patent. On the one hand, it is applicant who presents
-(A)Determine the scope and content of a patent
+claims for examination and pays the issue fee. On the
-claim relative to a claim in the application at issue;
+other hand, the resolution of legitimate differences of
+opinion that must be resolved in an appeal process or
-(B)Determine the differences between the scope
+the time spent in an interference proceeding can significantly
-and content of the patent claim as determined in (A)
+delay the issuance of a patent. Nevertheless,
-and the claim in the application at issue;
+the reasons for the delay in issuing a patent have been
+considered in assessing the propriety of a double patenting
-(C)Determine the level of ordinary skill in the
+rejection. Thus, in Pierce v. Allen B. DuMont
-pertinent art; and
+Laboratories, Inc., 297 F.2d 323, 131 USPQ 340 (3d.
+Cir. 1961), the court found that administrative delay
-(D)Evaluate any objective indicia of nonobviousness.
+may justify the extension of patent rights beyond
+years but “a considered election to postpone acquisition
+of the broader [patent after the issuance of the
-The conclusion of obviousness-type double patenting
+later filed application] should not be tolerated.” In
-is made in light of these factual determinations.
+Pierce, the patentee elected to participate in an interference
+proceeding [after all claims in the application
-Any obviousness-type double patenting rejection
+had been determined to be patentable] whereby the
-should make clear:
+issuance of the broader patent was delayed by more
+than 7 years after the issuance of the narrower patent.
-(A)The differences between the inventions
+The court determined that the second issued patent
-defined by the conflicting claims — a claim in the
+was invalid on the ground of double patenting. Similarly,
-patent compared to a claim in the application; and
+in In re Emert, 124 F.3d 1458, 44 USPQ2d 1149
+(Fed. Cir. 1997), the court found that the one-way test
-(B)The reasons why a person of ordinary skill in
+is appropriate where applicants, rather than the Office,
-the art would conclude that the invention defined in
+had significant control over the rate of prosecution of
-the claim at issue is anticipated by, or would have
+the application at issue. In support of its finding that
+the applicants were responsible for delaying prosecution
+of the application during the critical period, the
+court noted that the applicants had requested and
+received numerous time extensions in various filings.
+More importantly, the court noted, after initially
+receiving an obviousness rejection of all claims,
-been an obvious variation of , the invention defined
+applicants had waited the maximum period to reply (6
-in a claim in the patent.
+months), then abandoned the application in favor of a
+substantially identical continuation application, then
-When considering whether the invention defined in
+received another obviousness rejection of all claims,
-a claim of an application would have been an obvious
+again waited the maximum period to reply, and then
-variation of the invention defined in the claim of a
+again abandoned the application in favor of a second
-patent, the disclosure of the patent may not be used as
+continuation application substantially identical to the
-prior art. General Foods Corp. v. Studiengesellschaft
+original filing. On the other hand, in General Foods
-Kohle mbH, 972 F.2d 1272, 1279, 23 USPQ2d 1839,
+Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d
-(Fed. Cir. 1992). This does not mean that one is
+, 23 USPQ2d 1839 (Fed. Cir. 1992), the court
-precluded from all use of the patent disclosure.
+elected not to hold the patentee accountable for a
+delay in issuing the first filed application until after
+the second filed application issued as a patent, even
+where the patentee had intentionally refiled the first
+filed application as a continuation-in-part after receiving
+a Notice of Allowance indicating that all claims
+presented were patentable. Similarly, where, through
+no fault of the applicant, the claims in a later
+filed
+application issue first, an obvious-type double
+patenting rejection is improper, in the absence of a
+two-way obviousness determination, because the
+applicant does not have complete control over the rate
+of progress of a patent application through the Office.
+In re Braat, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir.
+). While acknowledging that allowance of the
+claims in the earlier filed application would result in
+the timewise extension of an invention claimed in the
+patent, the court was of the view that the extension
+was justified under the circumstances in this case,
+indicating that a double patenting rejection would be
+proper only if the claimed inventions were obvious
+over each other — a two-way obviousness determination.
+.Another Type of Nonstatutory Double
+Patenting Rejection
-The specification can be used as a dictionary to
+There are some unique circumstances where it has
-learn the meaning of a term in the patent claim. Toro
+been recognized that another type of nonstatutory
-Co. v. White Consol. Indus., Inc., 199 F.3d 1295,
+double patenting rejection is applicable even where
-, 53 USPQ2d 1065, 1067 (Fed. Cir.
+the inventions claimed in two or more applications/
-)(“[W]ords in patent claims are given their ordinary
+patents are considered nonobvious over each other.
-meaning in the usage of the field of the invention,
+These circumstances are illustrated by the facts before
-unless the text of the patent makes clear that a
+the court in In re Schneller, 397 F.2d 350, 158 USPQ
-word was used with a special meaning.”); Renishaw
+(CCPA 1968). In affirming the double patenting
-PLC v. Marposs Societa' per Azioni, 158 F.3d 1243,
+rejection, the court summed up the situation:
-, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998)
-(“Where there are several common meanings for a
-claim term, the patent disclosure serves to point away
-from the improper meanings and toward the proper
-meanings.”). See also MPEP § 2111.01. Further, those
-portions of the specification which provide support
-for the patent claims may also be examined and considered
-when addressing the issue of whether a claim
-in the application defines an obvious variation of an
-invention claimed in the patent. In re Vogel, 422 F.2d
-, 441-42, 164
-USPQ 619, 622 (CCPA 1970). The
-court in Vogel recognized “that it is most difficult, if
-not meaningless, to try to say what is or is not an obvious
-variation of a claim,” but that one can judge
-whether or not the invention claimed in an application
-is an obvious variation of an embodiment disclosed in
-the patent which provides support for the patent
-claim. According to the court, one must first “determine
-how much of the patent disclosure pertains to
-the invention claimed in the patent” because only
-“[t]his portion of the specification supports the patent
-claims and may be considered.” The court pointed out
-that “this use of the disclosure is not in contravention
-of the cases forbidding its use as prior art, nor is it
-applying the patent as a reference under 35 U.S.C.
-, since only the disclosure of the invention
-claimed in the patent may be examined.”
-(a)One-Way Obviousness
+in appellant’s own terms: The combination ABC was old.
+He made two improvements on it, (1) adding X and (2)
+adding Y, the result still being a unitary clip of enhanced
+utility. While his invention can be practiced in the forms
+ABCX or ABCY, the greatest advantage and best mode of
+practicing the invention as disclosed is obtained by using
+both inventions in the combination ABCXY. His first
+application disclosed ABCXY and other matters. He
+obtained a patent claiming [a clip comprising] BCX and
+ABCX, . . . so claiming these combinations as to cover
+them no matter what other feature is incorporated in
+them, thus covering effectively ABCXY. He now, many
+years later, seeks more claims directed to ABCY and
+ABCXY. Thus, protection he already had would be
+extended, albeit in somewhat different form, for several
+years beyond the expiration of his patent, were we to
+reverse. 397 F.2d at 355-56, 158 USPQ at 216 (emphasis in
+original).
-If the application at issue is the later filed application
+The court recognized that “there is no double patenting
-or both are filed on the same day, only a one-way
+in the sense of claiming the same invention
-determination of obviousness is needed in resolving
+because ABCX and ABCY are, in the technical patent
-the issue of double patenting, i.e., whether the invention
+law sense, different inventions. The rule against ‘double
-defined in a claim in the application would have
+patenting,’ however, is not so circumscribed. The
-been anticipated by, or an obvious variation of ,
+fundamental reason for the rule is to prevent unjustified
-the invention defined in a claim in the patent. See,
+timewise extension of the right to exclude granted
-e.g., In re Berg, 140 F.3d 1438, 46 USPQ2d 1226
+by a patent no matter how the extension is brought
-(Fed. Cir. 1998) (the court applied a one-way test
+about. To . . . prevail here, appellant has the burden of
-where both applications were filed the same day). If a
+establishing that the invention claimed in his patent is
-claimed invention in the application would have been
+‘independent and distinct’ from the invention of the
-obvious over a claimed invention in the patent, there
+appealed claims…appellant has clearly not established
-would be an unjustified timewise extension of the
+the independent and distinct character of the
-patent and an obvious-type double patenting rejection
+inventions of the appealed claims.” 397 F.2d at 354-
-is proper. Unless a claimed invention in the application
+, 158 USPQ at 214-15 (emphasis in original). The
-would have been anticipated by, or obvious
+court observed:
-over a claimed invention in the patent, no double patenting
-rejection of the obvious-type should be made,
-but this does not necessarily preclude a rejection
-based on another type of nonstatutory double patenting
-(see MPEP § 804, paragraph II.B.2. below).
-Similarly, even if the application at issue is the earlier
+The controlling fact is that patent protection for the
-filed application, only a one-way determination of
+clips, fully disclosed in and covered by the claims of the
-obviousness is needed to support a double patenting
+patent, would be extended by allowance of the appealed
-rejection in the absence of a finding: (A) of administrative
+claims. Under the circumstance of the instant case,
-delay on the part of the Office causing delay in
+wherein we find no valid excuse or mitigating circumstances
-prosecution of the earlier filed application; and (B)
+making it either reasonable or equitable to make
-that applicant could not have filed the conflicting
+an exception, and wherein there is no terminal disclaimer,
-claims in a single (i.e., the earlier filed) application.
+the rule against “double patenting” must be applied.
-See MPEP § 804, paragraph II.B.1.(b) below.
-Form paragraph 8.33 and the appropriate one of
+F.2d at 355, 158 USPQ at 215.
-form paragraphs 8.34 - 8.37 may be used to make
-nonstatutory rejections of the obvious-type.
-(b)Two-Way Obviousness
+The decision in In re Schneller did not establish a
+rule of general application and thus is limited to the
+particular set of facts set forth in that decision. The
+court in Schneller cautioned “against the tendency to
+freeze into rules of general application what, at best,
+are statements applicable to particular fact situations.”
+Schneller, 397 F.2d at 355, 158 USPQ at 215. Nonstatutory
+double patenting rejections based on
+Schneller will be rare. The Technology Center (TC)
+Director must approve any nonstatutory double patenting
+rejections based on Schneller. If an examiner
+determines that a double patenting rejection based on
+Schneller is appropriate in his or her application, the
+examiner should first consult with his or her supervisory
+patent examiner (SPE). If the SPE agrees with
+the examiner then approval of the TC Director must
+be obtained before such a nonstatutory double patenting
+rejection can be made.
- If the patent is the later filed application, the question
+A fact situation similar to that in Schneller was presented
-of whether the timewise extension of the right to
+to a Federal Circuit panel in In re Kaplan,
-exclude granted by a patent is justified or unjustified
-must be addressed. A two-way test is to be applied
+F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986).
-only when the applicant could not have filed the
+Kaplan had been issued a patent on a process of making
-claims in a single application and there is administrative
+chemicals in the presence of an organic solvent.
-delay. In re Berg, 46 USPQ2d 1226 (Fed. Cir.
+Among the organic solvents disclosed and claimed as
-) (“The two-way exception can only apply when
+being useful were tetraglyme and sulfolane. One
-the applicant could not avoid separate filings, and
+unclaimed example in the patent was specifically
-even then, only if the PTO controlled the rates of prosecution
+directed to a mixture of these two solvents. The
-to cause the later filed species claims to issue
+claims in the application to Kaplan and Walker, the
-before the claims for a genus in an earlier application
+application before the Office, were directed to essentially
+the same chemical process, but requiring the use
+of the solvent mixture of tetraglyme and sulfolane. In
+reversing the double patenting rejection, the court
+stated that the mere fact that the broad process claim
+of the patent requiring an organic solvent reads on or
+“dominates” the narrower claim directed to basically
+the same process using a specific solvent mixture
+does not, per se, justify a double patenting rejection.
+The court also pointed out that the double patenting
+rejection improperly used the disclosure of the joint
+invention (solvent mixture) in the Kaplan patent specification
+as though it were prior art.
+A significant factor in the Kaplan case was that the
+broad invention was invented by Kaplan, and the narrow
+invention (i.e., using a specific combination of
+solvents) was invented by Kaplan and Walker. Since
+these applications (as the applications in Braat) were
+filed before the Patent Law Amendments Act of 1984
+(Pub. Law 98-622, November 8, 1984) amending 35
+U.S.C. 116 to expressly authorize filing a patent application
+in the names of joint inventors who did not
+necessarily make a contribution to the invention
+defined in each claim in the patent, it was necessary to
+file multiple applications to claim both the broad and
+narrow inventions. Accordingly, there was a valid reason,
+driven by statute, why the claims to the specific
+solvent mixture were not presented for examination in
+the Kaplan patent application.
+Each double patenting situation must be decided on
+its own facts.
+.Design/Plant — Utility Situations
+Double patenting issues may be raised where an
+applicant has filed both a utility patent application (35
-.
+U.S.C. 111) and either an application for a plant
+patent (35 U.S.C. 161) or an application for a design
-. . In Berg’s case, the two applications could have
+patent (35 U.S.C. 171). In general, the same double
-been filed as one, so it is irrelevant to our disposition
+patenting principles and criteria that are applied in
-who actually controlled the respective rates of prosecution.”).
+utility-utility situations are applied to utility-plant or
-In the absence of administrative delay, a
+utility-design situations. Double patenting rejections
-one-way test is appropriate. In re Goodman, 11 F.3d
+in utility-plant situations may be made in appropriate
-, 29 USPQ2d 2010 (Fed. Cir. 1993) (applicant’s
+circumstances.
-voluntary decision to obtain early issuance of claims
-directed to a species and to pursue prosecution of previously
-rejected genus claims in a continuation is a
-considered election to postpone by the applicant and
-not administrative delay). Unless the record clearly
-shows administrative delay by the Office and that
-applicant could not have avoided filing separate applications,
-the examiner may use the one-way obviousness
-determination and shift the burden to applicant to
-show why a two-way obviousness determination is
-required.
-When making a two-way obviousness determination
+Although double patenting is rare in the context of
-where appropriate, it is necessary to apply the
+utility versus design patents, a double patenting rejection
-Graham obviousness analysis twice, once with the
+of a pending design or utility application can be
-application claims as the claims in issue, and once
+made on the basis of a previously issued utility or
-with the patent claims as the claims in issue. Where a
+design patent, respectively. Carman Indus. Inc. v.
-two-way obviousness determination is required, an
+Wahl, 724 F.2d 932, 220 USPQ 481 (Fed. Cir. 1983).
-obvious-type double patenting rejection is appropriate
+The rejection is based on the public policy preventing
-only where each analysis compels a conclusion that
+the extension of the term of a patent. Double patenting
-the invention defined in the claims in issue is an obvious
+may be found in a design-utility situation irrespective
-variation of the invention defined in a claim in the
+of whether the claims in the patent relied on in the
-other application/patent. If either analysis does not
+rejection and the claims in issue involve the same
-compel a conclusion of obviousness, no double patenting
+invention, or whether they involve inventions which
-rejection of the obvious-type is made, but this
+are obvious variations of one another. In re Thorington,
-does not necessarily preclude a nonstatutory double
+F.2d 528, 163 USPQ 644 (CCPA 1969).
-patenting rejection based on the fundamental reason
-to prevent unjustified timewise extension of the right
+In Carman Indus., the court held that no double
-to exclude granted by a patent. In re Schneller,
+patenting existed between a design and utility patent
+since the claims in the utility patent, drawn to the interior
-F.2d 350, 158 USPQ 210 (CCPA 1968).
+construction of a flow promoter, were not directed
+to the same invention or an obvious variation of the
+invention claimed in a design patent directed to the
+visible external surface configuration of a storage bin
+flow promoter. The majority opinion in this decision
+appears to indicate that a two-way obviousness determination
+is necessary in design-utility cases. 724 F.2d
+at 940-41, 220 USPQ at 487-88. But see Carman
+Indus. (J. Nies, concurring).
-Although a delay in the processing of applications
+In Thorington, the court affirmed a double patenting
-before the Office that would cause patents to issue in
+rejection of claims for a fluorescent light bulb in a
-an order different from the order in which the applications
+utility patent application in view of a previously
-were filed is a factor to be considered in determining
+issued design patent for the same bulb. In another
-whether a one-way or two-way obviousness
+case, a double patenting rejection of utility claims for
-determination is necessary to support a double patenting
+a finger ring was affirmed in view of an earlier issued
-rejection, it may be very difficult to assess
+design patent, where the drawing in both the design
-whether an applicant or the administrative process is
+patent and the utility application illustrated the same
-primarily responsible for a delay in the issuance of a
+article. In re Phelan, 205 F.2d 183, 98 USPQ 156
-patent. On the one hand, it is applicant who presents
+(CCPA 1953). A double patenting rejection of a
-claims for examination and pays the issue fee. On the
+design claim for a flashlight cap and hanger ring was
-other hand, the resolution of legitimate differences of
+affirmed over an earlier issued utility patent. In re
-opinion that must be resolved in an appeal process or
+Barber, 81 F.2d 231, 28 USPQ 187 (CCPA 1936). A
-the time spent in an interference proceeding can significantly
+double patenting rejection of claims in a utility patent
-delay the issuance of a patent. Nevertheless,
+application directed to a balloon tire construction was
-the reasons for the delay in issuing a patent have been
+affirmed over an earlier issued design patent. In re
-considered in assessing the propriety of a double patenting
+Hargraves, 53 F.2d 900, 11 USPQ 240 (CCPA 1931).
-rejection. Thus, in Pierce v. Allen B. DuMont
-Laboratories, Inc., 297 F.2d 323, 131 USPQ 340 (3d.
+III. CONTRAST BETWEEN DOUBLE PATENTING
-Cir. 1961), the court found that administrative delay
+REJECTION AND REJECTIONS
-may justify the extension of patent rights beyond
+BASED ON PRIOR ART
-years but “a considered election to postpone acquisition
+Rejections over a patent or another copending
-of the broader [patent after the issuance of the
+application based on double patenting or 35 U.S.C.
-later filed application] should not be tolerated.” In
+(a) are similar in the sense that both require comparison
-Pierce, the patentee elected to participate in an interference
+of the claimed subject matter with at least part
-proceeding [after all claims in the application
+of the content of another patent or application, and
-had been determined to be patentable] whereby the
+both may require that an obviousness analysis be
-issuance of the broader patent was delayed by more
+made. However, there are significant differences
-than 7 years after the issuance of the narrower patent.
+between a rejection based on double patenting and
-The court determined that the second issued patent
+one based on 35 U.S.C. 102(e) prior art under
-was invalid on the ground of double patenting. Similarly,
+U.S.C. 103(a). In re Bartfeld, 925 F.2d 1450,
-in In re Emert, 124 F.3d 1458, 44 USPQ2d 1149
+USPQ2d 1885 (Fed. Cir. 1991).
-(Fed. Cir. 1997), the court found that the one-way test
-is appropriate where applicants, rather than the Office,
-had significant control over the rate of prosecution of
-the application at issue. In support of its finding that
-the applicants were responsible for delaying prosecution
-of the application during the critical period, the
-court noted that the applicants had requested and
-received numerous time extensions in various filings.
-More importantly, the court noted, after initially
-receiving an obviousness rejection of all claims,
-applicants had waited the maximum period to reply (6
-months), then abandoned the application in favor of a
-substantially identical continuation application, then
-received another obviousness rejection of all claims,
-again waited the maximum period to reply, and then
-again abandoned the application in favor of a second
-continuation application substantially identical to the
-original filing. On the other hand, in General Foods
-Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d
-, 23 USPQ2d 1839 (Fed. Cir. 1992), the court
-elected not to hold the patentee accountable for a
-delay in issuing the first filed application until after
-the second filed application issued as a patent, even
-where the patentee had intentionally refiled the first
-filed application as a continuation-in-part after receiving
-a Notice of Allowance indicating that all claims
-presented were patentable. Similarly, where, through
-no fault of the applicant, the claims in a later
-filed
-application issue first, an obvious-type double
+One significant difference is that a double patenting
+rejection must rely on a comparison with the claims in
+an issued or to be issued patent, whereas an anticipation
+or obviousness rejection based on the same
+patent under 35
+U.S.C. 102(e)/103(a) relies on a comparison
+with what is disclosed (whether or not
+claimed) in the same issued or to be issued patent. In a
+U.S.C. 102(e)/103(a) rejection over a prior art
+patent, the reference patent is available for all that it
+fairly discloses to one of ordinary skill in the art,
+regardless of what is claimed. In re Bowers, 359 F.2d
+, 149 USPQ 570 (CCPA 1966).
+A second significant difference is that a terminal
+disclaimer cannot be used to obviate a rejection based
+on 35 U.S.C. 102(e)/103(a) prior art. In re Fong,
+F.2d 977, 154 USPQ 25 (CCPA 1967). The purpose
+of a terminal disclaimer is to obviate a double
+patenting rejection by removing the potential harm to
+the public by issuing a second patent, and not to
+remove a patent as prior art.
+For applications filed on or after November 29,
+and for applications pending on or after December
+, 2004, a commonly assigned/owned patent or
+application may be disqualified as 35 U.S.C. 102(e)
+prior art in a 35 U.S.C. 103(a) rejection. See
+U.S.C. 103(c)(1). As an alternative to invoking the
+prior art exclusion under 35 U.S.C. 103(c)(1), the
+assignee can take some preemptive measures to avoid
+having a commonly assigned/owned copending application
+become prior art under 35 U.S.C. 102(e). The
+applications can be filed on the same day, or copending
+applications can be merged into a single continuation-
+in-part application and the parent applications
+abandoned. If these steps are undesirable or the first
+patent has issued, the prior art effect of the first patent
+may be avoided by a showing under 37
+CFR 1.132that any unclaimed invention disclosed in the first
+patent was derived from the inventor of the application
+before the examiner in which the 35
+U.S.C.
+(e)/103(a) rejection was made. In re Katz, 687
+F.2d 450, 215 USPQ 14 (CCPA 1982). See also
+MPEP § 716.10. It may also be possible for applicant
+to respond to a 35 U.S.C. 102(e)/103(a) rejection by
+showing, under 37 CFR 1.131, that the date of invention
+of the claimed subject matter was prior to the
+effective filing date of the reference patent which has
+been relied upon for its unclaimed disclosure. See
+MPEP § 715. See also 37
+CFR 1.130 and MPEP § 718for affidavits or declarations to disqualify a commonly
+owned patent as prior art under 35 U.S.C. 103.
+For applications pending on or after December 10,
+, and for reexamination proceedings in which the
+patent under reexamination was granted on or after
+December 10, 2004, a patent or application may be
+disqualified as 35 U.S.C. 102(e) prior art in a
+U.S.C. 103(a) rejection if evidence of a joint
+research agreement pursuant to 35 U.S.C. 103(c)(2)
+and (3) is made of record in the application (or patent)
+being examined (or reexamined), and the conflicting
+claims resulted from a joint research agreement that
+was in effect on or before the date the later claimed
+invention was made.
-patenting rejection is improper, in the absence of a
+An examiner should make both a 35 U.S.C. 102(e)/
-two-way obviousness determination, because the
+rejection and a double patenting rejection over
-applicant does not have complete control over the rate
+the same reference when the facts support both rejections.
-of progress of a patent application through the Office.
+Note that even if an earlier patent or application
-In re Braat, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir.
+to another is disqualified as prior art in a 35
-). While acknowledging that allowance of the
+U.S.C. 103(a) rejection based on common ownership
-claims in the earlier filed application would result in
+or a joint research agreement as discussed above, that
-the timewise extension of an invention claimed in the
+patent or application is available as prior art under 35
-patent, the court was of the view that the extension
+U.S.C. 102(e) and may form the basis of an anticipation
-was justified under the circumstances in this case,
+rejection. If the examiner makes only one of
-indicating that a double patenting rejection would be
+these rejections when each is separately applicable,
-proper only if the claimed inventions were obvious
+and if the next office action includes the previously
-over each other — a two-way obviousness determination.
+omitted rejection, then the next Office
+action cannot be made final. A prior art reference
+that anticipates or  renders claimed subject matter
+obvious under 35 U.S.C. 102(e)/103(a) does not create
+a double patenting situation where that subject
+matter is not claimed in the reference patent. For
+applications pending on or after December 10, 2004,
+rejections under 35 U.S.C. 102(e)/103(a) should not
+be made or maintained if the reference is disqualified
+under 35 U.S.C. 103(c) as prior art in a 35 U.S.C.
+(a) rejection. See MPEP § 706.02(l)(1) for information
+regarding when prior art is disqualified under
+U.S.C. 103(c) based on common ownership or
+claimed inventions made as a result of activities
+undertaken within the scope of a joint research agreement.
+Until applicant establishes the existence of a joint
+research agreement, the examiner cannot apply a double
+patenting rejection based on the possible existence
+of such an agreement. If in reply to an Office action
+applying a rejection under 35 U.S.C. 102(e)/103,
+applicant disqualifies the relied upon reference under
+the joint research agreement provision of 35 U.S.C.
+(c) and a subsequent double patenting rejection
+based upon the disqualified reference is applied, the
+next Office action may be made final even if applicant
+did not amend the claims (provided the examiner
+introduces no other new ground of rejection that was
+not necessitated by either amendment or an information
+disclosure statement filed during the time period
+set forth in 37 CFR 1.97(c) with the fee set forth in 37
+CFR 1.17(p)). The Office action is properly made
+final because the new double patenting rejection was
+necessitated by the applicant’s amendment of the
+application.
-Form paragraph 8.33 and the appropriate one of
+===804.01 Prohibition of Double PatentingRejections Under 35 U.S.C. 121===
-form paragraphs 8.34-8.37 may be used to make nonstatutory
-rejections of the obvious type.
-¶ 8.33 Basis for Nonstatutory Double Patenting,
-“Heading” Only
-The nonstatutory double patenting rejection is based on a judicially
-created doctrine grounded in public policy (a policy
-reflected in the statute) so as to prevent the unjustified or improper
-timewise extension of the “right to exclude” granted by a patent
-and to prevent possible harassment by multiple assignees. A nonstatutory
-obviousness-type double patenting rejection is appropriate
-where the conflicting claims are not identical, but at least one
-examined application claim is not patentably distinct from the reference
-claim(s) because the examined application claim is either
-anticipated by, or would have been obvious over, the reference
-claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226
-(Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010
-(Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed.
-Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA
-); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970);
-and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA
-).
-A timely filed terminal disclaimer in compliance with 37 CFR
-.321(c) or 1.321(d) may be used to overcome an actual or provisional
-rejection based on a nonstatutory double patenting ground
-provided the conflicting application or patent either is shown to be
-commonly owned with this application, or claims an invention
-made as a result of activities undertaken within the scope of a joint
-research agreement.
-Effective January 1, 1994, a registered attorney or agent of
+U.S.C. 121 authorizes the Director to restrict
-record may sign a terminal disclaimer. A terminal disclaimer
+the claims in a patent application to a single invention
-signed by the assignee must fully comply with 37 CFR 3.73(b).
+when independent and distinct inventions are presented
+for examination. The third sentence of 35
+U.S.C. 121 prohibits the use of a patent issuing on an
+application with respect to which a requirement for
+restriction has been made, or on an application filed as
+a result of such a requirement, as a reference against
+any divisional application, if the divisional application
+is filed before the issuance of the patent. The
+U.S.C. 121 prohibition applies only where the
+Office has made a requirement for restriction. The
+prohibition does not apply where the divisional application
+was voluntarily filed by the applicant and not
+in response to an Office requirement for restriction.
+This apparent nullification of double patenting as a
+ground of rejection or invalidity in such cases
+imposes a heavy burden on the Office to guard against
+erroneous requirements for restrictions where the
+claims define essentially the same invention in different
+language and which, if acquiesced in, might result
+in the issuance of several patents for the same invention.
-Examiner Note:
-This form paragraph is to be used as a heading before a nonstatutory
+The prohibition against holdings of double patenting
-double patenting rejection using any of form paragraphs
+applies to requirements for restriction between the
-.34 - 8.39.
+related subjects treated in MPEP § 806.04 through
+§ 806.05(j), namely, between combination and
-¶ 8.34 Rejection, Obviousness Type Double Patenting - No
+subcombination thereof, between subcombinations
-Secondary Reference(s)
+disclosed as usable together, between process and
+apparatus for its practice, between process and product
-Claim [1] rejected on the ground of nonstatutory obviousness-
+made by such process and between apparatus and
-type double patenting as being unpatentable over claim [2] of U.S.
+product made by such apparatus, etc., so long as the
-Patent No. [3]. Although the conflicting claims are not identical,
+claims in each application are filed as a result of such
-they are not patentably distinct from each other because [4].
+requirement.
-Examiner Note:
-.This form paragraph is used for obviousness-type double patenting
+The following are situations where the prohibition
-rejections based upon a patent.
+against double patenting rejections under 35
+U.S.C. 121 does not apply:
-.If the obviousness-type double patenting rejection is based
+(A)The applicant voluntarily files two or more
-upon another application, do not use this form paragraph. A provisional
+applications without a restriction requirement by the
-double patenting rejection should be made using form paragraph
+examiner. 35 U.S.C. 121 requires claims of a divisional
-.33 and either form paragraph 8.35 or 8.37.
+application to have been formally entered,
+restricted, and removed from an earlier application in
+order to obtain the benefit of 35 U.S.C. 121. Geneva
+Pharms. Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373,
+, 68 USPQ2d 1865, 1870 (Fed. Cir. 2003) (For
+claims in a divisional application that were not in the
+original application, 35 U.S.C. 121 “does not suggest
+that the original application merely needs to provide
+some support for claims that are first entered formally
+in the later divisional application.” Id.); In re
+Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA
+).
-.This form paragraph may be used where the conflicting
+(B)The claims of the different applications or
-invention is claimed in a patent which is:
+patents are not consonant with the restriction requirement
+made by the examiner, since the claims have
+been changed in material respects from the claims at
+the time the requirement was made. For example, the
+divisional application filed includes additional claims
+not consonant in scope to the original claims subject
+to restriction in the parent. Symbol Technologies, Inc.
+v. Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241
+(Fed. Cir. 1991) and Gerber Garment Technology,
+Inc. v. Lectra Systems, Inc., 916 F.2d 683, 16 USPQ2d
+(Fed. Cir. 1990). In order for consonance to
+exist, the line of demarcation between the independent
+and distinct inventions identified by the examiner
+in the requirement for restriction must be
+maintained. 916 F.2d at 688, 16 USPQ2d at 1440.
-(a)by the same inventive entity, or
+(C)The restriction requirement was written in a
+manner which made it clear to applicant that the
-(b)by a different inventive entity and is commonly assigned
+requirement was made subject to the nonallowance of
-even though there is no common inventor, or
+generic or other linking claims and such generic or
+linking claims are subsequently allowed. Therefore, if
-(c)not commonly assigned but has at least one inventor in common,
+a generic or linking claim is subsequently allowed, the
-or
+restriction requirement must be withdrawn.
-(d)made as a result of activities undertaken within the scope of a
+(D)The requirement for restriction (holding of
-joint research agreement.
+lack of unity of invention) was only made in an international
+application by the International Searching
+Authority or the International Preliminary Examining
+Authority.
-.Form paragraph 8.33 must precede any one of form paragraphs
+(E)The requirement for restriction was withdrawn
-.34 to 8.39 and must be used only ONCE in an Office
+by the examiner before the patent issues. In re
-action.
+Ziegler, 443 F.2d 1211, 170 USPQ 129 (CCPA 1971).
+Note that a restriction requirement in an earlier-filed
+application does not carry over to claims of a continuation
+application in which the examiner does not reinstate
+or refer to the restriction requirement in the
+parent application. Reliance on a patent issued from
+such a continuation application to reject claims in a
+later-filed divisional application is not prohibited
+under 35 U.S.C. 121. Bristol-Myers Squibb Co. v.
+Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d
+, 1100 (Fed. Cir. 2004).
-.In bracket 3, insert the number of the patent.
+(F)The claims of the second application are
+drawn to the “same invention” as the first application
+or patent. Studiengesellschaft Kohle mbH v. Northern
+Petrochemical Co., 784 F.2d 351, 228 USPQ 837
+(Fed. Cir. 1986).
-.If evidence indicates that the conflicting patent is prior art
+(G)Where a requirement for restriction between a
-under 35 U.S.C. 102(f) or (g), a rejection should additionally be
+product, a process of making the product, and a process
-made under 102(f)/103(a) or 102(g)/103(a) using form paragraph
+of using the product was made subject to the non-
-.21, unless the patent is disqualified under 35 U.S.C. 103(c) as
+allowance of the product and the product is subsequently
-prior art in a 35 U.S.C. 103(a) rejection.
+allowed. In this situation the restriction
+requirement must be withdrawn.
-.If the patent is to a different inventive entity and has an earlier
+While the situation should not arise where appropriate
-effective U.S. filing date, a rejection under 35 U.S.C. 102(e)/
+care is exercised in defining the independent
-(a) may be made using form paragraph 7.21.02. For applications
+and distinct inventions in a restriction requirement,
-pending on or after December 10, 2004, rejections under 35
+the issue might arise as to whether 35 U.S.C. 121 prevents
-U.S.C. 102(e)/103(a) should not be made or maintained if the
+the use of a double patenting rejection when the
-patent is disqualified under 35 U.S.C. 103(c) as prior art in a 35
+identical invention is claimed in both the patent and
-U.S.C. 103(a) rejection.
+the pending application. Under these circumstances,
+the Office will make the double patenting rejection
-¶ 8.35 Provisional Rejection, Obviousness Type Double
+because the patentee is entitled only to a single patent
-Patenting - No Secondary Reference(s)
+for an invention. As expressed in Studiengesellschaft
+Kohle, 784 F.2d at 361, 228 USPQ at 844, (J. Newman,
-Claim [1] provisionally rejected on the ground of nonstatutory
+concurring), “35 U.S.C. 121 of course does not
-obviousness-type double patenting as being unpatentable over
+provide that multiple patents may be granted on the
-claim [2] of copending Application No. [3]. Although the conflicting
+identical invention.”
-claims are not identical, they are not patentably distinct from
-each other because [4].
-This is a provisional obviousness-type double patenting rejection
-because the conflicting claims have not in fact been patented.
-Examiner Note:
-.This form paragraph should be used when the conflicting
-claims are in another copending application.
-.If the conflicting claims are in a patent, do not use this form
+===804.02 Avoiding a Double Patenting Rejection===
-paragraph. Use form paragraphs 8.33 and 8.34.
-.This form paragraph may be used where the conflicting
+I.STATUTORY
-claims are in a copending application that is:
-(a)by the same inventive entity, or
+A rejection based on the statutory type of double
+patenting can be avoided by amending the conflicting
+claims so that they are not coextensive in scope.
+Where the conflicting claims are in one or more pending
+applications and a patent, a rejection based on
+statutory type double patenting can also be avoided by
+canceling the conflicting claims in all the pending
+applications. Where the conflicting claims are in two
+or more pending applications, a provisional rejection
+based on statutory type double patenting can also be
+avoided by canceling the conflicting claims in all but
+one of the pending applications. A terminal disclaimer
+is not effective in overcoming a statutory double patenting
+rejection.
+The use of a 37 CFR 1.131 affidavit in overcoming
+a statutory double patenting rejection is inappropriate.
+In re Dunn, 349 F.2d 433, 146 USPQ 479 (CCPA
+). Knell v. Muller, 174 USPQ 460 (Comm’r. Pat.
+), citing the CCPA decisions in In re Ward, 236
+F.2d 428, 111 USPQ 101 (CCPA 1956); In re Teague,
+F.2d 145, 117 USPQ 284 (CCPA 1958); and In re
+Hidy, 303 F.2d 954, 133 USPQ 650 (CCPA 1962).
+II.NONSTATUTORY
+A rejection based on a nonstatutory type of double
+patenting can be avoided by filing a terminal disclaimer
+in the application or proceeding in which the
+rejection is made. In re Vogel, 422 F.2d 438,
+USPQ 619 (CCPA 1970); In re Knohl, 386 F.2d
+, 155 USPQ 586 (CCPA 1967); and In re Griswold,
+F.2d 834, 150 USPQ 804 (CCPA 1966).
+The use of a terminal disclaimer in overcoming a nonstatutory
+double patenting rejection is in the public
+interest because it encourages the disclosure of additional
+developments, the earlier filing of applications,
+and the earlier expiration of patents whereby the
+inventions covered become freely available to the
+public. In re Jentoft, 392 F.2d 633, 157 USPQ 363
+(CCPA 1968); In re Eckel, 393 F.2d 848, 157 USPQ
+(CCPA 1968); and In re Braithwaite, 379 F.2d
+, 154 USPQ 29 (CCPA 1967).
+The use of a 37 CFR 1.131 affidavit in overcoming
+a double patenting rejection is inappropriate because
-(b) commonly assigned even though there is no common inventor,
+the claim or claims in the application are being
-or
+rejected over a patent which claims the rejected
+invention. In re Dunn, 349 F.2d 433, 146 USPQ 479
-(c)not commonly assigned but has at least one common inventor,
+(CCPA 1965). 37 CFR 1.131 is inapplicable if the
-or
+claims of the application and the patent are “directed
+to substantially the same invention.” It is also inappli
-(d)made as a result of activities undertaken within the scope of a
+cable if there is a lack of “patentable distinctness”
-joint research agreement.
+between the claimed subject matter. Knell v. Muller,
+USPQ 460 (Comm’r. Pat. 1971), citing the court
-.Form paragraph 8.33 must precede any one of form paragraphs
+decisions in In re Ward, 236 F.2d 428, 111 USPQ 101
-.34 to 8.39 and must be used only ONCE in an Office
+(CCPA 1956); In re Teague, 254 F.2d 145, 117 USPQ
-action.
+(CCPA 1958); and In re Hidy, 303 F.2d 954, 133
+USPQ 65 (CCPA 1962).
-.If the conflicting application is currently commonly assigned
-but the file does not establish that the conflicting inventions were
-commonly owned at the time the later invention was made, form
-paragraph 8.28 may be used in addition to this form paragraph to
-also resolve any issues relating to priority under 102(f) and/or (g).
-.In bracket 3, insert the number of the conflicting application.
+A patentee or applicant may disclaim or dedicate to
+the public the entire term, or any terminal part of the
+term of a patent. 35 U.S.C. 253. The statute does not
+provide for a terminal disclaimer of only a specified
+claim or claims. The terminal disclaimer must operate
+with respect to all claims in the patent.
-.A provisional obviousness-type double patenting rejection
+The filing of a terminal disclaimer to obviate a
-should also be made in the conflicting application.
+rejection based on nonstatutory double patenting is
+not an admission of the propriety of the rejection.
+Quad Environmental Technologies Corp. v. Union
+Sanitary District, 946 F.2d 870, 20 USPQ2d 1392
+(Fed. Cir. 1991). The court indicated that the “filing of
+a terminal disclaimer simply serves the statutory function
+of removing the rejection of double patenting,
+and raises neither a presumption nor estoppel on the
+merits of the rejection.”
-.If evidence shows that either application is prior art unto the
+A terminal disclaimer filed to obviate a double patenting
-other under 35 U.S.C. 102(f) or (g) and the copending application
+rejection is effective only with respect to the
-has not been disqualified under 35 U.S.C. 103(c) as prior art in a
+application identified in the disclaimer, unless by its
-(a) rejection, a rejection should additionally be made in the
+terms it extends to continuing applications. If an
-other application under 35 U.S.C. 102(f)/103(a) or 102(g)/103(a)
+appropriate “provisional” nonstatutory double patenting
-using form paragraph 7.21.
+rejection  is made in each of two or more
+pending applications, the examiner should follow
-.If the disclosure of one application may be used to support a
+the practice set forth in MPEP § 804, subsection I.B.1.
-rejection of the other and the applications have different inventive
+in determining in which of the applications an appropriate
-entities and different U.S. filing dates, use form paragraph 7.21.01to additionally make a rejection under 35 U.S.C. 102(e)/103(a) in
+terminal disclaimer must be filed.
-the later filed application. For applications pending on or after
-December 10, 2004, rejections under 35 U.S.C. 102(e)/103(a)
-should not be made or maintained if the patent is disqualified
-under 35 U.S.C. 103(c) as prior art in a 35 U.S.C. 103(a) rejection.
-.In bracket 4, provide appropriate rationale for obviousness of
+Claims that differ from each other (aside from
-claims being rejected over the claims of the cited application.
+minor differences in language, punctuation, etc.),
+whether or not the difference would have been
+obvious, are not considered to be drawn to the same
+invention for double patenting purposes under 35
+U.S.C. 101. In cases where the difference in claims
+would have been obvious, terminal disclaimers
+are effective to overcome double patenting rejections.
+Where the subject matter of the reference and the
+claimed invention were commonly owned at the time
+the invention was made, such terminal disclaimers
+must include a provision that the patent shall be unenforceable
+if it ceases to be commonly owned with the
+other application or patent. Note 37 CFR 1.321(c).
+CFR 1.321(d) sets forth the requirements for a
+terminal disclaimer where the claimed invention
+resulted from activities undertaken within the scope
+of a joint research agreement as defined in 35 U.S.C.
+(c)(3). It should be emphasized that a terminal
+disclaimer cannot be used to overcome a rejection
+under 35 U.S.C. 102(e)/103(a).
-¶ 8.36 Rejection, Obviousness Type Double Patenting -
+III.TERMINAL DISCLAIMER REQUIRED
-With Secondary Reference(s)
+DESPITE REQUEST TO ISSUE ON COMMON
+ISSUE DATE
-Claim [1] rejected on the ground of nonstatutory obviousness-
+ Applicants are cautioned that reliance upon a common
-type double patenting as being unpatentable over claim [2] of U.S.
+issue date cannot effectively substitute for the filing
-Patent No. [3] in view of [4]. [5]
+of one or more terminal disclaimers in order to
+overcome a proper double patenting rejection, particularly
+since a common issue date alone does not avoid
+the potential problems of dual ownership by a
+common assignee, or by parties to a joint research
+agreement, of patents to patentably indistinct inventions.
+In any event, the Office cannot ensure that two
+or more applications will have a common issue date.
-Examiner Note:
+IV.DISCLAIMING MULTIPLE DOUBLE
+PATENTING REFERENCES
-.This form paragraph is used for obviousness-type double patenting
+If multiple conflicting patents and/or pending applications
-rejections where the primary reference is a conflicting
+are applied in double patenting rejections
-patent.
+made in a single application, then prior to issuance of
+that application, it is necessary to disclaim the terminal
+part of any patent granted on the application
+which would extend beyond the application date of
+each one of the conflicting patents and/or applications.
+A terminal disclaimer fee is required for each
+terminal disclaimer filed. To avoid paying multiple
+terminal disclaimer fees, a single terminal disclaimer
+based on common ownership may be filed, for
+example, in which the term disclaimed is based on all
+the conflicting, commonly owned double patenting
+references. Similarly, a single terminal disclaimer
+based on a joint research agreement may be filed, in
+which the term disclaimed is based on all the conflicting
+double patenting references.
-.If the obviousness double patenting rejection is based on
+Each one of the commonly owned conflicting
-another application, do not use this form paragraph. A provisional
+double patenting references must be included
-obviousness-type double patenting rejection should be made using
+in the terminal disclaimer to avoid the problem of
-form paragraphs 8.33 and either 8.35 or 8.37.
+dual ownership of patents to patentably indistinct
+inventions in the event that the patent issuing from the
+application being examined ceases to be commonly
+owned with any one of the double patenting references
+that have issued or may issue as a patent. Note
+that 37 CFR 1.321(c)(3) requires that a terminal disclaimer
+for commonly owned conflicting claims
+“[i]nclude a provision that any patent granted on that
+application or any patent subject to the reexamination
+proceeding shall be enforceable only for and during
+such period that said patent is commonly owned with
+the application or patent which formed the basis for
+the rejection.”
-.This form paragraph may be used where the prior invention
+Filing a terminal disclaimer including each one of
-is claimed in a patent which is:
+the conflicting double patenting references is also
+necessary to avoid the problem of ownership of patents
+to patentably indistinct inventions by parties to a
+joint research agreement. 37 CFR 1.321(d) sets forth
+the requirements for a terminal disclaimer where the
+claimed invention resulted from activities undertaken
+within the scope of a joint research agreement.
-(a)by the same inventive entity, or
+V.REQUIREMENTS OF A TERMINAL DISCLAIMER
-(b)by a different inventive entity and is commonly assigned
+A terminal disclaimer is a statement filed by an
-even though there is no common inventor, or
+owner (in whole or in part) of a patent or a patent to
+be granted that is used to disclaim or dedicate a portion
-(c)not commonly assigned but has at least one common inventor,
+of the entire term of all the claims of a patent. The
-or
+requirements for a terminal disclaimer are set forth in
+CFR 1.321. Sample forms of a terminal disclaimer,
+and guidance as to the filing and treatment of a terminal
+disclaimer, are provided in MPEP § 1490.
-(d)made as a result of activities undertaken within the scope of a
+VI.TERMINAL DISCLAIMERS REQUIRED
-joint research agreement.
+TO OVERCOME NONSTATUTORY
+DOUBLE PATENTING REJECTIONS IN
+APPLICATIONS FILED ON OR AFTER
+JUNE 8, 1995
-.Form paragraph 8.33 must precede any one of form paragraphs
+Public Law 103-465 (1994) amended 35 U.S.C.
-.34 to 8.39 and must be used only ONCE in an office
+(a)(2) to provide that any patent issuing on a utility
-action.
+or plant application filed on or after June 8, 1995
+will expire 20 years from its filing date, or, if the
+application claims the benefit of an earlier filed application
+under 35 U.S.C. 120, 121, or 365(c), 20 years
+from the earliest filing date for which a benefit under
+U.S.C. 120, 121, or 365(c) is claimed. Therefore,
+any patent issuing on a continuing utility or plant
+application filed on or after June 8, 1995 will expire
+years from the earliest filing date for which a benefit
+is claimed under 35 U.S.C. 120, 121, or 365(c),
+subject to the provisions of 35 U.S.C. 154(b).
-.In bracket 3, insert the number of the conflicting patent.
+There are at least two reasons for insisting upon a
+terminal disclaimer to overcome a nonstatutory
-.In bracket 4, insert the secondary reference.
+double patenting rejection in a continuing application
+subject to a 20-year term under 35 U.S.C. 154(a)(2).
-.In bracket 5, insert an explanation of the obviousness-type
+First, 35 U.S.C. 154(b) includes provisions for patent
-rejection.
+term extension based upon prosecution delays during
+the application process. Thus, 35 U.S.C. 154 does not
-.If evidence shows that the conflicting patent is prior art under
+ensure that any patent issuing on a continuing utility
-U.S.C. 102(f) or (g), a rejection should additionally be made
+or plant application filed on or after June 8, 1995 will
-under 35 U.S.C. 102(f)/103(a) or 102(g)/103(a) using form paragraph
+necessarily expire 20 years from the earliest filing
-.21, unless the patent is disqualified under 35 U.S.C.
+date for which a benefit is claimed under 35 U.S.C.
-(c) as prior art in a 35 U.S.C. 103(a) rejection.
+, 121, or 365(c). Second, 37 CFR 1.321(c)(3)
+requires that a terminal disclaimer filed to obviate a
-.If the patent issued to a different inventive entity and has an
+nonstatutory double patenting rejection based
-earlier effective U.S. filing date, a rejection under 35 U.S.C.
+on commonly owned conflicting claims include a
-(e)/103(a) may be made using form paragraph 7.21.02. For
+provision that any patent granted on that application
-applications pending on or after December 10, 2004, rejections
+be enforceable only for and during the period that the
-under 35 U.S.C. 102(e)/103(a) should not be made or maintained
+patent is commonly owned with the application or
-if the patent is disqualified under 35 U.S.C. 103(c) as prior art in a35 U.S.C. 103(a) rejection.
+patent which formed the basis for the rejection. 37
+CFR 1.321(d) sets forth the requirements for a terminal
-¶ 8.37 Provisional Rejection, Obviousness Type Double
+disclaimer where the claimed invention resulted
-Patenting - With Secondary Reference(s)
+from activities undertaken within the scope of a joint
+research agreement. These requirements serve to
-Claim [1] provisionally rejected on the ground of nonstatutory
+avoid the potential for harassment of an accused
-obviousness-type double patenting as being unpatentable over
+infringer by multiple parties with patents covering the
-claim [2] of copending Application No. [3] in view of [4]. [5]
+same patentable invention. See, e.g., In re Van
+Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70
-This is a provisional obviousness-type double patenting rejection.
+(CCPA 1982). Not insisting upon a terminal disclaimer
+to overcome a nonstatutory double patenting
+rejection in an application subject to a 20-year
-Examiner Note:
+term under 35 U.S.C. 154(a)(2) would result in the
+potential for the problem that 37 CFR 1.321(c)(3) was
-.This form paragraph is used for obviousness-type double patenting
+promulgated to avoid.
-rejections where the primary reference is a conflicting
-application.
-.If the conflicting claims are in a patent, do not use this form
+Accordingly, a terminal disclaimer under 37 CFR
-paragraph, use form paragraph 8.36.
+.321 is required in an application to overcome a
+nonstatutory double patenting rejection, even if
+the application was filed on or after June 8, 1995 and
+claims the benefit under 35 U.S.C. 120, 121, or 365(c)
+of the filing date of the patent or application which
+forms the basis for the rejection. Examiners should
+respond to arguments that a terminal disclaimer under
+CFR 1.321 should not be required in a continuing
+application filed on or after June 8, 1995 to overcome
+a nonstatutory double patenting rejection due to
+the change to 35 U.S.C. 154 by citing to this section
+of the MPEP or to the Official Gazette notice at 1202
+O.G. 112 (Sept. 30, 1997).
-.This form paragraph may be used where the conflicting
+===804.03 Commonly Owned Inventions of Different Inventive Entities; Non-Commonly Owned Inventions Subject to a Joint Research Agreement===
-claims are in a copending application that is:
-(a)by the same inventive entity, or
+{{Statute|35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.}}
+{{Ellipsis}}
+(c)(1) Subject matter developed by another person, which
+qualifies as prior art only under one or more of subsections (e), (f),
+and (g) of section 102 of this title, shall not preclude patentability
+under this section where the subject matter and the claimed invention
+were, at the time the claimed invention was made, owned by
+the same person or subject to an obligation of assignment to the
+same person.
-(b)commonly assigned even though there is no common inventor,
+(2)For purposes of this subsection, subject matter developed
-or
+by another person and a claimed invention shall be deemed
+to have been owned by the same person or subject to an obligation
+of assignment to the same person if —
-(c)not commonly assigned but has at least one common inventor,
+(A)the claimed invention was made by or on behalf of
-or
+parties to a joint research agreement that was in effect on or before
+the date the claimed invention was made;
-(d)made as a result of activities undertaken within the scope of a
+(B)the claimed invention was made as a result of
-joint research agreement.
+activities undertaken within the scope of the joint research agreement;
+and
-.Form paragraph 8.33 must precede any one of form paragraphs
+(C)the application for patent for the claimed invention
-.34 to 8.39 and must be used only ONCE in an office
+discloses or is amended to disclose the names of the parties to the
-action.
+joint research agreement.
-.If the conflicting cases are currently commonly assigned but
+(3)For purposes of paragraph (2), the term “joint
-the file does not establish that the conflicting inventions were
+research agreement” means a written contract, grant, or cooperative
-commonly owned at the time the later invention was made, form
+agreement entered into by two or more persons or entities for
-paragraph 8.28 may be used in addition to this form paragraph to
+the performance of experimental, developmental, or research
-also resolve any issues relating to priority under 35 U.S.C. 102(f)
+work in the field of the claimed invention.
-and/or (g).
+|}
-.In bracket 3, insert the number of the conflicting application.
-.In bracket 4, insert the secondary reference.
+{{Statute|37 CFR 1.78. Claiming benefit of earlier filing date and cross references to other applications.}}
+{{Ellipsis}}
+(c)If an application or a patent under reexamination and at
+least one other application naming different inventors are owned
+by the same person and contain conflicting claims, and there is no
+statement of record indicating that the claimed inventions were
+commonly owned or subject to an obligation of assignment to the
+same person at the time the later invention was made, the Office
+may require the assignee to state whether the claimed inventions
+were commonly owned or subject to an obligation of assignment
+to the same person at the time the later invention was made, and if
+not, indicate which named inventor is the prior inventor. Even if
+the claimed inventions were commonly owned, or subject to an
+obligation of assignment to the same person, at the time the later
+invention was made, the conflicting claims may be rejected under
+the doctrine of double patenting in view of such commonly owned
+or assigned applications or patents under reexamination.
+|}
-.In bracket 5, insert an explanation of the obviousness-type
-rejection.
-.A provisional obviousness-type double patenting rejection
+{{Statute|37 CFR 1.130. Affidavit or declaration to disqualify commonly owned patent or published application as prior art.}}
-should also be made in the conflicting application.
+(a)When any claim of an application or a patent under reexamination
+is rejected under 35
+U.S.C. 103 on a U.S. patent or U.S.
+patent application publication which is not prior art under 35
+U.S.C. 102(b), and the inventions defined by the claims in the
+application or patent under reexamination and by the claims in the
+patent or published application are not identical but are not patentably
+distinct, and the inventions are owned by the same party, the
+applicant or owner of the patent under reexamination may disqualify
+the patent or patent application publication as prior art.
+The patent or patent application publication can be disqualified as
+prior art by submission of:
+(1)A terminal disclaimer in accordance with § 1.321(c);
+and
+(2)An oath or declaration stating that the application or
+patent under reexamination and patent or published application
+are currently owned by the same party, and that the inventor
+named in the application or patent under reexamination is the
+prior inventor under 35 U.S.C. 104.
+(b)[Reserved]
+|}
+I.DOUBLE PATENTING
-.If evidence shows that either application is prior art unto the
+Claims in commonly owned applications of
-other under 35 U.S.C. 102(f) or (g) and the copending application
+different inventive entities may be rejected on the
-has not been disqualified under 35 U.S.C. 103(c) as prior art in a
+ground of double patenting. This is in accordance
-U.S.C. 103(a) rejection, a rejection should additionally be
+with existing case law and prevents an organization
-made under 35 U.S.C. 102(f)/103(a) or 102(g)/103(a) using form
+from obtaining two or more patents with different
-paragraph 7.21.
+expiration dates covering nearly identical subject matter.
+See In re Zickendraht, 319 F.2d 225, 138 USPQ
+(CCPA 1963) (the doctrine is well established that
+claims in different applications need be more than
+merely different in form or content and that patentable
+distinction must exist to
+entitle applicants to a second
+patent) and In re Christensen, 330 F.2d 652, 141
+USPQ 295 (CCPA 1964).
-.If the disclosure of one application may be used to support a
+Claims may also be rejected on the grounds of
-rejection of the other and the applications have different inventive
+nonstatutory double patenting in certain non-commonly
-entities and different U.S. filing dates, use form paragraph 7.21.01to additionally make a rejection under 35 U.S.C. 102(e)/103(a) in
+owned applications that claim inventions
-the application with the later effective U.S. filing date. For applications
+resulting from activities undertaken with the scope of
-pending on or after December 10, 2004, rejections under
+a joint research agreement as defined in 35 U.S.C.
-U.S.C. 102(e)/103(a) should not be made or maintained if the
+(c)(3). This prevents the parties to the joint
-patent is disqualified under 35 U.S.C. 103(c) as prior art in a 35
+research agreement from obtaining two or more patents
-U.S.C. 103(a) rejection.
+with different expiration dates covering nearly
+identical subject matter. See the amendment to 35
+U.S.C. 103(c) by the CREATE Act (Public Law 108-
+; 118 Stat. 3596 (2004)).
-.Another Type of Nonstatutory Double
+Double patenting rejections can be overcome
-Patenting Rejection
+in certain circumstances by disclaiming, pursuant
+to the provisions of 37 CFR 1.321(c), the terminal
-There are some unique circumstances where it has
+portion of the term of the later patent and including in
-been recognized that another type of nonstatutory
+the disclaimer a provision that the patent shall be
-double patenting rejection is applicable even where
+enforceable only for and during the period the patent
-the inventions claimed in two or more applications/
+is commonly owned with the application or patent
-patents are considered nonobvious over each other.
+which formed the basis for the rejection, thereby eliminating
-These circumstances are illustrated by the facts before
+the problem of extending patent life. Double
-the court in In re Schneller, 397 F.2d 350, 158 USPQ
+patenting rejections can also be overcome in cases
-(CCPA 1968). In affirming the double patenting
+subject to a joint research agreement, under certain
-rejection, the court summed up the situation:
+circumstances, by disclaiming the terminal portion of
+the term of the later patent and including in the disclaimer
+the provisions of 37 CFR 1.321(d).
+See MPEP § 706.02(l) - § 706.02(l)(3) for information
+pertaining to establishment of common ownership
+and the existence of a joint research agreement
+pursuant to 35 U.S.C. 103(c), as well as examination
+practice relating to 35 U.S.C. 103(c).
-in appellant’s own terms: The combination ABC was old.
+II.IDENTIFYING COMMONLY OWNED
-He made two improvements on it, (1) adding X and (2)
+AND NON-COMMONLY OWNED INVENTIONS
-adding Y, the result still being a unitary clip of enhanced
+SUBJECT TO A JOINT RESEARCH
-utility. While his invention can be practiced in the forms
+AGREEMENT
-ABCX or ABCY, the greatest advantage and best mode of
-practicing the invention as disclosed is obtained by using
-both inventions in the combination ABCXY. His first
-application disclosed ABCXY and other matters. He
-obtained a patent claiming [a clip comprising] BCX and
-ABCX, . . . so claiming these combinations as to cover
-them no matter what other feature is incorporated in
-them, thus covering effectively ABCXY. He now, many
-years later, seeks more claims directed to ABCY and
-ABCXY. Thus, protection he already had would be
-extended, albeit in somewhat different form, for several
-years beyond the expiration of his patent, were we to
-reverse.
-F.2d at 355-56, 158 USPQ at 216 (emphasis in
+A.Common Ownership by the Same Person(s) or
-original).
+Organization(s)
-The court recognized that “there is no double patenting
+Applications or patents are “commonly owned”
-in the sense of claiming the same invention
+pursuant to 35 U.S.C. 103(c)(1) if they were wholly or
-because ABCX and ABCY are, in the technical patent
+entirely owned by the same person(s), or organization(
-law sense, different inventions. The rule against ‘double
+s)/business entity(ies), at the time the claimed
-patenting,’ however, is not so circumscribed. The
+invention was made. See MPEP § 706.02(l)(2) for a
-fundamental reason for the rule is to prevent unjustified
+detailed definition of common ownership. Two
-timewise extension of the right to exclude granted
+inventions of different inventive entities come within
-by a patent no matter how the extension is brought
+the common ownership provisions of 35 U.S.C.
-about. To . . . prevail here, appellant has the burden of
+(c)(1) when:
-establishing that the invention claimed in his patent is
-‘independent and distinct’ from the invention of the
-appealed claims…appellant has clearly not established
-the independent and distinct character of the
-inventions of the appealed claims.” 397 F.2d at 354-
-, 158 USPQ at 214-15 (emphasis in original). The
-court observed:
-The controlling fact is that patent protection for the
+(A)the later invention is not anticipated by the
-clips, fully disclosed in and covered by the claims of the
+earlier invention under 35 U.S.C. 102;
-patent, would be extended by allowance of the appealed
-claims. Under the circumstance of the instant case,
-wherein we find no valid excuse or mitigating circumstances
-making it either reasonable or equitable to make
-an exception, and wherein there is no terminal disclaimer,
-the rule against “double patenting” must be applied.
-F.2d at 355, 158 USPQ at 215.
+(B)the earlier invention qualifies as prior art for
+purposes of obviousness under 35 U.S.C. 103 against
+the later invention only under subsections (f) or
+(g) of 35 U.S.C. 102, or under 35 U.S.C. 102(e)
+for applications pending on or after December 10,
+, for reexamination proceedings in which the
+patent under reexamination was granted on or after
+December 10, 2004, and for reexamination proceedings
+in which the patent under reexamination was
+filed on or after November 29, 1999; and
- The decision in In re Schneller did not establish a
+(C)the inventions were, at the time the later
-rule of general application and thus is limited to the
+invention was made, owned by the same person or
-particular set of facts set forth in that decision. The
+subject to an obligation of assignment to the same
-court in Schneller cautioned “against the tendency to
+person.
-freeze into rules of general application what, at best,
-are statements applicable to particular fact situations.”
-Schneller, 397 F.2d at 355, 158 USPQ at 215. Nonstatutory
-double patenting rejections based on
-Schneller will be rare. The Technology Center (TC)
-Director must approve any nonstatutory double patenting
-rejections based on Schneller. If an examiner
-determines that a double patenting rejection based on
-Schneller is appropriate in his or her application, the
-examiner should first consult with his or her supervisory
-patent examiner (SPE). If the SPE agrees with
-the examiner then approval of the TC Director must
-be obtained before such a nonstatutory double patenting
-rejection can be made.
-A fact situation similar to that in Schneller was presented
+B.Non-Commonly Owned Inventions Subject to
-to a Federal Circuit panel in In re Kaplan,
+a Joint Research Agreement
-F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986).
-Kaplan had been issued a patent on a process of making
-chemicals in the presence of an organic solvent.
-Among the organic solvents disclosed and claimed as
-being useful were tetraglyme and sulfolane. One
-unclaimed example in the patent was specifically
-directed to a mixture of these two solvents. The
-claims in the application to Kaplan and Walker, the
-application before the Office, were directed to essentially
-the same chemical process, but requiring the use
+The Cooperative Research and Technology
+Enhancement Act of 2004 (CREATE Act) (Public
+Law 108-453; 118 Stat. 3596 (2004)), which amended
+U.S.C. 103(c), was enacted on December 10, 2004.
+The CREATE Act permits an applicant or patentee,
+who is a party to a joint research agreement, to disqualify
+prior art that is applied in a rejection under 35
+U.S.C. 103(a) and that is otherwise available as prior
+art only under 35 U.S.C. 102(e), (f) or (g). Congress
+recognized that this amendment to 35
+U.S.C. 103(c)
+would result in situations in which there would be
+double patenting between patents or applications not
+owned by the same party. See H.R. Rep. No. 108-425,
+at 5-6 (2003).
+Pursuant to the CREATE Act, non-commonly
+owned applications or patents that are subject to a
+joint research agreement may be treated as if they are
+“commonly owned,” i.e., owned or subject to assignment
+by the same person, for the purposes of determining
+obviousness if certain conditions are met. See
+U.S.C 103(c)(2). The term “joint research agreement”
+means a written contract, grant, or cooperative
+agreement entered into by two or more persons or
+entities for the performance of experimental, developmental,
+or research work in the field of the claimed
+invention. See 35 U.S.C. 103(c)(3). See also MPEP
+§ 706.02(l)(2).
+Two inventions come within the provisions of 35
+U.S.C. 103(c)(2), for applications pending on or after
+December 10, 2004, and for reexamination proceedings
+in which the patent under reexamination issued
+after December 10, 2004, when:
+(A)the later invention is not anticipated by the
+earlier invention under 35 U.S.C. 102;
+(B)the claimed invention was made by or on
+behalf of parties to a joint research agreement that
-of the solvent mixture of tetraglyme and sulfolane. In
+was in effect on or before the date the claimed invention
-reversing the double patenting rejection, the court
+was made;
-stated that the mere fact that the broad process claim
-of the patent requiring an organic solvent reads on or
-“dominates” the narrower claim directed to basically
-the same process using a specific solvent mixture
-does not, per se, justify a double patenting rejection.
-The court also pointed out that the double patenting
-rejection improperly used the disclosure of the joint
-invention (solvent mixture) in the Kaplan patent specification
-as though it were prior art.
-A significant factor in the Kaplan case was that the
-broad invention was invented by Kaplan, and the narrow
-invention (i.e., using a specific combination of
-solvents) was invented by Kaplan and Walker. Since
-these applications (as the applications in Braat) were
-filed before the Patent Law Amendments Act of 1984
-(Pub. Law 98-622, November 8, 1984) amending 35
-U.S.C. 116 to expressly authorize filing a patent application
-in the names of joint inventors who did not
-necessarily make a contribution to the invention
-defined in each claim in the patent, it was necessary to
-file multiple applications to claim both the broad and
-narrow inventions. Accordingly, there was a valid reason,
-driven by statute, why the claims to the specific
-solvent mixture were not presented for examination in
-the Kaplan patent application.
-Each double patenting situation must be decided on
-its own facts.
-Form paragraph 8.33 and the appropriate one of
-form paragraphs 8.38 (between an issued patent and
-one or more applications) and 8.39 (provisional rejections)
-may be used to make this type of nonstatutory
-double patenting rejection.
-¶ 8.38 Double Patenting - Nonstatutory (Based Solely on
+(C)the claimed invention was made as a result of
-Improper Timewise Extension of Patent Rights) With a
+activities undertaken within the scope of the joint
-Patent
+research agreement; and
-Claim [1] rejected on the ground of nonstatutory double patenting
+(D)the application for patent for the claimed
-over claim [2] of U.S. Patent No. [3] since the claims, if
+invention discloses or is amended to disclose the
-allowed, would improperly extend the “right to exclude” already
+names of the parties to the joint research agreement.
-granted in the patent.
-The subject matter claimed in the instant application is fully
+C.Timing of Double Patenting Rejections
-disclosed in the patent and is covered by the patent since the
-patent and the application are claiming common subject matter, as
-follows: [4]
-Furthermore, there is no apparent reason why applicant was
+The examiner should make both a double patenting
-prevented from presenting claims corresponding to those of the
+rejection based on common ownership and a rejection
-instant application during prosecution of the application which
+based on 35 U.S.C. 102(e)/103 prior art when the
-matured into a patent. See In re Schneller, 397 F.2d 350, 158
+facts support both rejections. Until applicant has
-USPQ 210 (CCPA 1968). See also MPEP § 804.
+established that a reference is disqualified as prior art
+under the joint research agreement exclusion of
+U.S.C. 103(c), the examiner should NOT apply a
+double patenting rejection based on a joint research
+agreement. See MPEP § 706.07(a) and § 804 for
+information regarding when an Office action that
+includes a new subsequent double patenting rejection
+based upon a reference disqualified under 35 U.S.C.
+(c) may be made final.
-Examiner Note:
+III.DETERMINING INVENTION PRIORITY
-.This form paragraph should only be used where approval
+A determination of priority is not required when
-from the TC Director to make a nonstatutory double patenting
+two inventions are commonly owned as set forth in 35
-rejection based on In re Schneller has been obtained.
+U.S.C. 103(c)(1).
-.Use this form paragraph only when the subject matter of the
+Pursuant to 37 CFR 1.78(c), where an application
-claim(s) is fully disclosed in, and covered by at least one claim of,
+or a patent under reexamination and at least one other
-an issued U.S. Patent which is commonly owned or where there is
+application of different inventive entities are owned
-common inventorship (one or more inventors in common).
+by the same party and contain conflicting claims, the
+examiner may require the assignee to state whether
-.In bracket 3, insert the number of the patent.
+the claimed inventions come within the provisions of
+U.S.C. 103(c) (i.e., indicate whether common
-.In bracket 4, insert a description of the subject matter being
+ownership or an obligation of assignment to the same
-claimed which is covered in the patent.
+person existed at the time the later invention was
+made). If the assignee states that the provisions of
+U.S.C. 103(c) do not apply to the conflicting
+claimed inventions, the assignee is required to indicate
+which named inventor is the prior inventor. Form
+paragraphs 8.27, 8.28 and 8.28.01 may be used to
+require the applicant to identify the prior inventor
+under 37 CFR 1.78(c). In order to avoid abandonment,
+the assignee must comply with the requirement
+under 37 CFR 1.78(c) by naming the prior inventor
+unless the conflicting claims are eliminated in all but
+one application. If, however, the two inventions come
+within the provisions of 35 U.S.C. 103(c), it is not
+necessary to determine priority of invention since the
+earlier invention is disqualified as prior art against the
+later invention and since double patenting rejections
+can be used to ensure that the patent terms expire
+together. Accordingly, a response to a requirement
+under 37 CFR 1.78(c) which states that the inventions
+of different inventive entities come within the provisions
+of 35 U.S.C. 103(c) is complete without any
+further inquiry under 37 CFR 1.78(c) as to the prior
+inventor.
-.Form paragraph 8.33 must precede any one of form paragraphs
+Before making the requirement to identify the prior
-.34 to 8.39 and must be used only ONCE in an Office
+inventor under 37 CFR 1.78(c), with its threat to hold
-action.
+the application abandoned if the statement is not made
+by the assignee, the examiner must make sure that
+claims are present in each application which are conflicting
+as defined in MPEP § 804. See In re Rekers,
+USPQ 1034 (Comm’r Pat. 1979).
-.If evidence indicates that the conflicting patent is prior art
+In some situations the application file histories
-under 35 U.S.C. 102(f) or (g), a rejection should additionally be
+may reflect which invention is the prior invention,
-made under 35 U.S.C. 102(f)/103(a) or 102(g)/103(a) using form
+e.g., by reciting that one invention is an improvement
-paragraph 7.21, unless the patent is disqualified under 35 U.S.C.
+of the other invention. See Margolis v. Banner,
-(c) as prior art in a 35 U.S.C. 103(a) rejection.
+F.2d 435, 202 USPQ 365 (CCPA 1979) (Court
+refused to uphold a holding of abandonment for failure
+to name the prior inventor since the record
+showed what was invented by the different inventive
+entities and who was the prior inventor.).
-.If the patent is to another inventive entity and has an earlier
+An application in which a requirement to name the
-U.S. filing date, a rejection under 35 U.S.C. 102(e)/103(a) may be
+prior inventor has been made will not be held abandoned
-made using form paragraph 7.21.02. For applications pending on
+where a timely response indicates that the other
-or after December 10, 2004, rejections under 35 U.S.C. 102(e)/
+application is abandoned or will be permitted to
-(a) should not be made or maintained if the patent is disqualified
+become abandoned and will not be filed as a continuing
-under 35 U.S.C. 103(c) as prior art in a 35 U.S.C. 103(a)
+application. Such a response will be considered
-rejection.
+sufficient since it renders the requirement to identify
+the prior inventor moot because the existence of conflicting
-¶ 8.39 Double Patenting - Nonstatutory (Based Solely on
+claims is eliminated. Also note that the conflict
-Improper Timewise Extension of Patent Rights) With
+between two or more pending applications can be
-Another Application
+avoided by abandoning the applications and filing a
+continuation-in-part application merging the conflicting
+inventions into a single application.
-Claim [1] provisionally rejected on the ground of nonstatutory
+IV. REJECTIONS UNDER 35 U.S.C. 102
-double patenting over claim [2] of copending Application No. [3].
+AND 103 AND DOUBLE PATENTING
-This is a provisional double patenting rejection because the conflicting
-claims have not in fact been patented.
-The subject matter claimed in the instant application is fully
+If  the provisions of 35 U.S.C. 103(c)(1) apply
-disclosed in the referenced copending application and would be
+to the commonly owned conflicting inventions of different
-covered by any patent granted on that copending application since
+inventive entities or if the provisions of 35
-the referenced copending application and the instant application
+U.S.C. 103(c)(2) apply to non-commonly owned
-are claiming common subject matter, as follows: [4]
+inventions subject to a joint research agreement and
+thereby obviate the obviousness rejection(s), double
+patenting rejection(s) should be made (or maintained)
+as appropriate. If, however, it is determined
+that the provisions of 35
+U.S.C. 103(c) do NOT apply
+because the inventions were not commonly owned or
+subject to an obligation of assignment to the same
+person at the time the later invention was made, or
+because the claimed invention did NOT result from
+activities undertaken within the scope of a joint
+research agreement as required by 35 U.S.C.
+(c)(2) and (3), and there is evidence of record to
+indicate that a patent or application is prior art against
+the application being examined, the examiner should
+make (A) any appropriate double patenting rejection(
+s), and (B) the appropriate prior art rejection(s)
+under 35 U.S.C. 102 and/or 35 U.S.C. 103 in the
+application being examined. See Charts I-A, I-B, II-A,
+and II-B in MPEP § 804. Rejections under
+U.S.C. 102 or 35 U.S.C. 103 cannot be obviated
+solely by filing a terminal disclaimer.
-Furthermore, there is no apparent reason why applicant would
+Further, if the conflicting applications have different
-be prevented from presenting claims corresponding to those of the
+effective U.S. filing dates, the examiner should
-instant application in the other copending application. See In re
+consider making a provisional rejection in the later
-Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also
+filed application, based on the earlier filed application,
-MPEP § 804.
+under 35 U.S.C. 102(e) or 102(e)/103(a), using
+form paragraph 7.15.01 or 7.21.01. Similarly, if an
-Examiner Note:
+application has a later effective U.S. filing date than a
+conflicting issued patent, the examiner should consider
-.This form paragraph should only be used where approval
+making a rejection in the application, based on
-from the TC Director to make a nonstatutory double patenting
+the patent, under 35 U.S.C. 102(e) or 102(e)/103(a),
-rejection based on In re Schneller has been obtained.
+using form paragraph 7.15.02 or 7.21.02. Rejections
+under 35 U.S.C. 102 or 103 cannot be obviated solely
-.Use this form paragraph only when the subject matter of the
+by the filing of a terminal disclaimer. However,
-claim(s) is fully disclosed in, and covered by at least one claim of,
+for applications pending on or after December 10,
-another copending application which is commonly owned or
+, rejections under 35 U.S.C. 102(e)/103(a) should
-where there is common inventorship (one or more inventors in
+not be made or maintained if the patent is disqualified
-common).
+under 35 U.S.C. 103(c) as prior art in a 35 U.S.C.
+(a) rejection.
-.In bracket 3, insert the number of the conflicting application.
+===804.04 Submission to Technology Center Director===
-.In bracket 4, insert a description of the subject matter being
+In order to promote uniform practice, every Office
-claimed which is covered in the copending application.
+action containing a rejection on the ground of double
+patenting which relies on the parent application rejecting
+the claims in a divisional or continuing application
+where the divisional or continuing application
+was filed because of a requirement to restrict made by
+the examiner under 35 U.S.C. 121, including a
+requirement to elect species, must be submitted to the
+Technology Center Director for approval prior to
+mailing. If the rejection on the ground of double patenting
+is disapproved, it shall not be mailed but other
+appropriate action shall be taken. Note MPEP § 1003.
+==805 Effect of Improper Joinder in Patent==
+U.S.C. 121, last sentence, provides “the validity
+of a patent shall not be questioned for failure of the
+Director to require the application to be restricted
+to one invention.” In other words, under this statute,
+no patent can be held void for improper joinder of
+inventions claimed therein.
+==806 Determination of Distinctness or Independence of Claimed Inventions==
+The general principles relating to distinctness or
+independence may be summarized as follows:
-.Form paragraph 8.33 must precede any one of form paragraphs
+(A)Where inventions are independent (i.e., no
-.34 to 8.39 and must be used only ONCE in an office
+disclosed relation therebetween), restriction to one
-action.
+thereof is ordinarily proper, MPEP § 806.06.
-..If the conflicting application is currently commonly assigned
+(B)Where inventions are related as disclosed but
-but the file does not establish that the conflicting inventions were
+are distinct as claimed, restriction may be proper.
-commonly owned at the time the later invention was made, form
-paragraph 8.28 may be used in addition to this form paragraph to
-also resolve any issues relating to priority under 35 U.S.C. 102(f)
-and/or (g).
-.A provisional double patenting rejection should also be made
+(C)Where inventions are related as disclosed but
-in the conflicting application.
+are not distinct as claimed, restriction is never proper.
-.If evidence shows that either application is prior art unto the
+(D)A reasonable number of species may be
-other under 35 U.S.C. 102(f) or (g) and the copending application
+claimed when there is an allowable claim generic
-has not been disqualified (as prior art in a 103 rejection based on
+thereto. 37 CFR 1.141, MPEP § 806.04.
-common ownership), a rejection should additionally be made in
-the other application under 35 U.S.C. 102(f)/103(a) or 102(g)/
-(a) using form paragraph 7.21, unless the patent is disqualified
-under 35 U.S.C. 103(c) as prior art in a 35 U.S.C. 103(a) rejection.
-.If the disclosure of one application may be used to support a
+Where restriction is required by the Office double
-rejection of the other and the applications have different inventive
+patenting cannot be held, and thus, it is imperative the
-entities and different U.S. filing dates, use form paragraph 7.21.01to additionally make a rejection under 35 U.S.C. 102(e)/103(a) in
+requirement should never be made where related
-the application with the later effective U.S. filing date. For applications
+inventions as claimed are not distinct. For (B) and (C)
-pending on or after December 10, 2004, rejections under
+see MPEP § 806.05 - § 806.05(j) and § 809.03.
-U.S.C. 102(e)/103(a) should not be made or maintained if the
-patent is disqualified under 35 U.S.C. 103(c) as prior art in a 35
+See MPEP § 802.01 for criteria for patentably distinct
-U.S.C. 103(a) rejection.
+inventions.
-.Design/Plant — Utility Situations
+===806.01 Compare Claimed Subject Matter===
-Double patenting issues may be raised where an
+In passing upon questions of double patenting and
-applicant has filed both a utility patent application (35
+restriction, it is the claimed subject matter that is considered
-U.S.C. 111) and either an application for a plant
+and such claimed subject matter must be compared
-patent (35 U.S.C. 161) or an application for a design
+in order to determine the question of
-patent (35 U.S.C. 171). In general, the same double
+distinctness or independence. However, a provisional
-patenting principles and criteria that are applied in
+election of a single species may be required
-utility-utility situations are applied to utility-plant or
+where only generic claims are presented and the
-utility-design situations. Double patenting rejections
+generic claims recite such a multiplicity of species
-in utility-plant situations may be made in appropriate
+that an unduly extensive and burdensome search is
-circumstances.
+necessary. See MPEP § 803.02 and § 808.01(a).
-Although double patenting is rare in the context of
+===806.03 Single Embodiment, Claims Defining Same Essential Features===
-utility versus design patents, a double patenting rejection
-of a pending design or utility application can be
-made on the basis of a previously issued utility or
-design patent, respectively. Carman Indus. Inc. v.
-Wahl, 724 F.2d 932, 220 USPQ 481 (Fed. Cir. 1983).
-The rejection is based on the public policy preventing
-the extension of the term of a patent. Double patenting
-may be found in a design-utility situation irrespective
-of whether the claims in the patent relied on in the
-rejection and the claims in issue involve the same
-invention, or whether they involve inventions which
-are obvious variations of one another. In re Thorington,
-F.2d 528, 163 USPQ 644 (CCPA 1969).
- In Carman Indus., the court held that no double
+Where the claims of an application define the same
-patenting existed between a design and utility patent
+essential characteristics of a single disclosed embodiment
-since the claims in the utility patent, drawn to the interior
+of an invention, restriction therebetween should
-construction of a flow promoter, were not directed
+never be required. This is because the claims are
-to the same invention or an obvious variation of the
+not directed to distinct inventions; rather they are
-invention claimed in a design patent directed to the
+different definitions of the same disclosed subject
-visible external surface configuration of a storage bin
+matter, varying in breadth or scope of definition.
-flow promoter. The majority opinion in this decision
-appears to indicate that a two-way obviousness determination
-is necessary in design-utility cases. 724 F.2d
-at 940-41, 220 USPQ at 487-88. But see Carman
-Indus. (J. Nies, concurring).
-In Thorington, the court affirmed a double patenting
+Where such claims are voluntarily presented in
-rejection of claims for a fluorescent light bulb in a
+different applications having at least one common
-utility patent application in view of a previously
+inventor or a common assignee (i.e., no restriction
-issued design patent for the same bulb. In another
+requirement was made by the Office), disclosing the
-case, a double patenting rejection of utility claims for
+same embodiments, see MPEP § 804 - § 804.02.
-a finger ring was affirmed in view of an earlier issued
-design patent, where the drawing in both the design
-patent and the utility application illustrated the same
-article. In re Phelan, 205 F.2d 183, 98 USPQ 156
-(CCPA 1953). A double patenting rejection of a
-design claim for a flashlight cap and hanger ring was
-affirmed over an earlier issued utility patent. In re
-Barber, 81 F.2d 231, 28 USPQ 187 (CCPA 1936). A
-double patenting rejection of claims in a utility patent
-application directed to a balloon tire construction was
-affirmed over an earlier issued design patent. In re
-Hargraves, 53 F.2d 900, 11 USPQ 240 (CCPA 1931).
-III.CONTRAST BETWEEN DOUBLE PATENTING
+===806.04 Genus and/or Species Inventions===
-REJECTION AND REJECTIONS
-BASED ON PRIOR ART
-Rejections over a patent or another copending
+Where an application includes claims directed
-application based on double patenting or 35 U.S.C.
+to different embodiments or species that could fall
-(a) are similar in the sense that both require comparison
+within the scope of a generic claim, restriction
-of the claimed subject matter with at least part
+between the species may be proper if the species are
-of the content of another patent or application, and
+independent or distinct. However, 37 CFR 1.141 provides
-both may require that an obviousness analysis be
+that an allowable generic claim may link a reasonable
-made. However, there are significant differences
+number of species embraced thereby. The
-between a rejection based on double patenting and
+practice is set forth in 37 CFR 1.146.
-one based on 35 U.S.C. 102(e) prior art under
-U.S.C. 103(a). In re Bartfeld, 925 F.2d 1450,
-USPQ2d 1885 (Fed. Cir. 1991).
+{{Statute|37 CFR 1.146. Election of species.}}
+In the first action on an application containing a generic claim
+to a generic invention (genus) and claims to more than one patentably
+distinct species embraced thereby, the examiner may require
+the applicant in the reply to that action to elect a species of his or
+her invention to which his or her claim will be restricted if no
+claim to the genus is found to be allowable. However, if such
+application contains claims directed to more than a reasonable
+number of species, the examiner may require restriction of the
+claims to not more than a reasonable number of species before
+taking further action in the application.
+|}
+See MPEP § 806.04(d) for the definition of a
+generic claim, and MPEP § 806.04(e) for a discussion
+of claims that include one or more species.
+====806.04(b) Species May Be Independent or Related Inventions====
-One significant difference is that a double patenting
+Species may be either independent or
-rejection must rely on a comparison with the claims in
+related under the particular disclosure. Where species
-an issued or to be issued patent, whereas an anticipation
+under a claimed genus are not connected in any
-or obviousness rejection based on the same
+of design, operation, or effect under the disclosure,
-patent under 35
+the species are independent inventions. See MPEP
-U.S.C. 102(e)/103(a) relies on a comparison
+§ 802.01 and § 806.06. Where inventions as disclosed
-with what is disclosed (whether or not
+and claimed are both (A) species under a
-claimed) in the same issued or to be issued patent. In a
+claimed genus and (B) related, then the question of
-U.S.C. 102(e)/103(a) rejection over a prior art
+restriction must be determined by both the practice
-patent, the reference patent is available for all that it
+applicable to election of species and the practice
-fairly discloses to one of ordinary skill in the art,
+applicable to other types of restrictions such as those
-regardless of what is claimed. In re Bowers, 359 F.2d
+covered in MPEP § 806.05 - § 806.05(j). If
-, 149 USPQ 570 (CCPA 1966).
+restriction is improper under either practice, it should
+not be required.
-A second significant difference is that a terminal
+For example, two different subcombinations usable
-disclaimer cannot be used to obviate a rejection based
+with each other may each be a species of some common
-on 35 U.S.C. 102(e)/103(a) prior art. In re Fong,
+generic invention. If so, restriction practice
+under election of species and the practice applicable
-F.2d 977, 154 USPQ 25 (CCPA 1967). The purpose
+to restriction between combination and subcombinations
-of a terminal disclaimer is to obviate a double
+must be addressed.
-patenting rejection by removing the potential harm to
-the public by issuing a second patent, and not to
-remove a patent as prior art.
-For applications filed on or after November 29,
+As a further example, species of carbon compounds
-and for applications pending on or after December
+may be related to each other as intermediate and final
-, 2004, a commonly assigned/owned patent or
+product. Thus, these species are not independent and
-application may be disqualified as 35 U.S.C. 102(e)
+in order to sustain a restriction requirement, distinctness
-prior art in a 35 U.S.C. 103(a) rejection. See
+must be shown. Distinctness is proven if the
+intermediate and final products do not overlap in
-U.S.C. 103(c)(1). As an alternative to invoking the
+scope and are not obvious variants and it can be
-prior art exclusion under 35 U.S.C. 103(c)(1), the
+shown that the intermediate product is useful other
-assignee can take some preemptive measures to avoid
+than to make the final product. Otherwise, the disclosed
-having a commonly assigned/owned copending application
+relationship would preclude their being issued
-become prior art under 35 U.S.C. 102(e). The
+in separate patents. See MPEP § 806.05(j) for
-applications can be filed on the same day, or copending
+restriction practice pertaining to related products,
-applications can be merged into a single continuation-
+including intermediate-final product relationships.
-in-part application and the parent applications
-abandoned. If these steps are undesirable or the first
-patent has issued, the prior art effect of the first patent
-may be avoided by a showing under 37
-CFR 1.132that any unclaimed invention disclosed in the first
-patent was derived from the inventor of the application
-before the examiner in which the 35
-U.S.C.
-(e)/103(a) rejection was made. In re Katz, 687
-F.2d 450, 215 USPQ 14 (CCPA 1982). See also
-MPEP § 716.10. It may also be possible for applicant
-to respond to a 35 U.S.C. 102(e)/103(a) rejection by
-showing, under 37 CFR 1.131, that the date of invention
-of the claimed subject matter was prior to the
-effective filing date of the reference patent which has
-been relied upon for its unclaimed disclosure. See
-MPEP § 715. See also 37
-CFR 1.130 and MPEP § 718for affidavits or declarations to disqualify a commonly
-owned patent as prior art under 35 U.S.C. 103.
-For applications pending on or after December 10,
+====806.04(d) Definition of a Generic Claim====
-, and for reexamination proceedings in which the
-patent under reexamination was granted on or after
-December 10, 2004, a patent or application may be
-disqualified as 35 U.S.C. 102(e) prior art in a
-U.S.C. 103(a) rejection if evidence of a joint
-research agreement pursuant to 35 U.S.C. 103(c)(2)
-and (3) is made of record in the application (or patent)
-being examined (or reexamined), and the conflicting
-claims resulted from a joint research agreement that
-was in effect on or before the date the later claimed
-invention was made.
-An examiner should make both a 35 U.S.C. 102(e)/
+In an application presenting three species illustrated,
-rejection and a double patenting rejection over
+for example, in Figures 1, 2, and 3, respectively,
-the same reference when the facts support both rejections.
+a generic claim should read on each of these
-Note that even if an earlier patent or application
+views; but the fact that a claim does so read is not
-to another is disqualified as prior art in a 35
+conclusive that it is generic. It may define only an element
-U.S.C. 103(a) rejection based on common ownership
+or subcombination common to the several species.
-or a joint research agreement as discussed above, that
-patent or application is available as prior art under 35
-U.S.C. 102(e) and may form the basis of an anticipation
-rejection. If the examiner makes only one of
-these rejections when each is separately applicable,
-and if the next office action includes the previously
-omitted rejection, then the next Office
-action cannot be made final. A prior art reference
-that anticipates or  renders claimed subject matter
-obvious under 35 U.S.C. 102(e)/103(a) does not create
-a double patenting situation where that subject
-matter is not claimed in the reference patent. For
-applications pending on or after December 10, 2004,
-rejections under 35 U.S.C. 102(e)/103(a) should not
-be made or maintained if the reference is disqualified
-under 35 U.S.C. 103(c) as prior art in a 35 U.S.C.
-(a) rejection. See MPEP §
-.02(l)(1) for information
-regarding when prior art is disqualified under
-U.S.C. 103(c) based on common ownership or
-claimed inventions made as a result of activities
-undertaken within the scope of a joint research agreement.
+In general, a generic claim should require no
+material element additional to those required by
+the species claims, and  each of the species claims
+must require all the limitations of the generic claim.
-Until applicant establishes the existence of a joint
+Once a generic claim is allowable, all of the
-research agreement, the examiner cannot apply a double
+claims drawn to species in addition to the elected species
-patenting rejection based on the possible existence
+which require all the limitations of the
-of such an agreement. If in reply to an Office action
+generic claim will ordinarily be  allowable over the
-applying a rejection under 35 U.S.C. 102(e)/103,
+prior art in view of the allowability of the
-applicant disqualifies the relied upon reference under
+generic claim, since the additional species will depend
+thereon or otherwise require all of the limitations
+thereof. When all or some of the claims directed to
+one of the species in addition to the elected species do
+not require all the limitations of the generic claim,
+see MPEP § 821.04(a).
+====806.04(e) Claims Limited to Species====
+Claims are definitions or descriptions of inventions.
+Claims themselves are never species. The
+scope of a claim may be limited to a single disclosed
+embodiment (i.e., a single species, and thus be designated
+a specific species claim). Alternatively, a
+claim may encompass two or more of the disclosed
+embodiments (and thus be designated a
+generic or genus claim).
+Species  always refer to the  different embodiments
+of the invention.
+Species may be either independent or related as disclosed
+(see MPEP § 806.04 and §
+.04(b)).
-the joint research agreement provision of 35 U.S.C.
+====806.04(f) Restriction Between Mutually Exclusive Species====
-(c) and a subsequent double patenting rejection
-based upon the disqualified reference is applied, the
+Where two or more species are claimed, a requirement
-next Office action may be made final even if applicant
+for restriction to a single species may be proper
-did not amend the claims (provided the examiner
+if the species are mutually exclusive. Claims  to
-introduces no other new ground of rejection that was
+different species are mutually exclusive if one
-not necessitated by either amendment or an information
+claim recites limitations disclosed for a first species
-disclosure statement filed during the time period
+but not  a second, while a second claim recites
-set forth in 37 CFR 1.97(c) with the fee set forth in 37
+limitations disclosed only for the second species and
-CFR 1.17(p)). The Office action is properly made
+not the first. This may also be expressed by saying
-final because the new double patenting rejection was
+that to require restriction between claims limited
-necessitated by the applicant’s amendment of the
+to species, the claims  must not overlap in scope.
-application.
-.01Prohibition of Double PatentingRejections Under 35 U.S.C. 121
+====806.04(h) Species Must Be Patentably Distinct From Each Other====
-[R-3]
-U.S.C. 121 authorizes the Director to restrict
+In making a requirement for restriction in an application
-the claims in a patent application to a single invention
+claiming plural species, the examiner should
-when independent and distinct inventions are presented
+group together species considered clearly unpatentable
-for examination. The third sentence of 35
+over each other .
-U.S.C. 121 prohibits the use of a patent issuing on an
-application with respect to which a requirement for
-restriction has been made, or on an application filed as
-a result of such a requirement, as a reference against
-any divisional application, if the divisional application
-is filed before the issuance of the patent. The
-U.S.C. 121 prohibition applies only where the
-Office has made a requirement for restriction. The
-prohibition does not apply where the divisional application
-was voluntarily filed by the applicant and not
-in response to an Office requirement for restriction.
-This apparent nullification of double patenting as a
-ground of rejection or invalidity in such cases
-imposes a heavy burden on the Office to guard against
-erroneous requirements for restrictions where the
-claims define essentially the same invention in different
-language and which, if acquiesced in, might result
-in the issuance of several patents for the same invention.
+Where generic claims are allowable, applicant
+may claim in the same application additional species
+as provided by 37 CFR 1.141. See MPEP § 806.04.
+Where an applicant files a divisional application
+claiming a species previously claimed but nonelected
+in the parent case pursuant to and consonant with a
+requirement to restrict a double patenting rejection of
+the species claim(s) would be prohibited under 35
+U.S.C. 121. See MPEP § 821.04(a) for rejoinder of
+species claims when a generic claim is allowable.
-The prohibition against holdings of double patenting
+Where, however,  claims to a different species, or
-applies to requirements for restriction between the
+ a species disclosed but not claimed in a parent case
-related subjects treated in MPEP § 806.04 through
+as filed and first acted upon by the examiner, are
-§
+voluntarily presented in a different application having
+at least one common inventor or a common assignee
-.05(j), namely, between combination and
+(i.e., no requirement for election pertaining to said
-subcombination thereof, between subcombinations
+species was made by the Office) there should be
-disclosed as usable together, between process and
+close investigation to determine whether a double
-apparatus for its practice, between process and product
+patenting rejection would be appropriate. See
-made by such process and between apparatus and
+MPEP § 804.01 and § 804.02.
-product made by such apparatus, etc., so long as the
-claims in each application are filed as a result of such
+====806.04(i) Generic Claims Presented After Issue of Species====
-requirement.
-The following are situations where the prohibition
+If a generic claim is presented  after the
-against double patenting rejections under 35
+issuance of a patent claiming one or more species
-U.S.C. 121 does not apply:
+within the scope of the generic claim, the Office may
+reject the generic claim on the grounds of obviousness-
+type double patenting when the patent and
+application have at least once common inventor and/
+or are either (1) commonly assigned/owned or (2)
+non-commonly assigned/owned but subject to a joint research agreement as set forth in 35 U.S.C. 103(c)(2)
+and (3). See MPEP § 804. Applicant may overcome
+such a rejection by filing a terminal disclaimer. See
+In re Goodman, 11 F.3d 1046, 1053, 29 USPQ2d
+, 2016 (Fed. Cir. 1993); In re Braithwaite,
+F.2d 594, 154 USPQ 29 (CCPA 1967).
-(A)The applicant voluntarily files two or more
+===806.05 Related Inventions===
-applications without a restriction requirement by the
-examiner. 35 U.S.C. 121 requires claims of a divisional
-application to have been formally entered,
-restricted, and removed from an earlier application in
-order to obtain the benefit of 35 U.S.C. 121. Geneva
-Pharms. Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373,
-, 68 USPQ2d 1865, 1870 (Fed. Cir. 2003) (For
-claims in a divisional application that were not in the
-original application, 35 U.S.C. 121 “does not suggest
-that the original application merely needs to provide
-some support for claims that are first entered formally
-in the later divisional application.” Id.); In re
-Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA
-).
-(B)The claims of the different applications or
+Where two or more related inventions are claimed,
-patents are not consonant with the restriction requirement
+the principal question to be determined in connection
-made by the examiner, since the claims have
+with a requirement to restrict or a rejection on the
-been changed in material respects from the claims at
+ground of double patenting is whether or not
-the time the requirement was made. For example, the
+the
-divisional application filed includes additional claims
+inventions as claimed are distinct. If they are
-not consonant in scope to the original claims subject
+distinct,
-to restriction in the parent. Symbol Technologies, Inc.
+restriction may be proper. If they are not distinct,
-v. Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241
+restriction is never proper. If nondistinct inventions
-(Fed. Cir. 1991) and Gerber Garment Technology,
+are claimed in separate applications or patents, double
-Inc. v. Lectra Systems, Inc., 916 F.2d 683, 16 USPQ2d
+patenting must be held, except where the additional
-(Fed. Cir. 1990). In order for consonance to
+applications were filed consonant with a requirement
-exist, the line of demarcation between the independent
+to restrict.
-and distinct inventions identified by the examiner
-in the requirement for restriction must be
-maintained. 916 F.2d at 688, 16 USPQ2d at 1440.
-(C)The restriction requirement was written in a
+Various pairs of related inventions are noted in the
-manner which made it clear to applicant that the
+following sections. In applications claiming inventions
-requirement was made subject to the nonallowance of
+in different statutory categories, only one-way
-generic or other linking claims and such generic or
+distinctness is generally needed to support a restriction
-linking claims are subsequently allowed. Therefore, if
+requirement. See MPEP § 806.05(c) (combination
-a generic or linking claim is subsequently allowed, the
+and subcombination) and § 806.05(j) (related
-restriction requirement must be withdrawn.
+products or related processes) for examples of when a
+two-way test is required for distinctness. Related
+inventions in the same statutory class are considered
+mutually exclusive, or not overlapping in scope, if a
+first invention would not infringe a second invention,
+and the second invention would not infringe the first
+invention
-(D)The requirement for restriction (holding of
+====806.05(a)Combination and Subcombination====
-lack of unity of invention) was only made in an international
-application by the International Searching
+A combination is an organization of which a subcombination
+or element is a part.
+.05(c)Criteria of Distinctness Between
+Combination and Subcombination
+[R-5]
+To support a requirement for restriction between
+combination and subcombination inventions, both
+two-way distinctness and reasons for insisting on
+restriction are necessary, i.e., there would be a serious
+search burden if restriction were not required
+as evidenced by separate classification, status, or field
+of search. See MPEP § 808.02.
+The inventions are distinct if it can be shown that a
+combination as claimed:
-Authority or the International Preliminary Examining
+(A)does not require the particulars of the subcombination
-Authority.
+as claimed for patentability (to show
+novelty and unobviousness), and
-(E)The requirement for restriction was withdrawn
+(B)the subcombination can be shown to have
-by the examiner before the patent issues. In re
+utility either by itself or in another materially different
-Ziegler, 443 F.2d 1211, 170 USPQ 129 (CCPA 1971).
+combination.
-Note that a restriction requirement in an earlier-filed
-application does not carry over to claims of a continuation
-application in which the examiner does not reinstate
-or refer to the restriction requirement in the
-parent application. Reliance on a patent issued from
-such a continuation application to reject claims in a
-later-filed divisional application is not prohibited
-under 35 U.S.C. 121. Bristol-Myers Squibb Co. v.
-Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d
-, 1100 (Fed. Cir. 2004).
-(F)The claims of the second application are
+When these factors cannot be shown, such inventions
-drawn to the “same invention” as the first application
+are not distinct.
-or patent. Studiengesellschaft Kohle mbH v. Northern
-Petrochemical Co., 784 F.2d 351, 228 USPQ 837
-(Fed. Cir. 1986).
+The following examples are included for general
+guidance.
+I.SUBCOMBINATION ESSENTIAL TO
+COMBINATION
-(G)Where a requirement for restriction between a
+ABsp/Bsp No Restriction
-product, a process of making the product, and a process
-of using the product was made subject to the non-
-allowance of the product and the product is subsequently
-allowed. In this situation the restriction
-requirement must be withdrawn.
-While the situation should not arise where appropriate
+Where a combination as claimed  requires the
-care is exercised in defining the independent
+details of a subcombination as separately
-and distinct inventions in a restriction requirement,
+claimed, there is usually no evidence that combination
-the issue might arise as to whether 35 U.S.C. 121 prevents
+ABsp is patentable without the details of Bsp. The
-the use of a double patenting rejection when the
+inventions are not distinct and a requirement for
-identical invention is claimed in both the patent and
+restriction must not be made or maintained, even if
-the pending application. Under these circumstances,
+the subcombination has separate utility. This situation
-the Office will make the double patenting rejection
+can be diagrammed as combination ABsp (“sp” is an
-because the patentee is entitled only to a single patent
+abbreviation for “specific”), and subcombination Bsp.
-for an invention. As expressed in Studiengesellschaft
+Thus the specific characteristics required by the subcombination
-Kohle, 784 F.2d at 361, 228 USPQ at 844, (J. Newman,
+claim Bsp are also required by the combination
-concurring), “35 U.S.C. 121 of course does not
+claim. See MPEP § 806.05(d) for situations
-provide that multiple patents may be granted on the
+where two or more subcombinations are separately
-identical invention.”
+claimed.
-.02Avoiding a Double Patenting
+II.SUBCOMBINATION NOT ESSENTIAL
-Rejection [R-3]
+TO COMBINATION
-I.STATUTORY
+A. ABbr/Bsp Restriction Proper
-A rejection based on the statutory type of double
+Where a combination as claimed does not
-patenting can be avoided by amending the conflicting
+require the details of the subcombination as separately
-claims so that they are not coextensive in scope.
+claimed and the subcombination has separate
-Where the conflicting claims are in one or more pending
+utility, the inventions are distinct and restriction is
-applications and a patent, a rejection based on
+proper if reasons exist for insisting upon the restriction,
-statutory type double patenting can also be avoided by
+i.e., there would be a serious search burden if
-canceling the conflicting claims in all the pending
+restriction were not required as evidenced by separate
-applications. Where the conflicting claims are in two
+classification, status, or field of search.
-or more pending applications, a provisional rejection
-based on statutory type double patenting can also be
-avoided by canceling the conflicting claims in all but
-one of the pending applications. A terminal disclaimer
-is not effective in overcoming a statutory double patenting
-rejection.
-The use of a 37 CFR 1.131 affidavit in overcoming
+This situation can be diagramed as combination
-a statutory double patenting rejection is inappropriate.
+ABbr (“br” is an abbreviation for “broad”), and subcombination
-In re Dunn, 349 F.2d 433, 146 USPQ 479 (CCPA
+Bsp (“sp” is an abbreviation for “specific”).
-). Knell v. Muller, 174 USPQ 460 (Comm’r. Pat.
+Bbr indicates that in the combination the
-), citing the CCPA decisions in In re Ward, 236
+subcombination is broadly recited and that the specific
-F.2d 428, 111 USPQ 101 (CCPA 1956); In re Teague,
+characteristics required by the subcombination
-F.2d 145, 117 USPQ 284 (CCPA 1958); and In re
+claim Bsp are not required by the combination claim.
-Hidy, 303 F.2d 954, 133 USPQ 650 (CCPA 1962).
-II.NONSTATUTORY
+Since claims to both the subcombination and combination
+are presented, the omission of details of the
+claimed subcombination Bsp in the combination claim
+ABbr is evidence that the combination does not rely
+upon the specific limitations of the subcombination
+for its patentability. If subcombination Bsp has separate
+utility, the inventions are distinct and restriction is
+proper if reasons exist for insisting upon the restriction.
+In applications claiming plural inventions capable
+of being viewed as related in two ways, for example,
+as both combination-subcombination and also as species
+under a claimed genus, both applicable criteria
+for distinctness must be demonstrated to support a
+restriction requirement. See also MPEP § 806.04(b).
-A rejection based on a nonstatutory type of double
+Form paragraph 8.15 may be used in combination-
-patenting can be avoided by filing a terminal disclaimer
+subcombination restriction requirements.
-in the application or proceeding in which the
-rejection is made. In re Vogel, 422 F.2d 438,
-USPQ 619 (CCPA 1970); In re Knohl, 386 F.2d
-, 155 USPQ 586 (CCPA 1967); and In re Griswold,
-F.2d 834, 150 USPQ 804 (CCPA 1966).
-The use of a terminal disclaimer in overcoming a nonstatutory
-double patenting rejection is in the public
-interest because it encourages the disclosure of additional
-developments, the earlier filing of applications,
-and the earlier expiration of patents whereby the
-inventions covered become freely available to the
-public. In re Jentoft, 392 F.2d 633, 157 USPQ 363
-(CCPA 1968); In re Eckel, 393 F.2d 848, 157 USPQ
-(CCPA 1968); and In re Braithwaite, 379 F.2d
-, 154 USPQ 29 (CCPA 1967).
-The use of a 37 CFR 1.131 affidavit in overcoming
-a double patenting rejection is inappropriate because
-the claim or claims in the application are being
-rejected over a patent which claims the rejected
-invention. In re Dunn, 349 F.2d 433, 146 USPQ 479
-(CCPA 1965). 37 CFR 1.131 is inapplicable if the
-claims of the application and the patent are “directed
-to substantially the same invention.” It is also inappli
+The burden is on the examiner to suggest an example
+of separate utility. If applicant proves or provides
+an argument, supported by facts, that the utility suggested
+by the examiner cannot be accomplished, the
+burden shifts to the examiner to document a viable
+separate utility or withdraw the requirement.
+B. ABsp/ABbr/Bsp Restriction Proper
+The presence of a claim to combination ABsp does
+not alter the propriety of a restriction requirement
+properly made between combination ABbr and subcombination
+Bsp. Claim ABbr is an evidence claim
+which indicates that the combination does not rely
+upon the specific details of the subcombination for its
+patentability. If a restriction requirement can be properly
+made between combination ABbr and subcombination
+Bsp, any claim to combination ABsp would be
+grouped with combination ABbr.
+If the combination claims are amended after a
+restriction requirement such that each combination, as
+claimed, requires all the limitations of the subcombination
+as claimed, i.e., if the evidence claim ABbr is
+deleted or amended to require Bsp, the restriction
+requirement between the combination and subcombination
+should not be maintained.
+If a claim to Bsp is determined to be allowable, any
+claims requiring Bsp, including any combination
-cable if there is a lack of “patentable distinctness”
+claims of the format ABsp, must be considered for
-between the claimed subject matter. Knell v. Muller,
+rejoinder. See MPEP § 821.04.
-USPQ 460 (Comm’r. Pat. 1971), citing the court
-decisions in In re Ward, 236 F.2d 428, 111 USPQ 101
-(CCPA 1956); In re Teague, 254 F.2d 145, 117 USPQ
-(CCPA 1958); and In re Hidy, 303 F.2d 954, 133
-USPQ 65 (CCPA 1962).
-A patentee or applicant may disclaim or dedicate to
-the public the entire term, or any terminal part of the
-term of a patent. 35 U.S.C. 253. The statute does not
-provide for a terminal disclaimer of only a specified
-claim or claims. The terminal disclaimer must operate
-with respect to all claims in the patent.
-The filing of a terminal disclaimer to obviate a
-rejection based on nonstatutory double patenting is
-not an admission of the propriety of the rejection.
-Quad Environmental Technologies Corp. v. Union
-Sanitary District, 946 F.2d 870, 20 USPQ2d 1392
-(Fed. Cir. 1991). The court indicated that the “filing of
-a terminal disclaimer simply serves the statutory function
-of removing the rejection of double patenting,
-and raises neither a presumption nor estoppel on the
-merits of the rejection.”
-A terminal disclaimer filed to obviate a double patenting
+III.PLURAL COMBINATIONS REQUIRING A
-rejection is effective only with respect to the
+SUBCOMBINATION COMMON TO EACH
-application identified in the disclaimer, unless by its
+COMBINATION
-terms it extends to continuing applications. If an
-appropriate “provisional” nonstatutory double patenting
-rejection  is made in each of two or more
-pending applications, the examiner should follow
-the practice set forth in MPEP § 804, subsection I.B.1.
-in determining in which of the applications an appropriate
-terminal disclaimer must be filed.
-Claims that differ from each other (aside from
+When an application includes a claim to a single
-minor differences in language, punctuation, etc.),
+subcombination, and that subcombination is required
-whether or not the difference would have been
+by plural claimed combinations that are properly
-obvious, are not considered to be drawn to the same
+restrictable, the subcombination claim is a linking
-invention for double patenting purposes under 35
+claim and will be examined with the elected combination
-U.S.C. 101. In cases where the difference in claims
+(see MPEP § 809.03). The subcombination claim
-would have been obvious, terminal disclaimers
+links the otherwise restrictable combination inventions
-are effective to overcome double patenting rejections.
+and should be listed in form paragraph 8.12. The
-Where the subject matter of the reference and the
+claimed plural combinations are evidence that the
-claimed invention were commonly owned at the time
+subcombination has utility in more than one combination.
-the invention was made, such terminal disclaimers
+Restriction between plural combinations may be
-must include a provision that the patent shall be unenforceable
+made using form paragraph 8.14.01. See MPEP
-if it ceases to be commonly owned with the
+§ 806.05(j).
-other application or patent. Note 37 CFR 1.321(c).
-CFR 1.321(d) sets forth the requirements for a
-terminal disclaimer where the claimed invention
-resulted from activities undertaken within the scope
-of a joint research agreement as defined in 35 U.S.C.
-(c)(3). It should be emphasized that a terminal
-disclaimer cannot be used to overcome a rejection
-under 35 U.S.C. 102(e)/103(a).
-III.TERMINAL DISCLAIMER REQUIRED
+====806.05(d) Subcombinations Usable Together====
-DESPITE REQUEST TO ISSUE ON COMMON
-ISSUE DATE
- Applicants are cautioned that reliance upon a common
+Two or more claimed subcombinations, disclosed
-issue date cannot effectively substitute for the filing
+as usable together in a single combination, and which
-of one or more terminal disclaimers in order to
+can be shown to be separately usable, are usually
-overcome a proper double patenting rejection, particularly
+restrictable when the subcombinations do not overlap
-since a common issue date alone does not avoid
+in scope and are not obvious variants.
-the potential problems of dual ownership by a
-common assignee, or by parties to a joint research
-agreement, of patents to patentably indistinct inventions.
-In any event, the Office cannot ensure that two
-or more applications will have a common issue date.
-IV.DISCLAIMING MULTIPLE DOUBLE
+To support a restriction requirement where applicant
-PATENTING REFERENCES
+separately claims plural subcombinations usable
+together in a single combination and claims a combination
+that requires the particulars of at least one of
+said subcombinations, both two-way distinctness and
+reasons for insisting on restriction are necessary. Each
+subcombination is distinct from the combination as
+claimed if:
-If multiple conflicting patents and/or pending applications
+(A)the combination does not require the particulars
-are applied in double patenting rejections
+of the subcombination as claimed for patentability
-made in a single application, then prior to issuance of
+(e.g., to show novelty and unobviousness), and
-that application, it is necessary to disclaim the terminal
-part of any patent granted on the application
-which would extend beyond the application date of
-each one of the conflicting patents and/or applications.
-A terminal disclaimer fee is required for each
-terminal disclaimer filed. To avoid paying multiple
-terminal disclaimer fees, a single terminal disclaimer
-based on common ownership may be filed, for
-example, in which the term disclaimed is based on all
-the conflicting, commonly owned double patenting
-references. Similarly, a single terminal disclaimer
-based on a joint research agreement may be filed, in
-which the term disclaimed is based on all the conflicting
-double patenting references.
-Each one of the commonly owned conflicting
+(B)the subcombination can be shown to have
-double patenting references must be included
+utility either by itself or in another materially different
-in the terminal disclaimer to avoid the problem of
+combination.
-dual ownership of patents to patentably indistinct
-inventions in the event that the patent issuing from the
-application being examined ceases to be commonly
-owned with any one of the double patenting references
-that have issued or may issue as a patent. Note
+See MPEP § 806.05(c). Furthermore, restriction is
+only proper when there would be a serious burden if
+restriction were not required, as evidenced by separate
+classification, status, or field of search.
+Where claims to two or more subcombinations are
+presented along with a claim to a combination that
+includes the particulars of at least two subcombinations,
+the presence of the claim to the second subcombination
+is evidence that the details of the first
+subcombination are not required for patentability (and
+vice versa). For example, if an application claims
+ABC/B/C wherein ABC is a combination claim and B
+and C are each subcombinations that are properly
+restrictable from each other, the presence of a claim to
+C provides evidence that the details of B are not
+required for the patentability of combination ABC.
+Upon determining that all claims directed to an
+elected combination invention are allowable, the
+examiner must reconsider the propriety of the restriction
+requirement. Where the combination is allowable
+in view of the patentability of at least one of the subcombinations,
+the restriction requirement between the
+elected combination and patentable subcombination(
+s) will be withdrawn; furthermore, any subcombinations
+that were searched and determined to be
+allowable must also be rejoined. If a subcombination
+is elected and determined to be allowable, nonelected
+claims requiring all the limitations of the allowable
+claim will be rejoined in accordance with MPEP §
+.04.
+The examiner must show, by way of example, that
+one of the subcombinations has utility other than in
+the disclosed combination.
-that 37 CFR 1.321(c)(3) requires that a terminal disclaimer
+Care must be taken to determine if the subcombinations
-for commonly owned conflicting claims
+are generically claimed.
-“[i]nclude a provision that any patent granted on that
-application or any patent subject to the reexamination
-proceeding shall be enforceable only for and during
-such period that said patent is commonly owned with
-the application or patent which formed the basis for
-the rejection.”
-Filing a terminal disclaimer including each one of
+Where subcombinations as disclosed and claimed
-the conflicting double patenting references is also
+are both (a) species under a claimed genus and (b)
-necessary to avoid the problem of ownership of patents
+related, then the question of restriction must be determined
-to patentably indistinct inventions by parties to a
+by both the practice applicable to election of
-joint research agreement. 37 CFR 1.321(d) sets forth
+species and the practice applicable to related inventions.
-the requirements for a terminal disclaimer where the
+If restriction is improper under either practice, it
-claimed invention resulted from activities undertaken
+should not be required (MPEP § 806.04(b)).
-within the scope of a joint research agreement.
-V.REQUIREMENTS OF A TERMINAL DISCLAIMER
+If applicant proves or provides an argument, supported
+by facts, that the other use, suggested by the
+examiner, cannot be accomplished or is not reasonable,
+the burden is on the examiner to document a viable
+alternative use or withdraw the requirement.
+====806.05(e) Process and Apparatus for Its Practice====
-A terminal disclaimer is a statement filed by an
+Process and apparatus for its practice can be shown
-owner (in whole or in part) of a patent or a patent to
+to be distinct inventions, if either or both of the following
-be granted that is used to disclaim or dedicate a portion
+can be shown: (A) that the process as claimedcan be practiced by another materially different apparatus
-of the entire term of all the claims of a patent. The
+or by hand; or (B) that the apparatus as claimedcan be used to practice another materially different
-requirements for a terminal disclaimer are set forth in
+process.
-CFR 1.321. Sample forms of a terminal disclaimer,
-and guidance as to the filing and treatment of a terminal
-disclaimer, are provided in MPEP § 1490.
-VI.TERMINAL DISCLAIMERS REQUIRED
+The burden is on the examiner to provide reasonable
-TO OVERCOME NONSTATUTORY
+examples that recite material differences.
-DOUBLE PATENTING REJECTIONS IN
-APPLICATIONS FILED ON OR AFTER
+If applicant proves or provides convincing argument
-JUNE 8, 1995
+that there is no material difference or that a process
+cannot be performed by hand (if examiner so
+argued), the burden is on the examiner to document
+another materially different process or apparatus or
+withdraw the requirement.
+====806.05(f) Process of Making and ProductMade====
-Public Law 103-465 (1994) amended 35 U.S.C.
+A process of making and a product made by the
-(a)(2) to provide that any patent issuing on a utility
+process can be shown to be distinct inventions if
-or plant application filed on or after June 8, 1995
+either or both of the following can be shown: (A) that
-will expire 20 years from its filing date, or, if the
+the process as claimed is not an obvious process of
-application claims the benefit of an earlier filed application
+making the product and the process as claimed can be
-under 35 U.S.C. 120, 121, or 365(c), 20 years
+used to make another materially different product; or
-from the earliest filing date for which a benefit under
+(B) that the product as claimed can be made by
-U.S.C. 120, 121, or 365(c) is claimed. Therefore,
+another materially different process.
-any patent issuing on a continuing utility or plant
-application filed on or after June 8, 1995 will expire
-years from the earliest filing date for which a benefit
-is claimed under 35 U.S.C. 120, 121, or 365(c),
-subject to the provisions of 35 U.S.C. 154(b).
-There are at least two reasons for insisting upon a
+Allegations of different processes or products need
-terminal disclaimer to overcome a nonstatutory
+not be documented.
-double patenting rejection in a continuing application
-subject to a 20-year term under 35 U.S.C. 154(a)(2).
+A product defined by the process by which it can be
-First, 35 U.S.C. 154(b) includes provisions for patent
+made is still a product claim (In re Bridgeford, 357
-term extension based upon prosecution delays during
+F.2d 679, 149 USPQ 55 (CCPA 1966)) and can be
-the application process. Thus, 35 U.S.C. 154 does not
+restricted from the process if the examiner can demonstrate
-ensure that any patent issuing on a continuing utility
+that the product as claimed can be made by
-or plant application filed on or after June 8, 1995 will
+another materially different process; defining the
-necessarily expire 20 years from the earliest filing
+product in terms of a process by which it is made is
-date for which a benefit is claimed under 35 U.S.C.
+nothing more than a permissible technique that applicant
-, 121, or 365(c). Second, 37 CFR 1.321(c)(3)
+may use to define the invention.
-requires that a terminal disclaimer filed to obviate a
-nonstatutory double patenting rejection based
-on commonly owned conflicting claims include a
-provision that any patent granted on that application
-be enforceable only for and during the period that the
-patent is commonly owned with the application or
-patent which formed the basis for the rejection. 37
-CFR 1.321(d) sets forth the requirements for a terminal
-disclaimer where the claimed invention resulted
-from activities undertaken within the scope of a joint
-research agreement. These requirements serve to
-avoid the potential for harassment of an accused
-infringer by multiple parties with patents covering the
-same patentable invention. See, e.g., In re Van
-Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70
-(CCPA 1982). Not insisting upon a terminal disclaimer
-to overcome a nonstatutory double patenting
-rejection in an application subject to a 20-year
-term under 35 U.S.C. 154(a)(2) would result in the
-potential for the problem that 37 CFR 1.321(c)(3) was
-promulgated to avoid.
-Accordingly, a terminal disclaimer under 37 CFR
+If applicant convincingly traverses the requirement,
-.321 is required in an application to overcome a
+the burden shifts to the examiner to document a viable
-nonstatutory double patenting rejection, even if
+alternative process or product, or withdraw the
-the application was filed on or after June 8, 1995 and
+requirement.
-claims the benefit under 35 U.S.C. 120, 121, or 365(c)
-of the filing date of the patent or application which
-forms the basis for the rejection. Examiners should
-respond to arguments that a terminal disclaimer under
-CFR 1.321 should not be required in a continuing
-application filed on or after June 8, 1995 to overcome
-a nonstatutory double patenting rejection due to
-the change to 35 U.S.C. 154 by citing to this section
-of the MPEP or to the Official Gazette notice at 1202
-O.G. 112 (Sept. 30, 1997).
+====806.05(g) Apparatus and Product Made====
+An apparatus and a product made by the apparatus
+can be shown to be distinct inventions if either or both
+of the following can be shown: (A) that the apparatus
+as claimed is not an obvious apparatus for making the
+product and the apparatus as claimed can be used to
+make another materially different product; or (B)
+that the product as claimed can be made by another
+materially different apparatus.
+The examiner must show by way of example either
+(A) that the apparatus as claimed is not an obvious
+apparatus for making the product and the apparatus as
+claimed can be used to make another materially
+different product or (B) that the product as claimedcan be made by another  materially different apparatus.
+The burden is on the examiner to provide an example,
+but the example need not be documented.
-.03 Commonly Owned Inventions
+If applicant either proves or provides convincing
-of Different Inventive Entities;
+argument that the alternative example suggested by
-Non-Commonly Owned
+the examiner is not workable, the burden is on the
-Inventions Subject to a Joint
+examiner to suggest another viable example or withdraw
-Research Agreement [R-3]
+the restriction requirement.
-U.S.C. 103. Conditions for patentability; non-obvious
+====806.05(h) Product and Process of Using====
-subject matter.
+A product and a process of using the product can be
+shown to be distinct inventions if either or both of the
+following can be shown: (A) the process of using as
+claimed can be practiced with another materially different
+product; or (B) the product as claimed can be
+used in a materially different process.
+The burden is on the examiner to provide an example,
+but the example need not be documented.
+If the applicant either proves or provides a convincing
+argument that the alternative use suggested by the
+examiner cannot be accomplished, the burden is on
+the examiner to support a viable alternative use or
+withdraw the requirement.
+====806.05(i) Product, Process of Making, and Process of Using====
-(c)(1) Subject matter developed by another person, which
+{{Statute|37 CFR 1.141. Different inventions in one national application.}}
-qualifies as prior art only under one or more of subsections (e), (f),
+{{Ellipsis}}
-and (g) of section 102 of this title, shall not preclude patentability
+(b)Where claims to all three categories, product, process of
-under this section where the subject matter and the claimed invention
+making, and process of use, are included in a national application,
-were, at the time the claimed invention was made, owned by
+a three way requirement for restriction can only be made where
-the same person or subject to an obligation of assignment to the
+the process of making is distinct from the product. If the process
-same person.
+of making and the product are not distinct, the process of using
+may be joined with the claims directed to the product and the process
+of making the product even though a showing of distinctness
+between the product and process of using the product can be
+made.
+|}
-(2)For purposes of this subsection, subject matter developed
+Where an application contains claims to a product,
-by another person and a claimed invention shall be deemed
+claims to a process specially adapted for (i.e., not patentably distinct from, as defined in MPEP
-to have been owned by the same person or subject to an obligation
+§ 806.05(f)) making the product, and claims to a process
-of assignment to the same person if —
+of using the product, applicant may be
+required to elect either (A) the product and process of
+making it; or (B) the process of using. If the
+examiner cannot make a showing of distinctness
+between the process of using and the product (MPEP
+§ 806.05(h)), restriction cannot be required.
-(A)the claimed invention was made by or on behalf of
+See MPEP § 821.04(b) for rejoinder practice pertaining
-parties to a joint research agreement that was in effect on or before
+to product and process inventions.
-the date the claimed invention was made;
-(B)the claimed invention was made as a result of
+====806.05(j) Related Products; Related Processes====
-activities undertaken within the scope of the joint research agreement;
-and
-(C)the application for patent for the claimed invention
+To support a requirement for restriction between
-discloses or is amended to disclose the names of the parties to the
+two or more related product inventions, or between
-joint research agreement.
+two or more related process inventions, both two-way
+distinctness and reasons for insisting on restriction are
+necessary, i.e., separate classification, status in the art,
+or field of search. See MPEP § 808.02. See MPEP
+§ 806.05(c) for an explanation of the requirements to
+establish two-way distinctness as it applies to inventions
+in a combination/subcombination relationship.
+For other related product inventions, or related process
+inventions, the inventions are distinct if
-(3)For purposes of paragraph (2), the term “joint
+(A)the inventions as claimed do not overlap in
-research agreement” means a written contract, grant, or cooperative
+scope, i.e., are mutually exclusive;
-agreement entered into by two or more persons or entities for
-the performance of experimental, developmental, or research
-work in the field of the claimed invention.
-CFR 1.78. Claiming benefit of earlier filing date and
+(B)the inventions as claimed are not obvious
-cross references to other applications.
+variants; and
+(C)the inventions as claimed are either not capable
+of use together or can have a materially different
+design, mode of operation, function, or effect. See
+MPEP § 802.01.
+The burden is on the examiner to provide an example
+to support the determination that the inventions
+are distinct, but the example need not be documented.
+If applicant either proves or provides convincing evidence
+that the example suggested by the examiner is
+not workable, the burden is on the examiner to suggest
+another viable example or withdraw the restriction
+requirement.
-(c)If an application or a patent under reexamination and at
+As an example, an intermediate product and a final
-least one other application naming different inventors are owned
+product can be shown to be distinct inventions if the
-by the same person and contain conflicting claims, and there is no
+intermediate and final products are mutually exclusive
-statement of record indicating that the claimed inventions were
+inventions (not overlapping in scope) that are not
-commonly owned or subject to an obligation of assignment to the
+obvious variants, and the intermediate product as
-same person at the time the later invention was made, the Office
+claimed is useful to make other than the final product
-may require the assignee to state whether the claimed inventions
+as claimed. Typically, the intermediate loses its identity
-were commonly owned or subject to an obligation of assignment
+in the final product. See also MPEP § 806.05(d)
-to the same person at the time the later invention was made, and if
+for restricting between combinations disclosed as
-not, indicate which named inventor is the prior inventor. Even if
+usable together. See MPEP § 809 - § 809.03 if a
-the claimed inventions were commonly owned, or subject to an
+generic claim or claim linking multiple products or
-obligation of assignment to the same person, at the time the later
+multiple processes is present.
-invention was made, the conflicting claims may be rejected under
-the doctrine of double patenting in view of such commonly owned
+===806.06 Independent Inventions===
-or assigned applications or patents under reexamination.
-CFR 1.130. Affidavit or declaration to disqualify
+Inventions as claimed are independent if there is no
-commonly owned patent or published application as prior
+disclosed relationship between the inventions, that is,
-art.
+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)When any claim of an application or a patent under reexamination
+(A)Two different combinations, not disclosed as
-is rejected under 35
+capable of use together, having different modes of
-U.S.C. 103 on a U.S. patent or U.S.
+operation, different functions and different effects are
-patent application publication which is not prior art under 35
+independent. An article of apparel and a locomotive
-U.S.C. 102(b), and the inventions defined by the claims in the
+bearing would be an example. A process of painting a
-application or patent under reexamination and by the claims in the
+house and a process of boring a well would be a second
-patent or published application are not identical but are not patentably
+example.
-distinct, and the inventions are owned by the same party, the
-applicant or owner of the patent under reexamination may disqualify
-the patent or patent application publication as prior art.
-The patent or patent application publication can be disqualified as
-prior art by submission of:
-(1)A terminal disclaimer in accordance with § 1.321(c);
+(B)Where the two inventions are process and
-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.
-(2)An oath or declaration stating that the application or
+==807 Patentability Report Practice Has No Effect on Restriction Practice==
-patent under reexamination and patent or published application
-are currently owned by the same party, and that the inventor
-named in the application or patent under reexamination is the
-prior inventor under 35 U.S.C. 104.
-(b)[Reserved]
+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.
-I.DOUBLE PATENTING
+==808 Reasons for Insisting Upon Restriction==
-Claims in commonly owned applications of
+Every requirement to restrict has two aspects:
-different inventive entities may be rejected on the
+(A) the reasons (as distinguished from the mere statement
-ground of double patenting. This is in accordance
+of conclusion) why each invention as
-with existing case law and prevents an organization
+claimed is either independent or distinct from
-from obtaining two or more patents with different
+the other(s); and (B) the reasons why there would
-expiration dates covering nearly identical subject matter.
+be a serious burden on the examiner if restriction is
-See In re Zickendraht, 319 F.2d 225, 138 USPQ
+not required, i.e., the reasons for insisting upon
-(CCPA 1963) (the doctrine is well established that
+restriction therebetween as set forth in the following
-claims in different applications need be more than
+sections.
-merely different in form or content and that patentable
-distinction must exist to
-entitle applicants to a second
-patent) and In re Christensen, 330 F.2d 652, 141
-USPQ 295 (CCPA 1964).
-Claims may also be rejected on the grounds of
-nonstatutory double patenting in certain non-commonly
-owned applications that claim inventions
-resulting from activities undertaken with the scope of
-a joint research agreement as defined in 35 U.S.C.
-(c)(3). This prevents the parties to the joint
-research agreement from obtaining two or more patents
-with different expiration dates covering nearly
-identical subject matter. See the amendment to 35
-U.S.C. 103(c) by the CREATE Act (Public Law 108-
-; 118 Stat. 3596 (2004)).
+===808.01 Reasons for Holding of Independence or Distinctness===
+The particular reasons relied on by the examiner
+for holding that the inventions as claimed are
+either independent or distinct should be concisely
+stated. A mere statement of conclusion is inadequate.
+The reasons upon which the conclusion is based
+should be given.
+For example, relative to a combination and a subcombination
+thereof, the examiner should point out
+the reasons why he or she considers the subcombination
+to have utility by itself or in other combinations,
+and why he or she considers that the combination as
+claimed does not require the particulars of the subcombination
+as claimed.
+Each relationship of claimed inventions should be
+similarly treated and the reasons for the conclusions
-Double patenting rejections can be overcome
+of distinctness or independence set forth. Form paragraphs
-in
+.01, 8.02, and 8.14 - 8.20.02 may be used as
-certain circumstances by disclaiming, pursuant
+appropriate to explain why the inventions as claimed
-to
+are independent or distinct. See MPEP § 806.05 -
-the
+§ 806.06.
-provisions of 37 CFR 1.321(c), the terminal
-portion of
-the term of the later patent and including in
-the disclaimer a provision that the patent shall be
-enforceable only for and during the period the patent
-is commonly owned with the application or patent
-which formed the basis for the rejection, thereby eliminating
-the problem of extending patent life. Double
-patenting rejections can also be overcome in cases
-subject to a joint research agreement, under certain
-circumstances, by disclaiming the terminal portion of
-the term of the later patent and including in the disclaimer
-the provisions of 37 CFR 1.321(d).
-See MPEP § 706.02(l) - § 706.02(l)(3) for information
+====808.01(a) Species====
-pertaining to establishment of common ownership
-and the existence of a joint research agreement
-pursuant to 35 U.S.C. 103(c), as well as examination
-practice relating to 35 U.S.C. 103(c).
-II.IDENTIFYING COMMONLY OWNED
+Where there is no disclosure of a relationship
-AND NON-COMMONLY OWNED INVENTIONS
+between species (see MPEP § 806.04(b)), they are
-SUBJECT TO A JOINT RESEARCH
+independent inventions. A requirement for restriction
-AGREEMENT
+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.
-A.Common Ownership by the Same Person(s) or
+Election of species should not be required
-Organization(s)
+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.
-Applications or patents are “commonly owned”
+Election of species may be required prior to a
-pursuant to 35 U.S.C. 103(c)(1) if they were wholly or
+search on the merits (A) in applications containing
-entirely owned by the same person(s), or organization(
+claims to a plurality of species with no generic claims,
-s)/business entity(ies), at the time the claimed
+and (B) in applications containing both species claims
-invention was made. See MPEP §
+and generic or Markush claims.
-.02(l)(2) for a
-detailed definition of common ownership. Two
-inventions of different inventive entities come within
-the common ownership provisions of 35 U.S.C.
-(c)(1) when:
-(A)the later invention is not anticipated by the
+In applications where only generic claims are presented,
-earlier invention under 35 U.S.C. 102;
+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 §
+.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.
-(B)the earlier invention qualifies as prior art for
+In all applications where a generic claim is found
-purposes of obviousness under 35 U.S.C. 103 against
+allowable, the application should be treated as indicated
-the later invention only under subsections (f) or
+in MPEP § 809 and § 821.04(a). See MPEP §
-(g) of 35 U.S.C. 102, or under 35 U.S.C. 102(e)
+.02 and § 809.02(a) for guidance regarding how to
-for applications pending on or after December 10,
+require restriction between species.
-, for reexamination proceedings in which the
-patent under reexamination was granted on or after
-December 10, 2004, and for reexamination proceedings
-in which the patent under reexamination was
-filed on or after November 29, 1999; and
-(C)the inventions were, at the time the later
+===808.02 Establishing Burden===
-invention was made, owned by the same person or
-subject to an obligation of assignment to the same
-person.
+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 §
+.05(c) - § 806.06, the examiner, in order to establish
+reasons for insisting upon restriction, must
+explain why there would be a serious burden on the
+examiner if restriction is not required. Thus the
+examiner must show by appropriate explanation one
+of the following:
-B.Non-Commonly Owned Inventions Subject to
+(A)Separate classification thereof: This shows
-a Joint Research Agreement
+that each invention has attained recognition in the art
+as a separate subject for inventive effort, and also a
+separate field of search. Patents need not be cited to
+show separate classification.
-The Cooperative Research and Technology
+(B)A separate status in the art when they are
-Enhancement Act of 2004 (CREATE Act) (Public
+classifiable together: Even though they are classified
-Law 108-453; 118 Stat. 3596 (2004)), which amended
+together, each invention can be shown to have formed
-U.S.C. 103(c), was enacted on December 10, 2004.
+a separate subject for inventive effort when the examiner
-The CREATE Act permits an applicant or patentee,
+can show a recognition of separate inventive
-who is a party to a joint research agreement, to disqualify
+effort by inventors. Separate status in the art may be
-prior art that is applied in a rejection under 35
+shown by citing patents which are evidence of such
-U.S.C. 103(a) and that is otherwise available as prior
+separate status, and also of a separate field of search.
-art only under 35 U.S.C. 102(e), (f) or (g). Congress
-recognized that this amendment to 35
-U.S.C. 103(c)
-would result in situations in which there would be
-double patenting between patents or applications not
-owned by the same party. See H.R. Rep. No. 108-425,
-at 5-6 (2003).
-Pursuant to the CREATE Act, non-commonly
+(C)A different field of search: Where it is necessary
-owned applications or patents that are subject to a
+to search for one of the inventions in a manner
-joint research agreement may be treated as if they are
+that is not likely to result in finding art pertinent to the
-“commonly owned,” i.e., owned or subject to assignment
+other invention(s) (e.g., searching different classes/
-by the same person, for the purposes of determining
+subclasses or electronic resources, or employing different
-obviousness if certain conditions are met. See
+search queries, a different field of search is
-U.S.C 103(c)(2). The term “joint research agreement”
+shown, even though the two are classified together.
-means a written contract, grant, or cooperative
+The indicated different field of search must in fact be
-agreement entered into by two or more persons or
+pertinent to the type of subject matter covered by the
-entities for the performance of experimental, developmental,
+claims. Patents need not be cited to show different
-or research work in the field of the claimed
+fields of search.
-invention. See 35 U.S.C. 103(c)(3). See also MPEP
-§
-.02(l)(2).
-Two inventions come within the provisions of 35
+Where, however, the classification is the same and
-U.S.C. 103(c)(2), for applications pending on or after
+the field of search is the same and there is no clear
-December 10, 2004, and for reexamination proceedings
+indication of separate future classification and field of
-in which the patent under reexamination issued
+search, no reasons exist for dividing among independent
-after December 10, 2004, when:
+or related inventions.
+==809 Linking Claims==
+There are a number of situations which arise in
+which an application has claims to two or more properly
+divisible inventions, so that a requirement to
+restrict the claims of the application to one would be
+proper, but presented in the same case are one or more
+claims (generally called “linking” claims) which,
+if allowable, would require rejoinder of the otherwise
+divisible inventions. See MPEP § 821.04 for information
+pertaining to rejoinder practice.
+Linking claims and the inventions they link
+together are usually either all directed to products or
+all directed to processes (i.e., a product claim linking
+properly divisible product inventions, or a process
+claim linking properly divisible process inventions).
+The most common types of linking claims which, if
+allowable, act to prevent restriction between inventions
+that can otherwise be shown to be divisible, are
+(A)genus claims linking species claims; and
-(A)the later invention is not anticipated by the
+(B)subcombination claims linking plural combinations.
-earlier invention under 35 U.S.C. 102;
-(B)the claimed invention was made by or on
+Where an application includes claims to distinct
-behalf of parties to a joint research agreement that
+inventions as well as linking claims, restriction can
-was in effect on or before the date the claimed invention
+nevertheless be required.
-was made;
-(C)the claimed invention was made as a result of
+The linking claims must be examined with, and
-activities undertaken within the scope of the joint
+thus are considered part of, the invention elected.
-research agreement; and
+When all claims directed to the elected invention are
+allowable, should any linking claim be allowable, the
-(D)the application for patent for the claimed
+restriction requirement between the linked inventions
-invention discloses or is amended to disclose the
+must be withdrawn. Any claim(s) directed to the nonelected
-names of the parties to the joint research agreement.
+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.
-C.Timing of Double Patenting Rejections
+====809.02(a) Election of Species Required====
-The examiner should make both a double patenting
+Where restriction between species is appropriate
-rejection based on common ownership and a rejection
+(see MPEP § 808.01(a)) the examiner should
-based on 35 U.S.C. 102(e)/103 prior art when the
+send a letter including only a restriction requirement
-facts support both rejections. Until applicant has
+or place a telephone requirement to restrict (the latter
-established that a reference is disqualified as prior art
+being encouraged). See MPEP § 812.01 for telephone
-under the joint research agreement exclusion of
+practice in restriction requirements.
-U.S.C. 103(c), the examiner should NOT apply a
-double patenting rejection based on a joint research
-agreement. See MPEP § 706.07(a) and § 804 for
-information regarding when an Office action that
-includes a new subsequent double patenting rejection
-based upon a reference disqualified under 35 U.S.C.
-(c) may be made final.
-III.DETERMINING INVENTION PRIORITY
+Action as follows should be taken:
-A determination of priority is not required when
+(A)Identify generic claims or indicate that no
-two inventions are commonly owned as set forth in 35
+generic claims are present. See MPEP § 806.04(d) for
-U.S.C. 103(c)(1).
+definition of a generic claim.
-Pursuant to 37 CFR 1.78(c), where an application
+(B)Clearly identify each (or in aggravated cases
-or a patent under reexamination and at least one other
+at least exemplary ones) of the disclosed species, to
-application of different inventive entities are owned
+which claims are to be restricted. The species are
-by the same party and contain conflicting claims, the
+preferably identified as the species of figures 1, 2, and
-examiner may require the assignee to state whether
+or the species of examples I, II, and III, respectively.
-the claimed inventions come within the provisions of
+In the absence of distinct figures or examples to identify
-U.S.C. 103(c) (i.e., indicate whether common
+the several species, the mechanical means, the
-ownership or an obligation of assignment to the same
+particular material, or other distinguishing characteristic
-person existed at the time the later invention was
+of the species should be stated for each species
-made). If the assignee states that the provisions of
+identified. If the species cannot be conveniently identified,
+the claims may be grouped in accordance with
-U.S.C. 103(c) do not apply to the conflicting
+the species to which they are restricted. Provide reasons
-claimed inventions, the assignee is required to indicate
+why the species are independent or distinct.
-which named inventor is the prior inventor. Form
-paragraphs 8.27, 8.28 and 8.28.01 may be used to
-require the applicant to identify the prior inventor
-under 37 CFR 1.78(c). In order to avoid abandonment,
-the assignee must comply with the requirement
-under 37 CFR 1.78(c) by naming the prior inventor
-unless the conflicting claims are eliminated in all but
-one application. If, however, the two inventions come
-within the provisions of 35 U.S.C. 103(c), it is not
-necessary to determine priority of invention since the
-earlier invention is disqualified as prior art against the
-later invention and since double patenting rejections
-can be used to ensure that the patent terms expire
-together. Accordingly, a response to a requirement
-under 37 CFR 1.78(c) which states that the inventions
-of different inventive entities come within the provisions
-of 35
-U.S.C. 103(c) is complete without any
-further inquiry under 37 CFR 1.78(c) as to the prior
-inventor.
-Before making the requirement to identify the prior
+(C)Applicant should then be required to elect a
-inventor under 37 CFR 1.78(c), with its threat to hold
+single disclosed species under 35 U.S.C. 121, and
-the application abandoned if the statement is not made
+advised as to the requisites of a complete reply and his
-by the assignee, the examiner must make sure that
+or her rights under 37 CFR 1.141.
-claims are present in each application which are conflicting
-as defined in MPEP § 804. See In re Rekers,
-USPQ 1034 (Comm’r Pat. 1979).
-In some situations the application file histories
+To be complete, a reply to a requirement made
-may reflect which invention is the prior invention,
+according to this section should include a proper election
-e.g., by reciting that one invention is an improvement
+along with a listing of all claims readable thereon,
-of the other invention. See Margolis v. Banner,
+including any claims subsequently added.
-F.2d 435, 202 USPQ 365 (CCPA 1979) (Court
-refused to uphold a holding of abandonment for failure
-to name the prior inventor since the record
-showed what was invented by the different inventive
-entities and who was the prior inventor.).
-An application in which a requirement to name the
+In those applications wherein a requirement for
-prior inventor has been made will not be held abandoned
+restriction is accompanied by an action on the
-where a timely response indicates that the other
+elected claims, such action will be considered to be
-application is abandoned or will be permitted to
+an action on the merits and the next action may be
-become abandoned and will not be filed as a continuing
+made final where appropriate in accordance with
-application. Such a response will be considered
+MPEP § 706.07(a).
-sufficient since it renders the requirement to identify
-the prior inventor moot because the existence of conflicting
-claims is eliminated. Also note that the conflict
-between two or more pending applications can be
-avoided by abandoning the applications and filing a
-continuation-in-part application merging the conflicting
-inventions into a single application.
+For treatment of claims held to be drawn to nonelected
+inventions, see MPEP § 821 et seq.
+===809.03 Restriction Between Linked Inventions===
+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).
+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.
-IV. REJECTIONS UNDER 35 U.S.C. 102
+==810 Action on the Merits==
-AND 103 AND DOUBLE PATENTING
-Form paragraphs 8.27, 8.28 and 8.28.01 may be
+In general, in an application when only a nonfinal
-used to require the applicant to name the prior inventor
+written requirement to restrict is made, no action
-under 37 CFR 1.78(c).
+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 §
+.01.
+==811 Time for Making Requirement==
+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.
-¶ 8.27 Different Inventors, Common Assignee, Same
+Before making a restriction requirement after the
-Invention
+first action on the merits, the examiner will consider
+whether there will be a serious burden if restriction is
-Claim [1] directed to the same invention as that of claim [2] of
+not required.
-commonly assigned [3]. The issue of priority under 35 U.S.C.
-(g) and possibly 35 U.S.C. 102(f) of this single invention must
-be resolved.
-Since the U.S. Patent and Trademark Office normally will not
-institute an interference between applications or a patent and an
-application of common ownership (see MPEP Chapter 2300), the
-assignee is required to state which entity is the prior inventor of
-the conflicting subject matter. A terminal disclaimer has no effect
-in this situation since the basis for refusing more than one patent is
-priority of invention under 35 U.S.C. 102(f) or (g) and not an
-extension of monopoly.
-Failure to comply with this requirement will result in a holding
-of abandonment of this application.
-Examiner Note:
+===811.02 New Requirement After Compliance With Preceding Requirement===
-.In bracket 3, insert the U.S. patent number or the copending
+Since 37 CFR 1.142(a) provides that restriction is
-application number.
+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).
-.The claims listed in brackets 1 and 2 must be for the same
+===811.03 Repeating After Withdrawal Proper===
-invention. If one invention would have been obvious in view of
-the other, do not use this form paragraph; see form paragraph
-.28.
-.A provisional or actual statutory double patenting rejection
+Where a requirement to restrict is made and thereafter
-should also be made using form paragraphs 8.31 or 8.32.
+withdrawn as improper, if restriction
+becomes proper at a later stage in the prosecution,
+restriction may again be required.
-.If the commonly assigned application or patent has an earlier
+===811.04 Proper Even Though Grouped Together in Parent Application===
-U.S. filing date, a rejection under 35 U.S.C. 102(e) may also be
-made using form paragraph 7.15.01 or 7.15.02.
-¶ 8.28 Different Inventors, Common Assignee, Obvious
+Even though inventions are grouped together in a
-Inventions, No Evidence of Common Ownership at Time of
+requirement in a parent application, restriction or
-Invention
+election among the inventions may be required in the
+divisional applications, if proper.
-Claim [1] directed to an invention not patentably distinct from
+==812 Who Should Make the Requirement==
-claim [2] of commonly assigned [3]. Specifically, [4].
-Examiner Note:
+The requirement should be made by an examiner
+who would examine at least one of the inventions.
-.This form paragraph should be used when the application
+An examiner should not require restriction in an
-being examined is commonly assigned with a conflicting application
+application if none of the claimed inventions is
-or patent, but there is no indication that they were commonly
+classifiable in his or her Technology Center. Such an
-assigned at the time the invention was actually made.
+application should be transferred to a Technology
+Center wherein at least one of the claimed inventions
+would be examined.
-.A rejection under 35 U.S.C. 102(e)/103(a) using form paragraph
+===812.01 Telephone Restriction Practice===
-.21,7.21.01 or 7.21.02 also should be made, as appropriate.
-For applications pending on or after December 10, 2004, rejections
-under 35 U.S.C. 102(e)/103(a) should not be made or maintained
-if the patent is disqualified under 35 U.S.C. 103(c) as prior
-art in a 35 U.S.C. 103(a) rejection.
-.In bracket 3, insert the number of the conflicting patent or
+If an examiner determines that a requirement for
-application.
+restriction should be made in an application, the
+examiner should formulate a draft of such restriction
-.An obviousness-type double patenting rejection should also
+requirement including an indication of those claims
-be included in the action using one of form paragraphs 8.34 to
+considered to be linking or generic.  Thereupon, the
-.37
+examiner should telephone the attorney or agent of
+record and request an oral election, with or without
-.In bracket 4, explain why the claims in the conflicting cases
+traverse , after the attorney or agent has had time to
-are not considered to be distinct.
+consider the restriction requirement. However, no
+telephone communication need be made where the
-.Form paragraph 8.28.01 MUST follow this paragraph.
+requirement for restriction is complex, the application
+is being prosecuted by the applicant pro se, or the
-¶ 8.28.01 Advisory Information Relating to Form
+examiner knows from past experience that an election
-Paragraph 8.28
+will not be made by telephone. The examiner should
+arrange for a second telephone call within a reasonable
-The U.S. Patent and Trademark Office normally will not institute
+time, generally within 3 working days. If the
-an interference between applications or a patent and an application
+attorney or agent objects to making an oral election,
-of common ownership (see MPEP Chapter 2300).
+or fails to respond, a restriction letter will be
-Commonly assigned [1], discussed above, would form the basis
+mailed, and this letter should contain reference to the
-for a rejection of the noted claims under 35 U.S.C. 103(a) if the
+unsuccessful telephone call.  When an oral election
-commonly assigned case qualifies as prior art under 35 U.S.C.
+is made, the examiner will then proceed to incorporate
-(e), (f) or (g) and the conflicting inventions were not commonly
+into the Office action a formal restriction requirement
-owned at the time the invention in this application was
+including the date of the election, the attorney’s or
-made. In order for the examiner to resolve this issue the assignee
+agent’s name, and a complete record of the telephone
-can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that
+interview, followed by a complete action on the
-the conflicting inventions were commonly owned at the time the
+elected invention as claimed, including linking or
-invention in this application was made, or name the prior inventor
+generic claims if present.
-of the conflicting subject matter.
-A showing that the inventions were commonly owned at the
-time the invention in this application was made will preclude a
-rejection under 35 U.S.C. 103(a) based upon the commonly
-assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35
-U.S.C. 102(e) for applications pending on or after December 10,
-.
-Examiner Note:
+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-
+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.
-This form paragraph should follow form paragraph 8.28 and
+Should the elected invention as claimed be
-should only be used ONCE in an Office action.
+found allowable in the first action, and an oral
+traverse was noted, the examiner should include in his
+or her action a statement under MPEP § 821.01, making
+the restriction requirement final and giving
+applicant 1 month to either cancel the  claims
+drawn to the nonelected invention or take other
+appropriate action. (37
+CFR 1.144). Failure to take
+action will be treated as an authorization to cancel the
+nonelected claims by an examiner’s amendment and
+pass the application to issue. Prosecution of the application
+is otherwise closed.
+In either situation (traverse or no traverse), caution
+should be exercised to determine if any of the
+allowable claims are linking or generic claims ,
+or if any nonelected inventions are eligible for rejoinder
+(see MPEP § 821.04), before canceling
+claims drawn to the nonelected invention.
+Where the respective inventions would be
+examined in different Technology Centers (TCs), the
+requirement for restriction should be made only after
+consultation with and approval by all TCs involved. If
+an oral election would cause the application to be
+examined in another TC, the initiating TC should
+transfer the application with a signed memorandum of
+the restriction requirement and a record of the interview.
+The receiving TC will incorporate the substance
+of this memorandum in its official letter as indicated
+above. Differences as to restriction should be settled
+by the existing chain of command, e.g., supervisory
+patent examiner or TC director.
-If  the provisions of 35 U.S.C. 103(c)(1) apply
+This practice is limited to use by examiners who
-to the commonly owned conflicting inventions of different
+have at least negotiation authority. Other examiners
-inventive entities or if the provisions of 35
+must have the prior approval of their supervisory
-U.S.C. 103(c)(2) apply to non-commonly owned
+patent examiner.
-inventions subject to a joint research agreement and
-thereby obviate the obviousness rejection(s), double
-patenting rejection(s) should be made (or maintained)
-as appropriate. If, however, it is determined
-that the provisions of 35
-U.S.C. 103(c) do NOT apply
-because the inventions were not commonly owned or
-subject to an obligation of assignment to the same
-person at the time the later invention was made, or
-because the claimed invention did NOT result from
-activities undertaken within the scope of a joint
-research agreement as required by 35 U.S.C.
-(c)(2) and (3), and there is evidence of record to
-indicate that a patent or application is prior art against
-the application being examined, the examiner should
+==814 Indicate Exactly How Application Is To Be Restricted==
+The examiner must provide a clear and detailed
+record of the restriction requirement to provide a clear
+demarcation between restricted inventions so that it
+can be determined whether inventions claimed in a
+continuing application are consonant with the restriction
+requirement and therefore subject to the prohibition
+against double patenting rejections under 35
+U.S.C. 121. Geneva Pharms. Inc. v. GlaxoSmithKline
+PLC, 349 F.3d 1373, 1381, 68 USPQ2d 1865, 1871
+(Fed. Cir. 2003). See also MPEP § 804.01.
+I. SPECIES
-make (A) any appropriate double patenting rejection(
+The mode of indicating how to require restriction
-s), and (B) the appropriate prior art rejection(s)
+between species is set forth in MPEP § 809.02(a).
-under 35 U.S.C. 102 and/or 35 U.S.C. 103 in the
-application being examined. See Charts I-A, I-B, II-A,
-and II-B in MPEP § 804. Rejections under
-U.S.C. 102 or 35 U.S.C. 103 cannot be obviated
-solely by filing a terminal disclaimer.
+The particular limitations in the claims and
+the reasons why such limitations are considered to
+support restriction of the claims to a particular
+disclosed species should be mentioned  to make the
+requirement clear.
+II. INVENTIONS OTHER THAN SPECIES
-¶ 7.15 Rejection, 35 U.S.C. 102(a), (b) Patent or
+It is necessary to read all of the claims  to determine
-Publication, and (g)
+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.
-Claim [1] rejected under 35 U.S.C. 102[2] as being [3] by [4].
+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.
-Examiner Note:
+While every claim should be accounted for, the
+omission to group a claim, or placing a claim in the
-.In bracket 2, insert the appropriate paragraph letter or letters
+wrong group will not affect the propriety of a final
-of 35
+requirement where the requirement is otherwise
-U.S.C. 102 in parentheses. If paragraph (e) of 35 U.S.C. 102is applicable, use form paragraph 7.15.02 or 7.15.03.
+proper and the correct disposition of the omitted or
+erroneously grouped claim is clear.
-.In bracket 3, insert either --clearly anticipated-- or --anticipated--
-with an explanation at the end of the paragraph.
-.In bracket 4, insert the prior art relied upon.
+III. LINKING CLAIMS
-.This rejection must be preceded either by form paragraph
+The generic or other linking claims should not be
-.07 and form paragraphs 7.08, 7.09, and 7.14 as appropriate, orby form paragraph 7.103.
+associated with any one of the linked inventions since
+such claims must be examined with  the  elected
+invention. See MPEP § 809.
-.If 35 U.S.C. 102(e) is also being applied, this form paragraph
+==815 Make Requirement Complete==
-must be followed by either form paragraph 7.15.02 or 7.15.03.
+When making a restriction requirement every
+effort should be made to have the requirement complete. 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.
+==817 Outline of Letter for Restriction Requirement==
-¶ 7.19 Rejection, 35 U.S.C. 102(f), Applicant Not the
+The following outline should be used to set forth a
-Inventor
+requirement to restrict.
-Claim [1] rejected under 35 U.S.C. 102(f) because the applicant
+OUTLINE OF RESTRICTION REQUIRE-
-did not invent the claimed subject matter. [2]
+MENT
-Examiner Note:
+(A)Statement of the requirement to restrict and
+that it is being made under 35 U.S.C. 121
-.This paragraph must be preceded either by paragraphs 7.07and 7.13 or by paragraph 7.103.
+(1)Identify each group by Roman numeral.
-.In bracket 2, insert an explanation of the supporting evidence
+(2)List claims in each group. Check accuracy
-establishing that applicant was not the inventor. See MPEP §
+of numbering of the claims; look for same claims in
-.
+two groups; and look for omitted claims.
+(3)Give short description of total extent of the
+subject matter claimed in each group, pointing out
+critical claims of different scope and identifying
+whether the claims are directed to a combination, subcombination,
+process, apparatus, or product.
+(4)Classify each group.
-¶ 7.21 Rejection, 35 U.S.C. 103(a)
+(B)Take into account claims not grouped, indicating
+their disposition.
-Claim [1] rejected under 35 U.S.C. 103(a) as being unpatentable
+(1)Linking claims
-over [2].
-Examiner Note:
+(i)Identify
-.This paragraph must be preceded by either form paragraph
+(ii)Statement of groups to which linking
-.20 or form paragraph 7.103.
+claims may be assigned for examination
-.An explanation of the rejection applying the Graham v.
+(2)Other ungrouped claims
-Deere test must follow this form paragraph.
-.If the rejection relies upon prior art under 35 U.S.C. 102(e),
+(3)Indicate disposition, e.g., improperly
-use 35 U.S.C. 102(e) as amended by the American Inventors Protection
+dependent, canceled, etc.
-Act to determine the reference’s prior art date, unless the
-reference is a U.S. patent issued directly, or indirectly, from an
-international application which has an international filing date
-prior to November 29, 2000. In other words, use pre-AIPA 35
-U.S.C. 102(e) only if the reference is a U.S. patent issued directly
-or indirectly from either a national stage of an international application
-(application under 35 U.S.C. 371) which has an international
-filing date prior to November 29, 2000 or a continuing
-application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to
-an international application having an international filing date
-prior to November 29, 2000. See the Examiner Notes for form
-paragraphs 7.12 and 7.12.01 to assist in the determination of the
-reference’s 35 U.S.C. 102(e) date.
-.If the applicability of this rejection (e.g., the availability of
+(C)Allegation of independence or distinctness
-the prior art as a reference under 35 U.S.C. 102(a) or 35 U.S.C.
-(b)) prevents the reference from being disqualified under 35
-U.S.C. 103(c), form paragraph 7.20.01 must follow this form
-paragraph.
-.If this rejection is a provisional 35 U.S.C. 103(a) rejection
+(1)Point out facts which show independence
-based upon a copending application that would comprise prior art
+or distinctness
-under 35
-U.S.C. 102(e) if patented or published, use form paragraph
-.21.01 instead of this paragraph.
-¶ 7.21.01 Provisional Rejection, 35 U.S.C. 103(a),
+(2)Treat the inventions as claimed, don’t
-Common Assignee or at Least One Common Inventor
+merely state the conclusion that inventions in fact are
+independent or distinct, e.g.,
-Claim [1] provisionally rejected under 35 U.S.C. 103(a) as
+(i)Subcombination - Subcombination disclosed
-being obvious over copending Application No. [2] which has a
+as usable together
-common [3] with the instant application. Based upon the earlier
-effective U.S. filing date of the copending application, it would
-constitute prior art under 35
-U.S.C. 102(e) if published or patented.
-This provisional rejection under 35 U.S.C. 103(a) is based
-upon a presumption of future publication or patenting of the conflicting
-application. [4]
-This provisional rejection might be overcome either by a showing
+Each usable alone or in other identified combination
-under 37 CFR 1.132 that any invention disclosed but not
+Demonstrate by examiner’s suggestion
-claimed in the copending application was derived from the inventor
-of this application and is thus not the invention “by another,”
-or by a showing of a date of invention for the instant application
-prior to the effective U.S. filing date of the copending application
-under 37 CFR 1.131. This rejection might also be overcome
-by
-showing that the copending application is disqualified under
-U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a).
-See MPEP § 706.02(l)(1) and § 706.02(l)(2).
-Examiner Note:
+(ii)Combination - Subcombination
-.This paragraph is used to provisionally reject claims not patentably
+Combination as claimed does not require
-distinct from the disclosure in a copending application
+subcombination
-having an earlier U.S. filing date and also having either a common
-assignee or at least one common inventor. This form paragraph
-should not be used in applications pending on or after December
-, 2004 when the copending application is disqualified under 35
-U.S.C. 103(c) as prior art in a 35 U.S.C. 103(a) rejection. See
-MPEP § 706.02(l)(3).
-.Use 35 U.S.C. 102(e) as amended by the American Inventors
+AND
-Protection Act (AIPA) to determine the copending application reference’s
-prior art date, unless the copending application reference
-is based directly, or indirectly, from an international application
-which has an international filing date prior to November 29, 2000.
-If the copending application reference is either a national stage of
-an international application (application under 35 U.S.C. 371)
-which has an international filing date prior to November 29, 2000,
-or a continuing application claiming benefit under 35 U.S.C. 120,
-, or 365(c) to an international application having an international
-filing date prior to November 29, 2000, use pre-AIPA 35
+Subcombination usable alone or in other
+combination
+Demonstrate by examiner’s suggestion
+(iii)Process - Apparatus
+Process can be carried out by hand or by
+other apparatus
-U.S.C. 102(e) to determine the copending application reference’s
+Demonstrate by examiner’s suggestion
-prior art date. See the Examiner Notes for form paragraphs 7.12and 7.12.01 to assist in the determination of the 35 U.S.C. 102(e)
-date.
-.If the claimed invention is fully disclosed in the copending
+OR
-application, use paragraph 7.15.01.
-.In bracket 3, insert either --assignee-- or --inventor--.
+Demonstrate apparatus can be used in other
+process (rare).
-.In bracket 4, insert explanation of obviousness.
+(iv)Process of making and/or Apparatus for
+making — Product made
-.If the claimed invention is also claimed in the copending
+Claimed product can be made by other process
-application, a provisional obviousness double patenting rejection
+(or apparatus)
-should additionally be made using paragraph 8.33 and 8.37.
-.If evidence indicates that the copending application is also
+Demonstrate by examiner’s suggestion
-prior art under 35 U.S.C. 102(f) or (g) and the copending application
-has not been disqualified as prior art in a 35 U.S.C. 103(a)
-rejection pursuant to 35 U.S.C. 103(c), a rejection should additionally
-be made under 35 U.S.C. 103(a) using paragraph 7.21
-(e.g., applicant has named the prior inventor in response to a
-requirement made using paragraph 8.28).
+OR
+Demonstrate process of making (or apparatus
+for making) can produce other product (rare)
-Further, if the conflicting applications have different
+(D)Provide reasons for insisting upon restriction
-effective U.S. filing dates, the examiner should
-consider making a provisional rejection in the later
-filed application, based on the earlier filed application,
-under 35 U.S.C. 102(e) or 102(e)/103(a), using
-form paragraph 7.15.01 or 7.21.01. Similarly, if an
-application has a later effective U.S. filing date than a
-conflicting issued patent, the examiner should consider
-making a rejection in the application, based on
-the patent, under 35 U.S.C. 102(e) or 102(e)/103(a),
-using form paragraph 7.15.02 or 7.21.02. Rejections
-under 35 U.S.C. 102 or 103 cannot be obviated solely
-by the filing of a terminal disclaimer. However,
-for applications pending on or after December 10,
-, rejections under 35 U.S.C. 102(e)/103(a) should
-not be made or maintained if the patent is disqualified
-under 35 U.S.C. 103(c) as prior art in a 35 U.S.C.
-(a) rejection.
+(1)Separate status in the art
+(2)Different classification
-¶ 7.15.01 Provisional Rejection, 35 U.S.C. 102(e) -
+(3)Same classification but recognition of
-Common Assignee or At Least One Common Inventor
+divergent subject matter
-Claim [1] provisionally rejected under 35 U.S.C. 102(e) as
+(4)Divergent fields of search, or
-being anticipated by copending Application No. [2] which has a
-common [3] with the instant application.
-Based upon the earlier effective U.S. filing date of the copending
+(5)Search required for one group not required
-application, it would constitute prior art under 35 U.S.C.
+for the other
-(e), if published under 35 U.S.C. 122(b) or patented. This provisional
-rejection under 35 U.S.C. 102(e) is based upon a presumption
-of future publication or patenting of the copending
-application. [4].
-This provisional rejection under 35 U.S.C. 102(e) might be
+(E)Summary statement
-overcome either by a showing under 37 CFR 1.132 that any
-invention disclosed but not claimed in the copending application
-was derived from the inventor of this application and is thus not
-the invention “by another,” or by an appropriate showing under 37
-CFR 1.131.
-This rejection may not be overcome by the filing of a terminal
+(1)Summarize (i) independence or distinctness
-disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885
+and (ii) reasons for insisting upon restriction
-(Fed. Cir. 1991).
-Examiner Note:
+(2)Include paragraph advising as to reply
+required
-.This form paragraph is used to provisionally reject over a
+(3)Indicate effect of allowance of linking
-copending application with an earlier filing date that discloses the
+claims, if any present
-claimed invention which has not been published under 35 U.S.C.
-. The copending application must have either a common
-assignee or at least one common inventor.
-. Use 35 U.S.C. 102(e) as amended by the American Inventors
+(4)Indicate effect of cancellation of evidence
-Protection Act and the Intellectual Property and High Technology
+claims (see MPEP § 806.05(c))
-Technical Amendments Act of 2002 (form paragraph 7.12)
-to determine the copending application reference’s prior art date,
-unless the copending application reference is based directly, or
-indirectly, from an international application which has an international
-filing date prior to November 29, 2000. If the copending
-application reference is either a national stage of an international
-application (application under 35 U.S.C. 371) which has an international
-filing date prior to November 29, 2000, or a continuing
-application claiming benefit under 35 U.S.C. 120, 121, or 365(c)
-to an international application having an international filing date
-prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e)
-(form paragraph 7.12.01). See the Examiner Notes for form paragraphs
-.12 and 7.12.01 to assist in the determination of the 35
-U.S.C. 102(e) date.
-.If the claims would have been obvious over the invention
+(5)Indicate effect of allowance of product
-disclosed in the other copending application, use form paragraph
+claims if restriction was required between a product
-.21.01.
+and a process of making and/or using the product.
-.In bracket 3, insert either --assignee-- or --inventor--.
+==818 Election and Reply==
-.In bracket 4, an appropriate explanation may be provided in
+Election is the designation of the particular one of
-support of the examiner’s position on anticipation, if necessary.
+two or more disclosed inventions that will be prosecuted
+in the application.
-.If the claims of the copending application conflict with the
+A reply should be made to each point raised by the
-claims of the instant application, a provisional double patenting
+examiner’s action, and may include a traverse or compliance.
-rejection should also be given using form paragraphs 8.30 and
-.32.
-.If evidence is additionally of record to show that either
+A traverse of a requirement to restrict is a statement
-invention is prior art unto the other under 35 U.S.C. 102(f) or (g),
+of the reasons upon which the applicant relies for his
-a rejection using form paragraphs 7.13 and/or 7.14 should also be
+or her conclusion that the requirement is in error.
-made.
-¶ 7.15.02 Rejection, 35 U.S.C. 102(e), Common Assignee
+Where a rejection or objection is included with a
-or Inventor(s)
+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.
-Claim [1] rejected under 35 U.S.C. 102(e) as being anticipated
+===818.01 Election Fixed by Action on Claims===
-by [2].
-The applied reference has a common [3] with the instant application.
+Election becomes fixed when the claims in an
-Based upon the earlier effective U.S. filing date of the reference,
+application have received an action on their merits by
-it constitutes prior art under 35 U.S.C. 102(e). This
+the Office.
-rejection under 35 U.S.C. 102(e) might be overcome either by a
-showing under 37 CFR 1.132 that any invention disclosed but not
-claimed in the reference was derived from the inventor of this
+===818.02 Election 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.
-application and is thus not the invention “by another,” or by an
+The claims originally presented and acted upon by
-appropriate showing under 37 CFR 1.131.
+the Office on their merits determine the invention
+elected by an applicant in the application, and in any
-Examiner Note:
+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.
-.This form paragraph is used to reject over a patent or patent
+====818.02(b) Generic Claims Only — No Election of Species====
-application publication with an earlier filing date that discloses
-but does not claim the same invention. The patent or patent application
-publication must have either a common assignee or a common
-inventor.
-.35 U.S.C. 102(e) as amended by the American Inventors
+Where only generic claims are first presented and
-Protection Act of 1999 (AIPA) and the Intellectual Property and
+prosecuted in an application in which no election of a
-High Technology Technical Amendments Act of 2002 (form paragraph
+single invention has been made, and applicant later
-.12) must be applied if the reference is one of the following:
+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====
-a.a U.S. patent or a publication of a U.S. application for patent
+Where applicant is claiming two or more inventions
-filed under 35 U.S.C. 111(a);
+(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.
-b.a U.S. patent issued directly or indirectly from, or a U.S. or
+===818.03 Express Election and Traverse===
-WIPO publication of, an international application if the international
-application has an international filing date on or after
-November 29, 2000.
-See the Examiner Notes for form paragraph 7.12 to assist in the
+{{Statute|37 CFR 1.143. Reconsideration of requirement.}}
-determination of the 35 U.S.C. 102(e) date of the reference.
+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.
+|}
-. Pre-AIPA 35 U.S.C 102(e) (form paragraph 7.12.01) must
+Election in reply to a requirement may be made
-be applied if the reference is a U.S. patent issued directly, or indirectly,
+either with or without an accompanying traverse of
-from an international application filed prior to November
+the requirement.
-, 2000. See the Examiner Notes for form paragraph 7.12.01 to
-assist in the determination of the 35 U.S.C. 102(e) date of the reference.
+Applicant must make his or her own election; the
+examiner will not make the election for the applicant.
+CFR 1.142, 37 CFR 1.143.
-.In determining the 35 U.S.C. 102(e) date, consider priority/
+====818.03(a) Reply Must Be Complete====
-benefit claims to earlier-filed U.S. provisional applications under
-U.S.C. 119(e), U.S. nonprovisional applications under 35
-U.S.C. 120 or 121, and international applications under 35 U.S.C.
-, 121 or 365(c) if the subject matter used to make the rejection
-is appropriately supported in the relied upon earlier-filed application’s
-disclosure (and any intermediate application(s)). A benefit
-claim to a U.S. patent of an earlier-filed international application,
-which has an international filing date prior to November 29, 2000,
-may only result in an effective U.S. filing date as of the date the
-requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled.
-Do NOT consider any priority/benefit claims to U.S. applications
-which are filed before an international application that has an
-international filing date prior to November 29, 2000. Do NOT
-consider foreign priority claims under 35 U.S.C. 119(a)-(d) and
-(a).
-.If the reference is a publication of an international application
+As shown by the first sentence of 37 CFR 1.143,
-(including voluntary U.S. publication under 35 U.S.C. 122 of
+the traverse to a requirement must be complete as
-the national stage or a WIPO publication) that has an international
+required by 37 CFR 1.111(b) which reads in part: “In
-filing date prior to November 29, 2000, did not designate the
+order to be entitled to reconsideration or further
-United States or was not published in English by WIPO, do not
+examination, the applicant or patent owner must reply
-use this form paragraph. Such a reference is not a prior art reference
+to the Office action. The reply by the applicant or
-under 35 U.S.C. 102(e). The reference may be applied under
+patent owner must be reduced to a writing which distinctly
-U.S.C. 102(a) or (b) as of its publication date. See form paragraphs
+and specifically points out the supposed errors
-.08 and 7.09.
+in the examiner’s action and must reply to every
+ground of objection and rejection in the prior Office
-.In bracket 3, insert either --assignee-- or --inventor--.
+action. . . . The applicant’s or patent owner’s reply
+must appear throughout to be a bona fide attempt to
-.This form paragraph must be preceded by either of form
+advance the application or the reexamination proceeding
-paragraphs 7.12 or 7.12.01.
+to final action. . . .”
-.Patent application publications may only be used if this form
-paragraph was preceded by form paragraph 7.12.
-¶ 7.21.01 Provisional Rejection, 35 U.S.C. 103(a),
+Under this rule, the applicant is required to specifically
-Common Assignee or at Least One Common Inventor
+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
+CFR § 1.111. Thus the required provisional election
+(see MPEP § 818.03(b)) becomes an election
+without traverse.
-Claim [1] provisionally rejected under 35 U.S.C. 103(a) as
+====818.03(b) Must Elect, Even When Requirement Is Traversed====
-being obvious over copending Application No. [2] which has a
-common [3] with the instant application. Based upon the earlier
-effective U.S. filing date of the copending application, it would
-constitute prior art under 35
-U.S.C. 102(e) if published or patented.
-This provisional rejection under 35 U.S.C. 103(a) is based
-upon a presumption of future publication or patenting of the conflicting
-application. [4]
-This provisional rejection might be overcome either by a showing
+As noted in the second sentence of 37 CFR 1.143,
-under 37 CFR 1.132 that any invention disclosed but not
+a provisional election must be made even though the
-claimed in the copending application was derived from the inventor
+requirement is traversed.
-of this application and is thus not the invention “by another,”
-or by a showing of a date of invention for the instant application
-prior to the effective U.S. filing date of the copending application
-under 37 CFR 1.131. This rejection might also be overcome
-by
-showing that the copending application is disqualified under
-U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a).
-See MPEP § 706.02(l)(1) and § 706.02(l)(2).
-Examiner Note:
+====818.03(c) Must Traverse To Preserve Right of Petition====
-.This paragraph is used to provisionally reject claims not patentably
+{{Statute|37 CFR 1.144. Petition from requirement for restriction.}}
-distinct from the disclosure in a copending application
+After a final requirement for restriction, the applicant, in
-having an earlier U.S. filing date and also having either a common
+addition to making any reply due on the remainder of the action,
-assignee or at least one common inventor. This form paragraph
+may petition the Director to review the requirement. Petition may
-should not be used in applications pending on or after December
+be deferred until after final action on or allowance of claims to the
-, 2004 when the copending application is disqualified under 35
+invention elected, but must be filed not later than appeal. A petition
-U.S.C. 103(c) as prior art in a 35 U.S.C. 103(a) rejection. See
+will not be considered if reconsideration of the requirement
-MPEP § 706.02(l)(3).
+was not requested (see § 1.181).
+|}
-.Use 35 U.S.C. 102(e) as amended by the American Inventors
+If applicant does not distinctly and specifically
-Protection Act (AIPA) to determine the copending application reference’s
+point out supposed errors in the restriction requirement,
-prior art date, unless the copending application reference
+the election should be treated as an election
-is based directly, or indirectly, from an international application
+without traverse.
-which has an international filing date prior to November 29, 2000.
-If the copending application reference is either a national stage of
-an international application (application under 35 U.S.C. 371)
-which has an international filing date prior to November 29, 2000,
-or a continuing application claiming benefit under 35 U.S.C. 120,
-, or 365(c) to an international application having an international
-filing date prior to November 29, 2000, use pre-AIPA 35
-U.S.C. 102(e) to determine the copending application reference’s
-prior art date. See the Examiner Notes for form paragraphs 7.12and 7.12.01 to assist in the determination of the 35 U.S.C. 102(e)
-date.
-.If the claimed invention is fully disclosed in the copending
+====818.03(d) Traverse of Restriction Requirement With Linking Claims====
-application, use paragraph 7.15.01.
-.In bracket 3, insert either --assignee-- or --inventor--.
+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.
-.In bracket 4, insert explanation of obviousness.
+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).
-.If the claimed invention is also claimed in the copending
+==819 Office Generally Does Not Permit Shift==
-application, a provisional obviousness double patenting rejection
-should additionally be made using paragraph 8.33 and 8.37.
-.If evidence indicates that the copending application is also
+The general policy of the Office is not to permit the
-prior art under 35 U.S.C. 102(f) or (g) and the copending application
+applicant to shift to claiming another invention after
-has not been disqualified as prior art in a 35 U.S.C. 103(a)
+an election is once made and action given on the
-rejection pursuant to 35 U.S.C. 103(c), a rejection should additionally
+elected subject matter. Note that the applicant cannot,
-be made under 35 U.S.C. 103(a) using paragraph 7.21
+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
+, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir.
+)(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.
+==821 Treatment of Claims Held To Be Drawn to Nonelected Inventions==
-(e.g., applicant has named the prior inventor in response to a
+Claims held to be drawn to nonelected inventions,
-requirement made using paragraph 8.28).
+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.
-¶ 7.21.02 Rejection, 35 U.S.C. 103(a), Common Assignee
+The propriety of a requirement to restrict, if traversed,
-or at Least One Common Inventor
+is reviewable by petition under 37 CFR 1.144.
+In re Hengehold, 440 F.2d 1395, 169 USPQ 473
+(CCPA 1971).
-Claim [1] rejected under 35 U.S.C. 103(a) as being obvious
+All claims that the examiner holds as not being
-over [2].
+directed to the elected subject matter are withdrawn
+from further consideration by the examiner in accordance
+with 37 CFR 1.142(b). See MPEP  § 821.01 through § 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.
-The applied reference has a common [3] with the instant application.
+===821.01 After Election With Traverse===
-Based upon the earlier effective U.S. filing date of the reference,
-it constitutes prior art under 35 U.S.C. 102(e). This
-rejection under 35 U.S.C. 103(a) might be overcome by: (1) a
-showing under 37 CFR 1.132 that any invention disclosed but not
-claimed in the reference was derived from the inventor of this
-application and is thus not an invention “by another”; (2) a showing
-of a date of invention for the claimed subject matter of the
-application which corresponds to subject matter disclosed but not
-claimed in the reference, prior to the effective U.S. filing date of
-the reference under 37 CFR 1.131; or (3) an oath or declaration
-under 37 CFR 1.130 stating that the application and reference are
-currently owned by the same party and that the inventor named in
-the application is the prior inventor under 35 U.S.C. 104, together
-with a terminal disclaimer in accordance with 37
-CFR 1.321(c).
-This rejection might also be overcome by showing that the reference
-is disqualified under 35 U.S.C. 103(c) as prior art in a rejection
-under 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and §
-.02(l)(2). [4]
-Examiner Note:
+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.
-.This paragraph is used to reject over a reference (patent or
+If the examiner, upon reconsideration, is of the
-published application) with an earlier filing date that discloses the
+opinion that the requirement for restriction is
-claimed invention, and that only qualifies as prior art under 35
+improper in whole or in part, he or she should
-U.S.C. 102(e). If the reference qualifies as prior art under 35
+clearly state in the next Office action that the
-U.S.C. 102(a) or (b), then this form paragraph should not be used
+requirement for restriction is withdrawn in whole
-(form paragraph 7.21 should be used instead). The reference must
+or in part, specify which groups have been rejoined,
-have either a common assignee or at least one common inventor.
+and give an action on the merits of all the claims
-This form paragraph should not be used in applications when the
+directed to the elected invention and any invention
-reference is disqualified under 35 U.S.C. 103(c) as prior art in a
+rejoined with the elected invention.
-U.S.C. 103(a) rejection. See MPEP § 706.02(l)(3).
-.35 U.S.C. 102(e) as amended by the American Inventors
+This will show that applicant has retained the right
-Protection Act of 1999 (AIPA) must be applied if the reference is
+to petition from the requirement under 37 CFR 1.144.
-one of the following:
+(See MPEP § 818.03(c).)
-a.a U.S. patent or a publication of a U.S. application for patent
+See also MPEP § 821.04 - § 821.04(b) for rejoinder
-filed under 35 U.S.C. 111(a);
+of certain nonelected inventions when the claims to
+the elected invention are allowable.
-b.a U.S. patent issued directly or indirectly from, or a U.S. or
+When preparing a final action in an application
-WIPO publication of, an international application if the international
+where there has been a traversal of a requirement for
-application has an international filing date on or after
+restriction, the examiner should indicate in the Office
-November 29, 2000.
+action that a complete reply must include cancellation
+of the claims drawn to the nonelected invention, or
-See the Examiner Notes for form paragraph 7.12 to assist in the
+other appropriate action (37 CFR 1.144).
-determination of the 35 U.S.C. 102(e) date of the reference.
-.Pre-AIPA 35 U.S.C 102(e) must be applied if the reference is
+Where a reply to a final action has otherwise placed
-a U.S. patent issued directly, or indirectly, from an international
+the application in condition for allowance, the failure
-application filed prior to November 29, 2000. See the Examiner
+to cancel claims drawn to the nonelected invention(
-Notes for form paragraph 7.12.01 to assist in the determination of
+s) not eligible for rejoinder or to take appropriate
-the 35 U.S.C. 102(e) date of the reference.
+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.
-.In bracket 3, insert either --assignee-- or --inventor--.
+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.
-.In bracket 4, insert explanation of obviousness.
+===821.02 After Election Without Traverse===
+Where the initial requirement is not traversed, if
+adhered to, appropriate action should be given on the
+elected claims.
+This will show that applicant has not retained the
+right to petition from the requirement under 37 CFR
+.144.
-.04Submission to Technology Center
+Under these circumstances, when the application is
-Director
+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.
-In order to promote uniform practice, every Office
+See MPEP § 821.01 and § 821.04 et seq.
-action containing a rejection on the ground of double
-patenting which relies on the parent application rejecting
-the claims in a divisional or continuing application
-where the divisional or continuing application
-was filed because of a requirement to restrict made by
-the examiner under 35 U.S.C. 121, including a
-requirement to elect species, must be submitted to the
-Technology Center Director for approval prior to
-mailing. If the rejection on the ground of double patenting
-is disapproved, it shall not be mailed but other
-appropriate action shall be taken. Note MPEP §
-.
-Effect of Improper Joinder in
+===821.03 Claims for Different Invention Added After an Office Action===
-Patent [R-3]
-U.S.C. 121, last sentence, provides “the validity
+Claims added by amendment following action by
-of a patent shall not be questioned for failure of the
+the examiner, MPEP § 818.01, § 818.02(a), to an
-Director to require the application to be restricted
+invention other than previously claimed, should be
-to one invention.” In other words, under this statute,
+treated as indicated by 37 CFR 1.145.
-no patent can be held void for improper joinder of
-inventions claimed therein.
-Determination of Distinctness or
+{{Statute|37 CFR 1.145. Subsequent presentation of claims for different invention.}}
-Independence of Claimed Inventions
+If, after an office action on an application, the applicant presents
-[R-3]
+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 general principles relating to distinctness or
+A complete action on all claims to the elected
-independence may be summarized as follows:
+invention should be given.
-(A)Where inventions are independent (i.e., no
+An amendment canceling all claims drawn to the
-disclosed relation therebetween), restriction to one
+elected invention and presenting only claims drawn to
-thereof is ordinarily proper, MPEP § 806.06.
+the nonelected invention should not be entered. Such
+an amendment is nonresponsive.
-(B)Where inventions are related as disclosed but
+The practice set forth in this section is not applicable
-are distinct as claimed, restriction may be proper.
+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.
-(C)Where inventions are related as disclosed but
+===821.04 Rejoinder===
-are not distinct as claimed, restriction is never proper.
+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.
-(D)A reasonable number of species may be
+Rejoined claims must be fully examined for patentability
-claimed when there is an allowable claim generic
+in accordance with 37 CFR 1.104. Thus, to be
-thereto. 37 CFR 1.141, MPEP § 806.04.
+allowable, the rejoined claims must meet all criteria
+for patentability including the requirements of
+U.S.C. 101, 102, 103 and 112.
-Where restriction is required by the Office double
+The requirement for restriction between the
-patenting cannot be held, and thus, it is imperative the
+rejoined inventions must be withdrawn. Any claim(s)
-requirement should never be made where related
+presented in a continuation or divisional application
-inventions as claimed are not distinct. For (B) and (C)
+that are anticipated by, or rendered obvious over, the
-see MPEP § 806.05 - § 806.05(j) and § 809.03.
+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-
+(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
-See MPEP § 802.01 for criteria for patentably distinct
+(i.e., no restriction requirement was made by the
-inventions.
+Office), and one of the applications issues as a patent,
+the remaining application may be rejected under the
-.01Compare Claimed Subject
+doctrine of obviousness-type double patenting, where
-Matter [R-3]
+appropriate (see MPEP § 804 - § 804.03), and applicant
+may overcome the rejection by the filing of a terminal
-In passing upon questions of double patenting and
+disclaimer under 37 CFR 1.321(c) where
-restriction, it is the claimed subject matter that is considered
+appropriate. Similarly, if copending applications separately
-and such claimed subject matter must be compared
+present product and process claims, provisionalobviousness-type double patenting rejections should
-in order to determine the question of
+be made where appropriate. However, once a determination
-distinctness or independence. However, a provisional
+as to the patentability of the product has been
-election of a single species may be required
+reached any process claim directed to making or using
-where only generic claims are presented and the
+an allowable product should not be rejected over prior
-generic claims recite such a multiplicity of species
+art without consultation with a Technology Center
-that an unduly extensive and burdensome search is
+Director.
-necessary. See MPEP § 803.02 and § 808.01(a).
+See MPEP § 706.02(n) for the applicability of
+U.S.C. 103(b) to biotechnological processes and
+compositions of matter.
-.03Single Embodiment, Claims Defining
+See MPEP § 2116.01 for guidance on the treatment
-Same Essential Features
+of process claims which make or use a novel, nonobvious
-[R-3]
+product.
-Where the claims of an application define the same
+====821.04(a) Rejoinder Between Product Inventions; Rejoinder Between Process Inventions====
-essential characteristics of a single disclosed embodiment
-of an invention, restriction therebetween should
-never be required. This is because the claims are
-not directed to distinct inventions; rather they are
-different definitions of the same disclosed subject
-matter, varying in breadth or scope of definition.
-Where such claims are voluntarily presented in
+Where restriction was required between independent
-different applications having at least one common
+or distinct products, or between independent or
-inventor or a common assignee (i.e., no restriction
+distinct processes, and all claims directed to an
-requirement was made by the Office), disclosing the
+elected invention are allowable, any restriction
-same embodiments, see MPEP § 804 - § 804.02.
+requirement between the elected invention and any
+nonelected invention that depends from or otherwise
-.04Genus and/or Species Inventions
+requires all the limitations of an allowable claim
-[R-3]
+should be withdrawn. For example, a requirement for
+restriction should be withdrawn when a generic claim,
-Where an application includes claims directed
+linking claim, or subcombination claim is allowable
-to different embodiments or species that could fall
+and any previously withdrawn claim depends from or
-within the scope of a generic claim, restriction
+otherwise requires all the limitations thereof. Claims
-between the species may be proper if the species are
+that require all the limitations of an allowable claim
-independent or distinct. However, 37 CFR 1.141 provides
+will be rejoined and fully examined for patentability
-that an allowable generic claim may link a reasonable
+in accordance with 37
-number of species embraced thereby. The
+CFR 1.104. Claims that do not
-practice is set forth in 37 CFR 1.146.
+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,
+, 170 USPQ 129, 131-32 (CCPA 1971). See also
+MPEP § 804.01.
-CFR 1.146. Election of species.
+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
+.116; amendments submitted after allowance are
+governed by 37 CFR 1.312.
-In the first action on an application containing a generic claim
+When all claims to the nonelected invention(s)
-to a generic invention (genus) and claims to more than one patentably
+depend from or otherwise require all the limitations of
-distinct species embraced thereby, the examiner may require
+an allowable claim, applicant must be advised that
-the applicant in the reply to that action to elect a species of his or
+claims drawn to the nonelected invention have been
-her invention to which his or her claim will be restricted if no
+rejoined and the restriction requirement has been
-claim to the genus is found to be allowable. However, if such
+withdrawn.
-application contains claims directed to more than a reasonable
-number of species, the examiner may require restriction of the
-claims to not more than a reasonable number of species before
-taking further action in the application.
-See MPEP § 806.04(d) for the definition of a
+Note that each additional invention is considered
-generic claim, and MPEP § 806.04(e) for a discussion
+separately. When claims to one nonelected invention
-of claims that include one or more species.
+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.
+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
+.312; amendments submitted after final rejection are
+governed by 37 CFR 1.116.
+====821.04(b) Rejoinder of Process Requiring an Allowable Product====
-.04(b)Species May Be Independent
+Where claims directed to a product and to a process
-or Related Inventions [R-3]
+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
+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
+U.S.C. 121.
-Species may be either independent or
+Where the application as originally filed discloses
-related under the particular disclosure. Where species
+the product and the process for making and/or using
-under a claimed genus are not connected in any
+the product, and only claims directed to the product
-of design, operation, or effect under the disclosure,
+are presented for examination, applicant may present
-the species are independent inventions. See MPEP
+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,
-.01 and § 806.06. Where inventions as disclosed
+and in order to expedite prosecution, applicants are
-and claimed are both (A) species under a
+encouraged to present such process claims, preferably
-claimed genus and (B) related, then the question of
+as dependent claims, in the application at an early
-restriction must be determined by both the practice
+stage of prosecution. Process claims which depend
-applicable to election of species and the practice
+from or otherwise require all the limitations of the
-applicable to other types of restrictions such as those
+patentable product will be entered as a matter of right
-covered in MPEP § 806.05 - § 806.05(j). If
+if the amendment is presented prior to final rejection
-restriction is improper under either practice, it should
+or allowance, whichever is earlier. However, if applicant
-not be required.
+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).
-For example, two different subcombinations usable
+Amendments submitted after allowance are governed
-with each other may each be a species of some common
+by 37 CFR 1.312. Amendments to add only
-generic invention. If so, restriction practice
+process claims which depend from or otherwise
-under election of species and the practice applicable
+require all the limitations of an allowed product claim
-to restriction between combination and subcombinations
+and which meet the requirements of 35 U.S.C. 101,
-must be addressed.
+, 103, and 112 may be entered.
-As a further example, species of carbon compounds
+Amendments submitted after final rejection are
-may be related to each other as intermediate and final
+governed by 37 CFR 1.116. When all claims to the
-product. Thus, these species are not independent and
+elected product are in condition for allowance, all process
-in order to sustain a restriction requirement, distinctness
+claims eligible for rejoinder (see MPEP
-must be shown. Distinctness is proven if the
+§ 821.04) must be considered for patentability.
-intermediate and final products do not overlap in
-scope and are not obvious variants and it can be
-shown that the intermediate product is useful other
-than to make the final product. Otherwise, the disclosed
-relationship would preclude their being issued
-in separate patents. See MPEP § 806.05(j) for
-restriction practice pertaining to related products,
-including intermediate-final product relationships.
+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
+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.
+==822 Claims to Inventions That Are Not Distinct in Plural Applications of Same Inventive Entity==
+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
-.04(d)Definition of a Generic Claim[R-3]
+claims from all but one application may be required in the
+absence of good and sufficient reason for their retention
-In an application presenting three species illustrated,
+during pendency in more than one application.
-for example, in Figures 1, 2, and 3, respectively,
-a generic claim should read on each of these
-views; but the fact that a claim does so read is not
-conclusive that it is generic. It may define only an element
-or subcombination common to the several species.
-In general, a generic claim should require no
-material element additional to those required by
-the species claims, and  each of the species claims
-must require all the limitations of the generic claim.
+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.
-Once a generic claim is allowable, all of the
+See MPEP § 706.03(w) and § 706.07(b) for res
-claims drawn to species in addition to the elected species
+judicata.
-which require all the limitations of the
-generic claim will ordinarily be  allowable over the
-prior art in view of the allowability of the
-generic claim, since the additional species will depend
-thereon or otherwise require all of the limitations
-thereof. When all or some of the claims directed to
-one of the species in addition to the elected species do
-not require all the limitations of the generic claim,
- see MPEP § 821.04(a).
-.04(e)Claims Limited to Species [R-5]
+See MPEP § 709.01 for one application in interference.
-Claims are definitions or descriptions of inventions.
+See MPEP § 806.04(h) to § 806.04(i) for species
-Claims themselves are never species. The
+and genus in separate applications.
-scope of a claim may be limited to a single disclosed
-embodiment (i.e., a single species, and thus be designated
-a specific species claim). Alternatively, a
-claim may encompass two or more of the disclosed
-embodiments (and thus be designated a
-generic or genus claim).
-Species  always refer to the  different embodiments
+Wherever appropriate, such conflicting applications
-of the invention.
+should be joined. This is particularly true
+where the two or more applications are due to, and
+consonant with, a requirement to restrict which the
+examiner now considers to be improper.
-Species may be either independent or related as disclosed
+===822.01 Copending Before the Examiner===
-(see MPEP § 806.04 and §
-.04(b)).
-.04(f)Restriction Between Mutually
+{{Statute|37 CFR 1.78. Claiming benefit of earlier filing date and cross-references to other applications.}}
-Exclusive Species
+{{Ellipsis}}
-[R-3]
+(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.
+{{Ellipsis}}
+|}
-Where two or more species are claimed, a requirement
+Where claims in one application are unpatentable
-for restriction to a single species may be proper
+over claims of another application of the same
-if the species are mutually exclusive. Claims  to
+inventive entity (or different inventive entity with
-different species are mutually exclusive if one
+common ownership) because they contain conflicting
-claim recites limitations disclosed for a first species
+claims, a complete examination should be
-but not  a second, while a second claim recites
+made of the claims of each application and all appropriate
-limitations disclosed only for the second species and
+rejections should be entered in each application,
-not the first. This may also be expressed by saying
+including rejections based upon prior art. The claims
-that to require restriction between claims limited
+of each application may also be rejected on the
-to species, the claims  must not overlap in scope.
+grounds of “provisional” double patenting on the
+claims of the other application whether or not any
-.04(h)Species Must Be Patentably
+claims avoid the prior art. Where appropriate, the
-Distinct From Each Other[R-3]
+same prior art may be relied upon in each of the applications.
+See also MPEP § 804.01 and § 822.
-In making a requirement for restriction in an application
-claiming plural species, the examiner should
-group together species considered clearly unpatentable
-over each other .
-Where generic claims are allowable, applicant
-may claim in the same application additional species
-as provided by 37 CFR 1.141. See MPEP § 806.04.
-Where an applicant files a divisional application
-claiming a species previously claimed but nonelected
-in the parent case pursuant to and consonant with a
-requirement to restrict a double patenting rejection of
-the species claim(s) would be prohibited under 35
-U.S.C. 121. See MPEP § 821.04(a) for rejoinder of
-species claims when a generic claim is allowable.
-Where, however,  claims to a different species, or
- a species disclosed but not claimed in a parent case
-as filed and first acted upon by the examiner, are
-voluntarily presented in a different application having
-at least one common inventor or a common assignee
-(i.e., no requirement for election pertaining to said
-species was made by the Office) there should be
-close investigation to determine whether a double
-patenting rejection would be appropriate. See
-MPEP § 804.01 and § 804.02.
-.04(i)Generic Claims Presented
-After Issue of Species [R-3]
-If a generic claim is presented  after the
-issuance of a patent claiming one or more species
-within the scope of the generic claim, the Office may
-reject the generic claim on the grounds of obviousness-
-type double patenting when the patent and
-application have at least once common inventor and/
-or are either (1) commonly assigned/owned or (2)
-non-commonly assigned/owned but subject to a joint
-research agreement as set forth in 35 U.S.C. 103(c)(2)
-and (3). See MPEP § 804. Applicant may overcome
-such a rejection by filing a terminal disclaimer. See
-In re Goodman, 11 F.3d 1046, 1053, 29 USPQ2d
-, 2016 (Fed. Cir. 1993); In re Braithwaite,
-F.2d 594, 154 USPQ 29 (CCPA 1967).
-.05Related Inventions [R-5]
-Where two or more related inventions are claimed,
-the principal question to be determined in connection
-with a requirement to restrict or a rejection on the
-ground of double patenting is whether or not
-the
-inventions as claimed are distinct. If they are
-distinct,
-restriction may be proper. If they are not distinct,
-restriction is never proper. If nondistinct inventions
-are claimed in separate applications or patents, double
-patenting must be held, except where the additional
-applications were filed consonant with a requirement
-to restrict.
-Various pairs of related inventions are noted in the
-following sections. In applications claiming inventions
-in different statutory categories, only one-way
-distinctness is generally needed to support a restriction
-requirement. See MPEP § 806.05(c) (combination
-and subcombination) and § 806.05(j) (related
-products or related processes) for examples of when a
-two-way test is required for distinctness. Related
-inventions in the same statutory class are considered
-mutually exclusive, or not overlapping in scope, if a
-first invention would not infringe a second invention,
-and the second invention would not infringe the first
-invention
-.05(a)Combination and Subcombination
-[R-3]
-A combination is an organization of which a subcombination
-or element is a part.
-.05(c)Criteria of Distinctness Between
-Combination and Subcombination
-[R-5]
-To support a requirement for restriction between
-combination and subcombination inventions, both
-two-way distinctness and reasons for insisting on
-restriction are necessary, i.e., there would be a serious
-search burden if restriction were not required
-as evidenced by separate classification, status, or field
-of search. See MPEP § 808.02.
-The inventions are distinct if it can be shown that a
-combination as claimed:
-(A)does not require the particulars of the subcombination
-as claimed for patentability (to show
-novelty and unobviousness), and
-(B)the subcombination can be shown to have
-utility either by itself or in another materially different
-combination.
-When these factors cannot be shown, such inventions
-are not distinct.
-The following examples are included for general
-guidance.
-I.SUBCOMBINATION ESSENTIAL TO
-COMBINATION
-ABsp/Bsp No Restriction
-Where a combination as claimed  requires the
-details of a subcombination as separately
-claimed, there is usually no evidence that combination
-ABsp is patentable without the details of Bsp. The
-inventions are not distinct and a requirement for
-restriction must not be made or maintained, even if
-the subcombination has separate utility. This situation
-can be diagrammed as combination ABsp (“sp” is an
-abbreviation for “specific”), and subcombination Bsp.
-Thus the specific characteristics required by the subcombination
-claim Bsp are also required by the combination
-claim. See MPEP § 806.05(d) for situations
-where two or more subcombinations are separately
-claimed.
-II.SUBCOMBINATION NOT ESSENTIAL
-TO COMBINATION
-A. ABbr/Bsp Restriction Proper
-Where a combination as claimed does not
-require the details of the subcombination as separately
-claimed and the subcombination has separate
-utility, the inventions are distinct and restriction is
-proper if reasons exist for insisting upon the restriction,
-i.e., there would be a serious search burden if
-restriction were not required as evidenced by separate
-classification, status, or field of search.
-This situation can be diagramed as combination
-ABbr (“br” is an abbreviation for “broad”), and subcombination
-Bsp (“sp” is an abbreviation for “specific”).
-Bbr indicates that in the combination the
-subcombination is broadly recited and that the specific
-characteristics required by the subcombination
-claim Bsp are not required by the combination claim.
-Since claims to both the subcombination and combination
-are presented, the omission of details of the
-claimed subcombination Bsp in the combination claim
-ABbr is evidence that the combination does not rely
-upon the specific limitations of the subcombination
-for its patentability. If subcombination Bsp has separate
-utility, the inventions are distinct and restriction is
-proper if reasons exist for insisting upon the restriction.
-In applications claiming plural inventions capable
-of being viewed as related in two ways, for example,
-as both combination-subcombination and also as species
-under a claimed genus, both applicable criteria
-for distinctness must be demonstrated to support a
-restriction requirement. See also MPEP § 806.04(b).
-Form paragraph 8.15 may be used in combination-
-subcombination restriction requirements.
-¶ 8.15 Combination-Subcombination
-Inventions [1] and [2] are related as combination and subcombination.
-Inventions in this relationship are distinct if it can be
-shown that (1) the combination as claimed does not require the
-particulars of the subcombination as claimed for patentability, and
-(2) that the subcombination has utility by itself or in other combinations
-(MPEP § 806.05(c)). In the instant case, the combination
-as claimed does not require the particulars of the subcombination
-as claimed because [3]. The subcombination has separate utility
-such as [4].
-The examiner has required restriction between combination
-and subcombination inventions. Where applicant elects a subcombination,
-and claims thereto are subsequently found allowable,
-any claim(s) depending from or otherwise requiring all the limitations
-of the allowable subcombination will be examined for patentability
-in accordance with 37 CFR 1.104. See MPEP §
-.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:
-.This form paragraph is to be used when claims are presented
-to both combination(s) and subcombination(s) (MPEP §
-.05(c)).
-.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).
-.In bracket 4, suggest utility other than used in the combination.
-.Conclude restriction requirement with one of form paragraphs
-.21.01 through 8.21.03.
-The burden is on the examiner to suggest an example
-of separate utility. If applicant proves or provides
-an argument, supported by facts, that the utility suggested
-by the examiner cannot be accomplished, the
-burden shifts to the examiner to document a viable
-separate utility or withdraw the requirement.
-B. ABsp/ABbr/Bsp Restriction Proper
-The presence of a claim to combination ABsp does
-not alter the propriety of a restriction requirement
-properly made between combination ABbr and subcombination
-Bsp. Claim ABbr is an evidence claim
-which indicates that the combination does not rely
-upon the specific details of the subcombination for its
-patentability. If a restriction requirement can be properly
-made between combination ABbr and subcombination
-Bsp, any claim to combination ABsp would be
-grouped with combination ABbr.
-If the combination claims are amended after a
-restriction requirement such that each combination, as
-claimed, requires all the limitations of the subcombination
-as claimed, i.e., if the evidence claim ABbr is
-deleted or amended to require Bsp, the restriction
-requirement between the combination and subcombination
-should not be maintained.
-If a claim to Bsp is determined to be allowable, any
-claims requiring Bsp, including any combination
-claims of the format ABsp, must be considered for
-rejoinder. See MPEP § 821.04.
-III.PLURAL COMBINATIONS REQUIRING A
-SUBCOMBINATION COMMON TO EACH
-COMBINATION
-When an application includes a claim to a single
-subcombination, and that subcombination is required
-by plural claimed combinations that are properly
-restrictable, the subcombination claim is a linking
-claim and will be examined with the elected combination
-(see MPEP § 809.03). The subcombination claim
-links the otherwise restrictable combination inventions
-and should be listed in form paragraph 8.12. The
-claimed plural combinations are evidence that the
-subcombination has utility in more than one combination.
-Restriction between plural combinations may be
-made using form paragraph 8.14.01. See MPEP
-§
-.05(j).
-.05(d)Subcombinations Usable Together
-[R-5]
-Two or more claimed subcombinations, disclosed
-as usable together in a single combination, and which
-can be shown to be separately usable, are usually
-restrictable when the subcombinations do not overlap
-in scope and are not obvious variants.
-To support a restriction requirement where applicant
-separately claims plural subcombinations usable
-together in a single combination and claims a combination
-that requires the particulars of at least one of
-said subcombinations, both two-way distinctness and
-reasons for insisting on restriction are necessary. Each
-subcombination is distinct from the combination as
-claimed if:
-(A)the combination does not require the particulars
-of the subcombination as claimed for patentability
-(e.g., to show novelty and unobviousness), and
-(B)the subcombination can be shown to have
-utility either by itself or in another materially different
-combination.
-See MPEP § 806.05(c). Furthermore, restriction is
-only proper when there would be a serious burden if
-restriction were not required, as evidenced by separate
-classification, status, or field of search.
-Where claims to two or more subcombinations are
-presented along with a claim to a combination that
-includes the particulars of at least two subcombinations,
-the presence of the claim to the second subcombination
-is evidence that the details of the first
-subcombination are not required for patentability (and
-vice versa). For example, if an application claims
-ABC/B/C wherein ABC is a combination claim and B
-and C are each subcombinations that are properly
-restrictable from each other, the presence of a claim to
-C provides evidence that the details of B are not
-required for the patentability of combination ABC.
-Upon determining that all claims directed to an
-elected combination invention are allowable, the
-examiner must reconsider the propriety of the restriction
-requirement. Where the combination is allowable
-in view of the patentability of at least one of the subcombinations,
-the restriction requirement between the
-elected combination and patentable subcombination(
-s) will be withdrawn; furthermore, any subcombinations
-that were searched and determined to be
-allowable must also be rejoined. If a subcombination
-is elected and determined to be allowable, nonelected
-claims requiring all the limitations of the allowable
-claim will be rejoined in accordance with MPEP §
-.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:
-.This form paragraph is to be used when claims are presented
-to subcombinations usable together (MPEP § 806.05(d)).
-.In bracket 3, insert the appropriate group number or identify
-the subcombination.
-.In bracket 4, suggest utility other than with the other subcombination.
-.Conclude restriction requirement with one of form paragraphs
-.21.01 through 8.21.03.
-The examiner must show, by way of example, that
-one of the subcombinations has utility other than in
-the disclosed combination.
-Care must be taken to determine if the subcombinations
-are generically claimed.
-Where subcombinations as disclosed and claimed
-are both (a) species under a claimed genus and (b)
-related, then the question of restriction must be determined
-by both the practice applicable to election of
-species and the practice applicable to related inventions.
-If restriction is improper under either practice, it
-should not be required (MPEP § 806.04(b)).
-If applicant proves or provides an argument, supported
-by facts, that the other use, suggested by the
-examiner, cannot be accomplished or is not reasonable,
-the burden is on the examiner to document a viable
-alternative use or withdraw the requirement.
-.05(e)Process and Apparatus for Its
-Practice [R-5]
-Process and apparatus for its practice can be shown
-to be distinct inventions, if either or both of the following
-can be shown: (A) that the process as claimedcan be practiced by another materially different apparatus
-or by hand; or (B) that the apparatus as claimedcan be used to practice another materially different
-process.
-Form paragraph 8.17 may be used to make restriction
-requirements between process and apparatus.
-¶ 8.17 Process and Apparatus
-Inventions [1] and [2] are related as process and apparatus for
-its practice. The inventions are distinct if it can be shown that
-either: (1) the process as claimed can be practiced by another
-materially different apparatus or by hand, or (2) the apparatus as
-claimed can be used to practice another materially different process.
-(MPEP § 806.05(e)). In this case [3].
-Examiner Note:
-.This form paragraph is to be used when claims are presented
-to both a process and apparatus for its practice (MPEP §
-.05(e)).
-.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......--.
-.A process can be practiced by hand if it can be performed
-without using any apparatus.
-.Conclude restriction requirement with one of form paragraphs
-.21.01 through 8.21.03.
-The burden is on the examiner to provide reasonable
-examples that recite material differences.
-If applicant proves or provides convincing argument
-that there is no material difference or that a process
-cannot be performed by hand (if examiner so
-argued), the burden is on the examiner to document
-another materially different process or apparatus or
-withdraw the requirement.
-.05(f)Process of Making and ProductMade [R-5]
-A process of making and a product made by the
-process can be shown to be distinct inventions if
-either or both of the following can be shown: (A) that
-the process as claimed is not an obvious process of
-making the product and the process as claimed can be
-used to make another materially different product; or
-(B) that the product as claimed can be made by
-another materially different process.
-Allegations of different processes or products need
-not be documented.
-A product defined by the process by which it can be
-made is still a product claim (In re Bridgeford, 357
-F.2d 679, 149 USPQ 55 (CCPA 1966)) and can be
-restricted from the process if the examiner can demonstrate
-that the product as claimed can be made by
-another materially different process; defining the
-product in terms of a process by which it is made is
-nothing more than a permissible technique that applicant
-may use to define the invention.
-If applicant convincingly traverses the requirement,
-the burden shifts to the examiner to document a viable
-alternative process or product, or withdraw the
-requirement.
-Form paragraphs 8.18 and 8.21.04 should be used
-in restriction requirements between product and process
-of making.
-¶ 8.18 Product and Process of Making
-Inventions [1] and [2] are related as process of making and
-product made. The inventions are distinct if either or both of the
-following can be shown: (1) that the process as claimed can be
-used to make another materially different product or (2) that the
-product as claimed can be made by another materially different
-process (MPEP § 806.05(f)). In the instant case [3].
-Examiner Note:
-.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)).
-.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......--.
-.Conclude the basis for the restriction requirement with one of
-form paragraphs 8.21.01 through 8.21.03.
-.All restriction requirements between a product and a process
-of making the product should be followed by form paragraph
-.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
-. 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).
-.05(g)Apparatus and Product Made
-[R-3]
-An apparatus and a product made by the apparatus
-can be shown to be distinct inventions if either or both
-of the following can be shown: (A) that the apparatus
-as claimed is not an obvious apparatus for making the
-product and the apparatus as claimed can be used to
-make another materially different product; or (B)
-that the product as claimed can be made by another
-materially different apparatus.
-Form paragraph 8.19 may be used for restriction
-requirements between apparatus and product made.
-¶ 8.19 Apparatus and Product Made
-Inventions [1] and [2] are related as apparatus and product
-made. The inventions in this relationship are distinct if either or
-both of the following can be shown: (1) that the apparatus as
-claimed is not an obvious apparatus for making the product and
-the apparatus can be used for making a materially different product
-or (2) that the product as claimed can be made by another
-materially different apparatus (MPEP § 806.05(g)). In this case
-[3].
-Examiner Note:
-.This form paragraph is to be used when claims are presented
-to both the apparatus and product made (MPEP § 806.05(g)).
-.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......--.
-.Conclude restriction requirement with one of form paragraphs
-.21.01 through 8.21.03.
-The examiner must show by way of example either
-(A) that the apparatus as claimed is not an obvious
-apparatus for making the product and the apparatus as
-claimed can be used to make another materially
-different product or (B) that the product as claimedcan be made by another  materially different apparatus.
-The burden is on the examiner to provide an example,
-but the example need not be documented.
-If applicant either proves or provides convincing
-argument that the alternative example suggested by
-the examiner is not workable, the burden is on the
-examiner to suggest another viable example or withdraw
-the restriction requirement.
-.05(h)Product and Process of Using[R-3]
-A product and a process of using the product can be
-shown to be distinct inventions if either or both of the
-following can be shown: (A) the process of using as
-claimed can be practiced with another materially different
-product; or (B) the product as claimed can be
-used in a materially different process.
-The burden is on the examiner to provide an example,
-but the example need not be documented.
-If the applicant either proves or provides a convincing
-argument that the alternative use suggested by the
-examiner cannot be accomplished, the burden is on
-the examiner to support a viable alternative use or
-withdraw the requirement.
-Form paragraphs 8.20 and 8.21.04 should
-be used in restriction requirements between the product
-and method of using.
-¶ 8.20 Product and Process of Using
-Inventions [1] and [2] are related as product and process of
-use. The inventions can be shown to be distinct if either or both of
-the following can be shown: (1) the process for using the product
-as claimed can be practiced with another materially different
-product or (2) the product as claimed can be used in a materially
-different process of using that product. See MPEP § 806.05(h). In
-the instant case [3].
-Examiner Note:
-.This form paragraph is to be used when claims are presented
-to both the product and process of using the product (MPEP §
-.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).
-.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......--.
-.Conclude the basis for the restriction requirement with one of
-form paragraphs 8.21.01 through 8.21.03.
-.All restriction requirements between a product and a process
-of using the product should be followed by form paragraph
-.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
-. 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).
-.05(i)Product, Process of Making,
-and Process of Using  [R-3]
-CFR 1.141. Different inventions in one national
-application.
-(b)Where claims to all three categories, product, process of
-making, and process of use, are included in a national application,
-a three way requirement for restriction can only be made where
-the process of making is distinct from the product. If the process
-of making and the product are not distinct, the process of using
-may be joined with the claims directed to the product and the process
-of making the product even though a showing of distinctness
-between the product and process of using the product can be
-made.
-Where an application contains claims to a product,
-claims to a process specially adapted for (i.e., not pat
-entably distinct from, as defined in MPEP
-§
-.05(f)) making the product, and claims to a process
-of using the product, applicant may be
-required to elect either (A) the product and process of
-making it; or (B) the process of using. If the
-examiner cannot make a showing of distinctness
-between the process of using and the product (MPEP
-§
-.05(h)), restriction cannot be required.
-Form paragraph 8.20 (See MPEP § 806.05(h))
-may be used in product, process of making and process
-of using situations where the product cannot
-be restricted from the process of making the product.
-See MPEP § 821.04(b) for rejoinder practice pertaining
-to product and process inventions.
-.05(j)Related Products; Related
-Processes [R-5]
-To support a requirement for restriction between
-two or more related product inventions, or between
-two or more related process inventions, both two-way
-distinctness and reasons for insisting on restriction are
-necessary, i.e., separate classification, status in the art,
-or field of search. See MPEP § 808.02. See MPEP
-§
-.05(c) for an explanation of the requirements to
-establish two-way distinctness as it applies to inventions
-in a combination/subcombination relationship.
-For other related product inventions, or related process
-inventions, the inventions are distinct if
-(A)the inventions as claimed do not overlap in
-scope, i.e., are mutually exclusive;
-(B)the inventions as claimed are not obvious
-variants; and
-(C)the inventions as claimed are either not capable
-of use together or can have a materially different
-design, mode of operation, function, or effect. See
-MPEP § 802.01.
-The burden is on the examiner to provide an example
-to support the determination that the inventions
-are distinct, but the example need not be documented.
-If applicant either proves or provides convincing evidence
-that the example suggested by the examiner is
-not workable, the burden is on the examiner to suggest
-another viable example or withdraw the restriction
-requirement.
-As an example, an intermediate product and a final
-product can be shown to be distinct inventions if the
-intermediate and final products are mutually exclusive
-inventions (not overlapping in scope) that are not
-obvious variants, and the intermediate product as
-claimed is useful to make other than the final product
-as claimed. Typically, the intermediate loses its identity
-in the final product. See also MPEP § 806.05(d)
-for restricting between combinations disclosed as
-usable together. See MPEP § 809 - § 809.03 if a
-generic claim or claim linking multiple products or
-multiple processes is present.
-Form paragraph 8.14.01 may be used to restrict
-between related products or related processes; form
-paragraph 8.14 may be used in intermediate-final
-product restriction requirements; form paragraph 8.16may be used to restrict between subcombinations.
-¶ 8.14.01 Distinct Products or Distinct Processes
-Inventions [1] and [2] are directed to related [3]. The related
-inventions are distinct if the (1) the inventions as claimed are
-either not capable of use together or can have a materially different
-design, mode of operation, function, or effect; (2) the inventions
-do not overlap in scope, i.e., are mutually exclusive; and (3)
-the inventions as claimed are not obvious variants. See MPEP §
-.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:
-.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
-.15 to restrict between combination(s) and subcombination(s).
-.If a generic claim or claim linking multiple product inventions
-or multiple process inventions is present, see MPEP § 809 -
-§ 809.03.
-.In bracket 3, insert --products -- or --processes--.
-.In bracket 4, explain why the inventions as claimed are either
-not capable of use together or can have a materially different
-design, mode of operation, function, or effect.
-.Conclude restriction requirement with one of form paragraphs
-.21.01 through 8.21.03.
-¶ 8.14 Intermediate-Final Product
-Inventions [1] and [2] are related as mutually exclusive species
-in an intermediate-final product relationship. Distinctness is
-proven for claims in this relationship if the intermediate product is
-useful to make other than the final product and the species are pat
-entably distinct (MPEP § 806.05(j)). In the instant case, the intermediate
-product is deemed to be useful as [3] and the inventions
-are deemed patentably distinct because there is nothing on this
-record to show them to be obvious variants.
-Examiner Note:
-.This form paragraph is to be used when claims are presented
-to both an intermediate and final product (MPEP § 806.05(j)).
-.Conclude restriction requirement with one of form paragraphs
-.21.01 through 8.21.03.
-¶ 8.16 Subcombinations, Usable Together
-Inventions [1] and [2] are related as subcombinations disclosed
-as usable together in a single combination. The subcombinations
-are distinct if they do not overlap in scope and are not obvious
-variants, and if it is shown that at least one subcombination is separately
-usable. In the instant case subcombination [3] has separate
-utility such as [4]. See MPEP § 806.05(d).
-The examiner has required restriction between subcombinations
-usable together. Where applicant elects a subcombination
-and claims thereto are subsequently found allowable, any claim(s)
-depending from or otherwise requiring all the limitations of the
-allowable subcombination will be examined for patentability in
-accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant
-is advised that if any claim presented in a continuation or divisional
-application is anticipated by, or includes all the limitations
-of, a claim that is allowable in the present application, such claim
-may be subject to provisional statutory and/or nonstatutory double
-patenting rejections over the claims of the instant application.
-Examiner Note:
-.This form paragraph is to be used when claims are presented
-to subcombinations usable together (MPEP § 806.05(d)).
-.In bracket 3, insert the appropriate group number or identify
-the subcombination.
-.In bracket 4, suggest utility other than with the other subcombination.
-.Conclude restriction requirement with one of form paragraphs
-.21.01 through 8.21.03.
-.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:
-.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.
-.In bracket 3, insert reasons for concluding that the inventions
-are unrelated.
-.This form paragraph must be followed by one of form paragraphs
-.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:
-.In bracket 3, insert reasons for concluding that the inventions
-are unrelated.
-.This form paragraph must be followed by one of form paragraphs
-.21.01, 8.21.02 or 8.21.03.
-Patentability 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.
-Reasons 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.
-.01Reasons for Holding of
-Independence or Distinctness
-[R-3]
-The particular reasons relied on by the examiner
-for holding that the inventions as claimed are
-either independent or distinct should be concisely
-stated. A mere statement of conclusion is inadequate.
-The reasons upon which the conclusion is based
-should be given.
-For example, relative to a combination and a subcombination
-thereof, the examiner should point out
-the reasons why he or she considers the subcombination
-to have utility by itself or in other combinations,
-and why he or she considers that the combination as
-claimed does not require the particulars of the subcombination
-as claimed.
-Each relationship of claimed inventions should be
-similarly treated and the reasons for the conclusions
-of distinctness or independence set forth. Form paragraphs
-.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 -
-§
-.06.
-.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 §
-.02.
-Where there is a relationship disclosed between
-species, such disclosed relation must be discussed and
-reasons advanced leading to the conclusion that the
-disclosed relation does not prevent restriction, in
-order to establish the propriety of restriction.
-When a requirement for restriction between either
-independent or distinct species is made, applicant
-must elect a single disclosed species even if applicant
-disagrees with the examiner’s restriction requirement.
-Election of species should not be required
-between claimed species that are considered
-clearly unpatentable (obvious) over each other. In
-making a requirement for restriction in an application
-claiming plural species, the examiner should group
-together species considered clearly unpatentable over
-each other.
-Election of species may be required prior to a
-search on the merits (A) in applications containing
-claims to a plurality of species with no generic claims,
-and (B) in applications containing both species claims
-and generic or Markush claims.
-In applications where only generic claims are presented,
-restriction cannot be required unless the
-generic claims recite or encompass such a multiplicity
-of species that an unduly extensive and burdensome
-search would be necessary to search the
-entire scope of the
-claim. See MPEP § 803.02 and §
-.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 §
-.02 and § 809.02(a) for guidance regarding how to
-require restriction between species.
-.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 §
-.05(c) - § 806.06, the examiner, in order to establish
-reasons for insisting upon restriction, must
-explain why there would be a serious burden on the
-examiner if restriction is not required. Thus the
-examiner must show by appropriate explanation one
-of the following:
-(A)Separate classification thereof: This shows
-that each invention has attained recognition in the art
-as a separate subject for inventive effort, and also a
-separate field of search. Patents need not be cited to
-show separate classification.
-(B)A separate status in the art when they are
-classifiable together: Even though they are classified
-together, each invention can be shown to have formed
-a separate subject for inventive effort when the examiner
-can show a recognition of separate inventive
-effort by inventors. Separate status in the art may be
-shown by citing patents which are evidence of such
-separate status, and also of a separate field of search.
-(C)A different field of search: Where it is necessary
-to search for one of the inventions in a manner
-that is not likely to result in finding art pertinent to the
-other invention(s) (e.g., searching different classes/
-subclasses or electronic resources, or employing different
-search queries, a different field of search is
-shown, even though the two are classified together.
-The indicated different field of search must in fact be
-pertinent to the type of subject matter covered by the
-claims. Patents need not be cited to show different
-fields of search.
-Where, however, the classification is the same and
-the field of search is the same and there is no clear
-indication of separate future classification and field of
-search, no reasons exist for dividing among independent
-or related inventions.
-Linking Claims [R-5]
-There are a number of situations which arise in
-which an application has claims to two or more properly
-divisible inventions, so that a requirement to
-restrict the claims of the application to one would be
-proper, but presented in the same case are one or more
-claims (generally called “linking” claims) which,
-if allowable, would require rejoinder of the otherwise
-divisible inventions. See MPEP § 821.04 for information
-pertaining to rejoinder practice.
-Linking claims and the inventions they link
-together are usually either all directed to products or
-all directed to processes (i.e., a product claim linking
-properly divisible product inventions, or a process
-claim linking properly divisible process inventions).
-The most common types of linking claims which, if
-allowable, act to prevent restriction between inventions
-that can otherwise be shown to be divisible, are
-(A)genus claims linking species claims; and
-(B)subcombination claims linking plural combinations.
-Where an application includes claims to distinct
-inventions as well as linking claims, restriction can
-nevertheless be required.
-The linking claims must be examined with, and
-thus are considered part of, the invention elected.
-When all claims directed to the elected invention are
-allowable, should any linking claim be allowable, the
-restriction requirement between the linked inventions
-must be withdrawn. Any claim(s) directed to the nonelected
-invention(s), previously withdrawn from consideration,
-which depends from or requires all the
-limitations of the allowable linking claim must be
-rejoined and will be fully examined for patentability.
-Where the requirement for restriction in an application
-is predicated upon the nonallowability of generic
-or other type of linking claims, applicant is entitled to
-retain in the application claims to the nonelected
-invention or inventions. Where such withdrawn
-claims have been canceled by applicant pursuant to
-the restriction requirement, upon the allowance of the
-linking claim(s), the examiner must notify applicant
-that any canceled, nonelected claim(s) which depends
-from or requires all the limitations of the allowable
-linking claim may be reinstated by submitting the
-claim(s) in an amendment. Upon entry of the amendment,
-the amended claim(s) will be fully examined for
-patentability. See MPEP § 821.04 for additional information
-regarding rejoinder.
-.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 §
-.01 for telephone
-practice in restriction requirements.
-Action as follows should be taken:
-(A)Identify generic claims or indicate that no
-generic claims are present. See MPEP § 806.04(d) for
-definition of a generic claim.
-(B)Clearly identify each (or in aggravated cases
-at least exemplary ones) of the disclosed species, to
-which claims are to be restricted. The species are
-preferably identified as the species of figures 1, 2, and
-or the species of examples I, II, and III, respectively.
-In the absence of distinct figures or examples to identify
-the several species, the mechanical means, the
-particular material, or other distinguishing characteristic
-of the species should be stated for each species
-identified. If the species cannot be conveniently identified,
-the claims may be grouped in accordance with
-the species to which they are restricted. Provide reasons
-why the species are independent or distinct.
-(C)Applicant should then be required to elect a
-single disclosed species under 35 U.S.C. 121, and
-advised as to the requisites of a complete reply and his
-or her rights under 37 CFR 1.141.
-To be complete, a reply to a requirement made
-according to this section should include a proper election
-along with a listing of all claims readable thereon,
-including any claims subsequently added.
-In those applications wherein a requirement for
-restriction is accompanied by an action on the
-elected claims, such action will be considered to be
-an action on the merits and the next action may be
-made final where appropriate in accordance with
-MPEP § 706.07(a).
-For treatment of claims held to be drawn to nonelected
-inventions, see MPEP § 821 et seq.
-¶ 8.01 Election of Species; Species Claim(s) Present
-This application contains claims directed to the following patentably
-distinct species [1]. The species are independent or distinct
-because [2].
-Applicant is required under 35 U.S.C. 121 to elect a single disclosed
-species for prosecution on the merits to which the claims
-shall be restricted if no generic claim is finally held to be allowable.
-Currently, [3] generic.
-Applicant is advised that a reply to this requirement must
-include an identification of the species that is elected consonant
-with this requirement, and a listing of all claims readable thereon,
-including any claims subsequently added. An argument that a
-claim is allowable or that all claims are generic is considered nonresponsive
-unless accompanied by an election.
-Upon the allowance of a generic claim, applicant will be entitled
-to consideration of claims to additional species which depend
-from or otherwise require all the limitations of an allowable
-generic claim as provided by 37 CFR 1.141. If claims are added
-after the election, applicant must indicate which are readable upon
-the elected species. MPEP § 809.02(a).
-Examiner Note:
-.In bracket 1, identify the species from which an election is to
-be made.
-.In bracket 2, explain why the inventions are independent or
-distinct. See, e.g., form paragraphs 8.14.01 and 8.20.02.
-.In bracket 3 insert the appropriate generic claim information.
-.Conclude restriction requirement with one of form paragraphs
-.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:
-.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.
-.In bracket 2, clearly identify the species from which an election
-is to be made.
-.In bracket 3, explain why the inventions are independent or
-distinct. See, e.g., form paragraphs 8.14.01 and 8.20.02.
-.Conclude restriction requirement with one of form paragraphs
-.21.01-8.21.03.
-.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
-.12 to make restrictions involving linking
-claims when the linking claim is other than a genus
-claim linking species inventions. When the linking
-claim is a genus claim linking species inventions,
-examiners should use form paragraph 8.01 or 8.02(see MPEP § 809.02(a)).
-¶ 8.12 Restriction, Linking Claims
-Claim [1] link(s) inventions [2] and [3]. The restriction
-requirement [4] the linked inventions is subject to the nonallowance
-of the linking claim(s), claim [5]. Upon the indication of
-allowability of the linking claim(s), the restriction requirement as
-to the linked inventions shall be withdrawn and any claim(s)
-depending from or otherwise requiring all the limitations of the
-allowable linking claim(s) will be rejoined and fully examined for
-patentability in accordance with 37 CFR 1.104. Claims that
-require all the limitations of an allowable linking claim will be
-entered as a matter of right if the amendment is presented prior to
-final rejection or allowance, whichever is earlier. Amendments
-submitted after final rejection are governed by 37 CFR 1.116;
-amendments submitted after allowance are governed by 37 CFR
-.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
-U.S.C. 121 are no longer applicable. In re Ziegler, 443 F.2d
-, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also
-MPEP § 804.01.
-Examiner Note:
-.This form paragraph must be included in any restriction
-requirement with at least one linking claim present.
-.In bracket 4, insert either --between-- or --among--.
-.In bracket 5, insert the claim number(s) of the linking claims.
-.See related form paragraphs 8.45, 8.46 and 8.47.
-Where the requirement for restriction in an application
-is predicated upon the nonallowability of generic
-or other type of linking claims, applicant is entitled to
-retain in the application claims to the nonelected
-invention or inventions.
-For traverse of a restriction requirement with linking
-claims, see MPEP § 818.03(d).
-For treatment of claims held to be drawn to nonelected
-inventions, see MPEP § 821 et seq.
-Action on the Merits [R-3]
-In general, in an application when only a nonfinal
-written requirement to restrict is made, no action
-on the merits is given. A 1-month (not less than 30
-days) shortened statutory period will be set for reply
-when a written restriction requirement is made without
-an action on the merits. This period may be
-extended under the provisions of 37 CFR 1.136(a).
-The Office action making the restriction requirement
-final ordinarily includes an action on the merits of the
-claims of the elected invention. See 37 CFR 1.143. In
-those applications wherein a requirement for restriction
-or election is made via telephone and applicant
-makes an oral election of a single invention, the written
-record of the restriction requirement will be
-accompanied by a complete action on the merits of
-the elected claims. See MPEP § 812.01. When preparing
-a final action in an application where applicant
-has traversed the restriction requirement, see MPEP §
-.01.
-Time for Making Requirement
-[R-3]
-CFR 1.142(a), second sentence, indicates
-that a restriction requirement “will normally be
-made before any action upon the merits; however, it
-may be made at any time before final action .” This
-means the examiner should make a proper requirement
-as early as
-possible
-in the prosecution, in the
-first action if possible, otherwise, as soon as the need
-for a proper requirement develops.
-Before making a restriction requirement after the
-first action on the merits, the examiner will consider
-whether there will be a serious burden if restriction is
-not required.
-.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).
-.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.
-.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.
-Who Should Make the Requirement
-[R-3]
-The requirement should be made by an examiner
-who would examine at least one of the inventions.
-An examiner should not require restriction in an
-application if none of the claimed inventions is
-classifiable in his or her Technology Center. Such an
-application should be transferred to a Technology
-Center wherein at least one of the claimed inventions
-would be examined.
-.01Telephone Restriction Practice[R-3]
-If an examiner determines that a requirement for
-restriction should be made in an application, the
-examiner should formulate a draft of such restriction
-requirement including an indication of those claims
-considered to be linking or generic.  Thereupon, the
-examiner should telephone the attorney or agent of
-record and request an oral election, with or without
-traverse , after the attorney or agent has had time to
-consider the restriction requirement. However, no
-telephone communication need be made where the
-requirement for restriction is complex, the application
-is being prosecuted by the applicant pro se, or the
-examiner knows from past experience that an election
-will not be made by telephone. The examiner should
-arrange for a second telephone call within a reasonable
-time, generally within 3 working days. If the
-attorney or agent objects to making an oral election,
-or fails to respond, a restriction letter will be
-mailed, and this letter should contain reference to the
-unsuccessful telephone call.  When an oral election
-is made, the examiner will then proceed to incorporate
-into the Office action a formal restriction requirement
-including the date of the election, the attorney’s or
-agent’s name, and a complete record of the telephone
-interview, followed by a complete action on the
-elected invention as claimed, including linking or
-generic claims if present.
-Form paragraphs 8.23 or 8.23.01 should be used to
-make a telephone election of record.
-¶ 8.23 Requirement, When Elected by Telephone
-During a telephone conversation with [1] on [2] a provisional
-election was made [3] traverse to prosecute the invention of [4],
-claim [5]. Affirmation of this election must be made by applicant
-in replying to this Office action. Claim [6] withdrawn from further
-consideration by the examiner, 37 CFR 1.142(b), as being drawn
-to a non-elected invention.
-Examiner Note:
-.In bracket 3, insert --with-- or --without--, whichever is
-applicable.
-.In bracket 4, insert either the elected group or species.
-.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:
-.In bracket 1, insert the name of the applicant or attorney or
-agent contacted.
-.In bracket 2, insert the date(s) of the telephone contact(s).
-.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.
-.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-
-and should include cancellation of the nonelected
-claims, a statement that the prosecution is closed, and
-that a notice of allowance will be sent in due course.
-Correction of formal matters in the above-noted situation
-which cannot be handled by a telephone call and
-thus requires action by the applicant should be handled
-under the Ex parte Quayle practice, using Office
-Action Summary form PTOL-326.
-Should the elected invention as claimed be
-found allowable in the first action, and an oral
-traverse was noted, the examiner should include in his
-or her action a statement under MPEP § 821.01, making
-the restriction requirement final and giving
-applicant 1 month to either cancel the  claims
-drawn to the nonelected invention or take other
-appropriate action. (37
-CFR 1.144). Failure to take
-action will be treated as an authorization to cancel the
-nonelected claims by an examiner’s amendment and
-pass the application to issue. Prosecution of the application
-is otherwise closed.
-In either situation (traverse or no traverse), caution
-should be exercised to determine if any of the
-allowable claims are linking or generic claims ,
-or if any nonelected inventions are eligible for rejoinder
-(see MPEP § 821.04), before canceling
-claims drawn to the nonelected invention.
-Where the respective inventions would be
-examined in different Technology Centers (TCs), the
-requirement for restriction should be made only after
-consultation with and approval by all TCs involved. If
-an oral election would cause the application to be
-examined in another TC, the initiating TC should
-transfer the application with a signed memorandum of
-the restriction requirement and a record of the interview.
-The receiving TC will incorporate the substance
-of this memorandum in its official letter as indicated
-above. Differences as to restriction should be settled
-by the existing chain of command, e.g., supervisory
-patent examiner or TC director.
-This practice is limited to use by examiners who
-have at least negotiation authority. Other examiners
-must have the prior approval of their supervisory
-patent examiner.
-Indicate Exactly How Application
-Is To Be Restricted [R-3]
-The examiner must provide a clear and detailed
-record of the restriction requirement to provide a clear
-demarcation between restricted inventions so that it
-can be determined whether inventions claimed in a
-continuing application are consonant with the restriction
-requirement and therefore subject to the prohibition
-against double patenting rejections under 35
-U.S.C. 121. Geneva Pharms. Inc. v. GlaxoSmithKline
-PLC, 349 F.3d 1373, 1381, 68 USPQ2d 1865, 1871
-(Fed. Cir. 2003). See also MPEP § 804.01.
-I. SPECIES
-The mode of indicating how to require restriction
-between species is set forth in MPEP § 809.02(a).
-The particular limitations in the claims and
-the reasons why such limitations are considered to
-support restriction of the claims to a particular
-disclosed species should be mentioned  to make the
-requirement clear.
-II. INVENTIONS OTHER THAN SPECIES
-It is necessary to read all of the claims  to determine
-what the claims cover. When doing this, the
-claims directed to each separate invention should
-be noted along with a statement of the invention
-to which they are drawn.
-In setting forth the restriction requirement, separate
-inventions should be identified by a grouping of
-the claims with a short description of the total extent
-of the invention claimed in each group, specifying the
-type or relationship of each group as by stating the
-group is drawn to a process, or to a subcombination,
-or to a product, etc., and should indicate the classification
-or separate status of each group, as for example,
-by class and subclass. See MPEP § 817 for additional
-guidance.
-While every claim should be accounted for, the
-omission to group a claim, or placing a claim in the
-wrong group will not affect the propriety of a final
-requirement where the requirement is otherwise
-proper and the correct disposition of the omitted or
-erroneously grouped claim is clear.
-III. LINKING CLAIMS
-The generic or other linking claims should not be
-associated with any one of the linked inventions since
-such claims must be examined with  the  elected
- invention. See MPEP § 809.
-Make Requirement Complete [R-3]
-When making a restriction requirement every
-effort should be made to have the requirement com
-plete. If some of the claimed inventions are classifiable
-in another art unit and the examiner has any
-doubt as to the proper line among the same, the application
-should be referred to the examiner of the other
-art unit for information on that point and such examiner
-should render the necessary assistance.
-Outline of Letter for Restriction
-Requirement [R-5]
-The following outline should be used to set forth a
-requirement to restrict.
-OUTLINE OF RESTRICTION REQUIRE-
-MENT
-(A)Statement of the requirement to restrict and
-that it is being made under 35 U.S.C. 121
-(1)Identify each group by Roman numeral.
-(2)List claims in each group. Check accuracy
-of numbering of the claims; look for same claims in
-two groups; and look for omitted claims.
-(3)Give short description of total extent of the
-subject matter claimed in each group, pointing out
-critical claims of different scope and identifying
-whether the claims are directed to a combination, subcombination,
-process, apparatus, or product.
-(4)Classify each group.
-Form paragraphs 8.08-8.11 should be used to group
-inventions.
-¶ 8.08 Restriction, Two Groupings
-Restriction to one of the following inventions is required under
-U.S.C. 121:
-I.Claim [1], drawn to [2], classified in class [3], subclass
-[4].
-II.Claim [5], drawn to [6], classified in class [7], subclass [8].
-¶ 8.09 Restriction, 3rd Grouping
-III.Claim [1], drawn to [2], classified in class [3], subclass
-[4].
-¶ 8.10 Restriction, 4th Grouping
-IV.Claim [1], drawn to [2], classified in class [3], subclass
-[4].
-¶ 8.11 Restriction, Additional Groupings
-[1].Claim[2], drawn to [3], classified in class [4], subclass [5].
-Examiner Note:
-In bracket 1, insert the appropriate roman numeral, e.g., --V--, -
--VI--, etc.
-If restriction is required between species, form
-paragraph 8.01 or 8.02 should be used to set forth the
-patentably distinct species and reasons for holding the
-species are independent or distinct. See MPEP
-§
-.02(a).
-(B)Take into account claims not grouped, indicating
-their disposition.
-(1)Linking claims
-(i)Identify
-(ii)Statement of groups to which linking
-claims may be assigned for examination
-(2)Other ungrouped claims
-(3)Indicate disposition, e.g., improperly
-dependent, canceled, etc.
-(C)Allegation of independence or distinctness
-(1)Point out facts which show independence
-or distinctness
-(2)Treat the inventions as claimed, don’t
-merely state the conclusion that inventions in fact are
-independent or distinct, e.g.,
-(i)Subcombination - Subcombination disclosed
-as usable together
-Each usable alone or in other identified combination
-Demonstrate by examiner’s suggestion
-(ii)Combination - Subcombination
-Combination as claimed does not require
-subcombination
-AND
-Subcombination usable alone or in other
-combination
-Demonstrate by examiner’s suggestion
-(iii)Process - Apparatus
-Process can be carried out by hand or by
-other apparatus
-Demonstrate by examiner’s suggestion
-OR
-Demonstrate apparatus can be used in other
-process (rare).
-(iv)Process of making and/or Apparatus for
-making — Product made
-Claimed product can be made by other process
-(or apparatus)
-Demonstrate by examiner’s suggestion
-OR
-Demonstrate process of making (or apparatus
-for making) can produce other product (rare)
-(D)Provide reasons for insisting upon restriction
-(1)Separate status in the art
-(2)Different classification
-(3)Same classification but recognition of
-divergent subject matter
-(4)Divergent fields of search, or
-(5)Search required for one group not required
-for the other
-(E)Summary statement
-(1)Summarize (i) independence or distinctness
-and (ii) reasons for insisting upon restriction
-(2)Include paragraph advising as to reply
-required
-(3)Indicate effect of allowance of linking
-claims, if any present
-(4)Indicate effect of cancellation of evidence
-claims (see MPEP § 806.05(c))
-(5)Indicate effect of allowance of product
-claims if restriction was required between a product
-and a process of making and/or using the product.
-Form paragraphs 8.14-8.20.02 may be used as
-appropriate to set forth the reasons for the holding of
-independence or distinctness. Form paragraph 8.13may be used as a heading.
-¶ 8.13 Distinctness (Heading)
-The inventions are independent or distinct, each from the other
-because:
-Examiner Note:
-This form paragraph should be followed by one of form paragraphs
-.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
-.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
-.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
-.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.
-Election 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.
-.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.
-.02Election Other Than Express
-Election may be made in other ways than expressly
-in reply to a requirement as set forth in MPEP
-§
-.02(a) and § 818.02(c).
-.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.
-.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).
-.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.
-.03Express Election and Traverse[R-3]
-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.
-CFR 1.142, 37 CFR 1.143.
-.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
-CFR § 1.111. Thus the required provisional election
-(see MPEP § 818.03(b)) becomes an election
-without traverse.
-.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
-.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.
-.03(c)Must Traverse To Preserve
-Right of Petition [R-3]
-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)).
-.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).
-Office 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
-, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir.
-)(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.
-Treatment 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
-§
-.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 §
-.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.
-.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
-.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:
-.In bracket 1, insert the invention elected.
-.In bracket 3, insert in summary form, the ground(s) on which
-traversal is based.
-.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.
-.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
-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
-.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--.
-.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.
-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.
-.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
-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-
-(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
-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.
-.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,
-, 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
-.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:
-.Where the elected invention is directed to a product and previously
-nonelected process claims are rejoined, form paragraph
-.43 should be used instead of this paragraph.
-.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.
-.In bracket 2, insert the number(s) of the rejoined claim(s) followed
-by either -- is-- or -- are--.
-. In bracket 3 insert-- requires-- or -- require--.
-.In bracket 4, insert either --between-- or --among--.
-.In bracket 5, insert the group(s), species, or subject matter of
-the invention(s) being rejoined.
-.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
-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:
-. 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 §
-.04(a).
-.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.
-.In bracket 2, insert -- between-- or --among-- followed by
-identification of the inventions (i.e., groups or species) restricted.
-.In bracket 5, insert the subject matter of the claimed invention
-or species not being rejoined followed by -- remains-- or --
-remain--.
-.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
-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:
-. 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 §
-.04(a).
-.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.
-.In bracket 2, insert -- between-- or --among-- followed by
-identification of the inventions (i.e., groups or species) restricted.
-.In bracket 5, insert the subject matter of the claimed invention
-or species being rejoined followed by either -- is-- or -- are--.
-. In bracket 7, insert the subject matter of the claimed invention
-or species not being rejoined followed by -- remains-- or --
-remain--.
-.In bracket 8, insert --it does not-- or --they do not all--.
-.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,
-.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
-.312; amendments submitted after final rejection are
-governed by 37 CFR 1.116.
-Form paragraph 8.46 (or form paragraph 8.47 or
-.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:
-.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 §
-.04(a).
-.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.
-.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.
-. In bracket 2, insert either --between-- or --among--.
-. In bracket 3, insert the group(s), species, or subject matter of
-the invention(s) that were restricted.
-. 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.
-. 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
-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:
-.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.
-.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.
-.This form paragraph should be used only when there are no
-outstanding issues remaining and is to be used with only a PTO-
-C cover sheet.
-.In bracket 2, insert either --between-- or --among--.
-.In bracket 3, insert the group(s), species, or subject matter of
-the invention(s) that were restricted.
-.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.
-.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:
-.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.
-.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.
-.This form paragraph should be used only when there are no
-outstanding issues remaining and is to be used with only a PTO-
-C cover sheet.
-.In bracket 2, insert either --between-- or --among--.
-.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.
-.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
-§
-.05(h). The claims to the nonelected invention
-will be withdrawn from further consideration under
-CFR 1.142. See MPEP §
-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
-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,
-, 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
-§
-.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
-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:
-.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).
-.In bracket 1, insert the claim number(s) of the allowable
-product claims followed by either -- is-- or -- are--.
-.In bracket 2, insert the claim number(s) of ALL the rejoined
-process claims.
-.In bracket 3, insert either --is-- or --are--.
-.In bracket 4, insert the number(s) of the claims NOT being
-rejoined followed by either -- is-- or -- are--.
-.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--.
-.In bracket 6, insert --has-- or --have--.
-.In bracket 7, insert either -- among -- or -- between--.
-.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:
-.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).
-.In bracket 1, insert the claim number(s) of the allowable
-product claim(s) followed by either -- is-- or -- are--.
-.In bracket 2, insert the claim number(s) of the process
-claim(s) previously withdrawn from consideration.
-.In bracket 3, insert either --is-- or --are--.
-.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 §
-.07(a).
-Claims to Inventions That Are Not
-Distinct in Plural Applications of
-Same Inventive Entity [R-3]
-The treatment of plural applications of the same
-inventive entity, none of which has become a patent,
-is treated in 37 CFR 1.78(b) as follows:
-(b) Where two or more applications filed by the same
-applicant contain conflicting claims, elimination of such
-claims from all but one application may be required in the
-absence of good and sufficient reason for their retention
-during pendency in more than one application.
-See MPEP § 804.03 for conflicting subject matter,
-different inventors, common ownership.
-See MPEP § 706.03(k) for rejection of one claim
-on another in the same application.
-See MPEP § 706.03(w) and § 706.07(b) for res
-judicata.
-See MPEP § 709.01 for one application in interference.
-See MPEP § 806.04(h) to § 806.04(i) for species
-and genus in separate applications.
-Wherever appropriate, such conflicting applications
-should be joined. This is particularly true
-where the two or more applications are due to, and
-consonant with, a requirement to restrict which the
-examiner now considers to be improper.
-Form paragraph 8.29 should be used when the conflicting
-claims are identical or conceded by applicant
-to be not patentably distinct.
-¶ 8.29 Conflicting Claims, Copending Applications
-Claim [1] of this application conflict with claim [2] of Application
-No. [3]. 37 CFR 1.78(b) provides that when two or more
-applications filed by the same applicant contain conflicting
-claims, elimination of such claims from all but one application
-may be required in the absence of good and sufficient reason for
-their retention during pendency in more than one application.
-Applicant is required to either cancel the conflicting claims from
-all but one application or maintain a clear line of demarcation
-between the applications. See MPEP § 822.
-Examiner Note:
-This form paragraph is appropriate only when the conflicting
-claims are not patentably distinct.
-.01Copending Before the Examiner
-[R-3]
-CFR 1.78. Claiming benefit of earlier filing date and
-cross-references to other applications.
-(b)Where two or more applications filed by the same applicant
-contain conflicting claims, elimination of such claims from
-all but one application may be required in the absence of good and
-sufficient reason for their retention during pendency in more than
-one application.
+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.
+==823 Unity of Invention Under the Patent Cooperation Treaty==
+See Chapter 1800, in particular MPEP § 1850,
+§ 1875, and § 1893.03(d), for a detailed discussion
+of unity of invention under the Patent Cooperation
+Treaty (PCT).
+{{MPEP Chapter|700|900}}
-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
-§
-, subsection I.B. when the “provisional” double
-patenting rejection is the only rejection remaining in
-at least one application.
-Unity of Invention Under the
-Patent Cooperation Treaty [R-3]
-See Chapter 1800, in particular MPEP § 1850,
-§
-, and § 1893.03(d), for a detailed discussion
-of unity of invention under the Patent Cooperation
-Treaty (PCT).

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MPEP 800: Difference between revisions

Latest revision as of 22:51, May 31, 2020

801 Introduction[edit | edit source]

802 Basis for Practice in Statute and Rules[edit | edit source]

802.01 Meaning of "Independent" and "Distinct"[edit | edit source]

802.02 Definition of Restriction[edit | edit source]

803 Restriction — When Proper[edit | edit source]

803.01 Review by Examiner with at Least Partial Signatory Authority[edit | edit source]

803.02 Markush Claims[edit | edit source]

803.03 Transitional Applications[edit | edit source]

803.03(a) Transitional Application — Linking Claim Allowable[edit | edit source]

803.03(b)Transitional Application — Generic Claim Allowable[edit | edit source]

803.04 Nucleotide Sequences[edit | edit source]

804 Definition of Double Patenting[edit | edit source]

I. INSTANCES WHERE DOUBLE PATENTING ISSUE CAN BE RAISED[edit | edit source]

II. REQUIREMENTS OF A DOUBLE PATENTING REJECTION (INCLUDING PROVISIONAL REJECTIONS)[edit | edit source]

804.01 Prohibition of Double PatentingRejections Under 35 U.S.C. 121[edit | edit source]

804.02 Avoiding a Double Patenting Rejection[edit | edit source]

804.03 Commonly Owned Inventions of Different Inventive Entities; Non-Commonly Owned Inventions Subject to a Joint Research Agreement[edit | edit source]

804.04 Submission to Technology Center Director[edit | edit source]

805 Effect of Improper Joinder in Patent[edit | edit source]

806 Determination of Distinctness or Independence of Claimed Inventions[edit | edit source]

806.01 Compare Claimed Subject Matter[edit | edit source]

806.03 Single Embodiment, Claims Defining Same Essential Features[edit | edit source]

806.04 Genus and/or Species Inventions[edit | edit source]

806.04(b) Species May Be Independent or Related Inventions[edit | edit source]

806.04(d) Definition of a Generic Claim[edit | edit source]

806.04(e) Claims Limited to Species[edit | edit source]

806.04(f) Restriction Between Mutually Exclusive Species[edit | edit source]

806.04(h) Species Must Be Patentably Distinct From Each Other[edit | edit source]

806.04(i) Generic Claims Presented After Issue of Species[edit | edit source]

806.05 Related Inventions[edit | edit source]

806.05(a)Combination and Subcombination[edit | edit source]

806.05(d) Subcombinations Usable Together[edit | edit source]

806.05(e) Process and Apparatus for Its Practice[edit | edit source]

806.05(f) Process of Making and ProductMade[edit | edit source]

806.05(g) Apparatus and Product Made[edit | edit source]

806.05(h) Product and Process of Using[edit | edit source]

806.05(i) Product, Process of Making, and Process of Using[edit | edit source]

806.05(j) Related Products; Related Processes[edit | edit source]

806.06 Independent Inventions[edit | edit source]

807 Patentability Report Practice Has No Effect on Restriction Practice[edit | edit source]

808 Reasons for Insisting Upon Restriction[edit | edit source]

808.01 Reasons for Holding of Independence or Distinctness[edit | edit source]

808.01(a) Species[edit | edit source]

808.02 Establishing Burden[edit | edit source]

809 Linking Claims[edit | edit source]

809.02(a) Election of Species Required[edit | edit source]

809.03 Restriction Between Linked Inventions[edit | edit source]

810 Action on the Merits[edit | edit source]

811 Time for Making Requirement[edit | edit source]

811.02 New Requirement After Compliance With Preceding Requirement[edit | edit source]

811.03 Repeating After Withdrawal Proper[edit | edit source]

811.04 Proper Even Though Grouped Together in Parent Application[edit | edit source]

812 Who Should Make the Requirement[edit | edit source]

812.01 Telephone Restriction Practice[edit | edit source]

814 Indicate Exactly How Application Is To Be Restricted[edit | edit source]

815 Make Requirement Complete[edit | edit source]

817 Outline of Letter for Restriction Requirement[edit | edit source]

818 Election and Reply[edit | edit source]

818.01 Election Fixed by Action on Claims[edit | edit source]

818.02 Election Other Than Express[edit | edit source]

818.02(a) By Originally Presented Claims[edit | edit source]

818.02(b) Generic Claims Only — No Election of Species[edit | edit source]

818.02(c) By Optional Cancellation of Claims[edit | edit source]

818.03 Express Election and Traverse[edit | edit source]

818.03(a) Reply Must Be Complete[edit | edit source]

818.03(b) Must Elect, Even When Requirement Is Traversed[edit | edit source]

818.03(c) Must Traverse To Preserve Right of Petition[edit | edit source]

818.03(d) Traverse of Restriction Requirement With Linking Claims[edit | edit source]

819 Office Generally Does Not Permit Shift[edit | edit source]

821 Treatment of Claims Held To Be Drawn to Nonelected Inventions[edit | edit source]

821.01 After Election With Traverse[edit | edit source]

821.02 After Election Without Traverse[edit | edit source]

821.03 Claims for Different Invention Added After an Office Action[edit | edit source]

821.04 Rejoinder[edit | edit source]

821.04(a) Rejoinder Between Product Inventions; Rejoinder Between Process Inventions[edit | edit source]

821.04(b) Rejoinder of Process Requiring an Allowable Product[edit | edit source]