USPTO Restriction Training Materials and Chapter 800 Revisions

USPTO Restriction Training USPTO Restriction Training Materials Materials

and Chapter 800 Revisionsand Chapter 800 Revisions

USPTO Restriction Training Materials and USPTO Restriction Training Materials and Chapter 800 RevisionsChapter 800 Revisions

Part I - What is this thing we call Part I - What is this thing we call restriction?restriction?

Kathleen KerrKathleen Kerr

SPE Art Unit 1656SPE Art Unit 1656

INVENTIONA

INVENTION A

DOUBLE PATENTING: STATUTORY TYPE

35 USC 101 NON-STATUTORY

Obviousness-type Double Patenting

PATENTFOR

INVENTIONA

PLURALDISTINCTINVENTIONS

RESTRICTION

35 U.S.C. 121

35 U.S.C. 101:WHOEVER INVENTS

…MAY RECEIVEA PATENT

PATENT APPLICATION

PATENTAPPLICATION

PATENTAPPLICATION

ONEPATENT

FORONE

INVENTION

What is RESTRICTION ?

Restriction is the practice of requiring an applicant to elect a single invention for examination when an application discloses and claims plural inventions.

MPEP 802.02

35 U.S.C. 10135 U.S.C. 101

““Whoever invents or discovers any Whoever invents or discovers any new and useful new and useful process,process, machinemachine, , manufacturemanufacture, , composition of composition of mattermatter, or any new and useful , or any new and useful improvement thereof, may obtain improvement thereof, may obtain aa patent therefor,…” patent therefor,…”

35 U.S.C. 12135 U.S.C. 121

““If two or more If two or more independent and independent and distinctdistinct inventions are claimed in inventions are claimed in one application, the Director one application, the Director maymay require the application to be require the application to be restricted to one of the restricted to one of the inventions….”inventions….”

Interpretation of 35 U.S.C. Interpretation of 35 U.S.C. 121121

Restriction is Restriction is discretionarydiscretionary, not , not mandatory.mandatory.

Historically the phrase “two or more Historically the phrase “two or more independent and distinct inventions” has independent and distinct inventions” has been interpreted to mean been interpreted to mean two or more two or more independent independent oror distinct inventions distinct inventions..

MPEP 802.01MPEP 802.01

Correlation Between Correlation Between Independent Inventions and Independent Inventions and

Distinct InventionsDistinct InventionsIndependent InventionsIndependent Inventions

Unrelated in design, operation, and effect in design, operation, and effectThe natural consequence of the lack of any relationship The natural consequence of the lack of any relationship

is that each invention is patentable over the other.is that each invention is patentable over the other.

Distinct InventionsDistinct InventionsRelated in at least one of design, operation, or of design, operation, or

effect, and effect, and Not connected in at least one of design, of design,

operation, or effect, andoperation, or effect, and

At least At least one invention is patentable over the other

Is Restriction Appropriate?Is Restriction Appropriate?

Is the application filed under 35 U.S.C. Is the application filed under 35 U.S.C. 111(a)?111(a)?Restriction practice may be used when plural Restriction practice may be used when plural

independent or distinct inventions are claimed in independent or distinct inventions are claimed in an application filed under 35 U.S.C. 111(a). an application filed under 35 U.S.C. 111(a). MPEP MPEP 801801

The claims of an application must be compared to The claims of an application must be compared to determine if they describe plural independent or determine if they describe plural independent or distinct inventions. distinct inventions. MPEP 806.01MPEP 806.01

Plural inventions in an application filed under 35 Plural inventions in an application filed under 35 U.S.C. 371 are considered under PCT unity of U.S.C. 371 are considered under PCT unity of invention standards. invention standards. See MPEP Chapter 1800 for See MPEP Chapter 1800 for details.details.

When is Restriction Not an When is Restriction Not an Option?Option?

If the search and examination of all the claims in If the search and examination of all the claims in an application can be made an application can be made without serious without serious burdenburden, the examiner must examine all of , the examiner must examine all of the claims on the merits, even if the claims the claims on the merits, even if the claims are drawn to independent or distinct are drawn to independent or distinct inventions. inventions.

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

MPEP 803MPEP 803

If an application does not specifically claim, or If an application does not specifically claim, or encompass within a generic claim, two or encompass within a generic claim, two or more independent or distinct inventions, more independent or distinct inventions, restriction cannot be required.restriction cannot be required.

If the inventions are related as disclosed but If the inventions are related as disclosed but are are not distinct as claimednot distinct as claimed, restriction is , restriction is never proper. MPEP 806never proper. MPEP 806

Do not restrict if the claims define the same Do not restrict if the claims define the same essential characteristics of a single disclosed essential characteristics of a single disclosed embodiment of an invention. MPEP 806.03embodiment of an invention. MPEP 806.03

When is Restriction Not When is Restriction Not Appropriate?Appropriate?

Single Disclosed EmbodimentSingle Disclosed Embodiment Claims define the same essential characteristics Claims define the same essential characteristics of a single disclosed embodiment whenof a single disclosed embodiment when

the claims provide different definitions of the same the claims provide different definitions of the same disclosed invention and/ordisclosed invention and/or

the claims vary only in breadth or scope of the the claims vary only in breadth or scope of the invention. invention. See MPEP 806.03.See MPEP 806.03.

Claims that merely further define elements of a Claims that merely further define elements of a single disclosed embodiment should not be single disclosed embodiment should not be restricted from each other becauserestricted from each other because

the claims would overlap in scope and be infringed the claims would overlap in scope and be infringed upon by the single disclosed embodiment and/orupon by the single disclosed embodiment and/or

the claims define products (or processes) that are the claims define products (or processes) that are related in design, operation, and effect.related in design, operation, and effect.

Example of Claims Defining a Example of Claims Defining a Single Disclosed Embodiment of Single Disclosed Embodiment of

an Inventionan Invention Specification discloses a pair of chopsticks Specification discloses a pair of chopsticks wherein the preferred embodiment is a pair of 8 wherein the preferred embodiment is a pair of 8 inch long inch long bamboo chopsticks, with wider square bamboo chopsticks, with wider square handles tapering down to narrow tips.handles tapering down to narrow tips.

Claim 1.Claim 1. A pair of bamboo chopsticks with A pair of bamboo chopsticks with square handles.square handles.

Claim 2. A pair of chopsticks which are tapered Claim 2. A pair of chopsticks which are tapered from one end to the other.from one end to the other.

Claim 3. A pair of 8 inch long bamboo Claim 3. A pair of 8 inch long bamboo chopsticks.chopsticks.

Basic Restriction GuidelinesBasic Restriction Guidelines

Every restriction requirement has two Every restriction requirement has two criteria:criteria:

The inventions, as claimed, must be The inventions, as claimed, must be independent or distinct independent or distinct and and

There would be serious burden on the There would be serious burden on the examiner if restriction were not required.examiner if restriction were not required.

MPEP 803.02MPEP 803.02

Showing Serious Burden Showing Serious Burden

The examiner must provide reasons to support The examiner must provide reasons to support the conclusion that a serious burden would the conclusion that a serious burden would exist if restriction were not required.exist if restriction were not required.

A serious burden may be A serious burden may be prima facieprima facie shown if shown if the examiner explains why the inventions the examiner explains why the inventions have have separate classificationseparate classification or or separate status separate status in the artin the art or a or a different field of searchdifferent field of search as as defined in MPEP 808.02. defined in MPEP 808.02.

The The prima facieprima facie showing may be rebutted by the showing may be rebutted by the applicant.applicant.

MPEP 803MPEP 803

Showing Serious Burden Showing Serious Burden (cont.)(cont.)

Serious burden may be established based Serious burden may be established based on a different field of search if it is on a different field of search if it is necessary to search for one of the necessary to search for one of the inventions in a manner not likely to inventions in a manner not likely to result in finding art pertinent to the result in finding art pertinent to the other invention(s), e.g.,other invention(s), e.g., - searching different classes/subclasses - searching different classes/subclasses

- searching different electronic resources - searching different electronic resources

- employing different search queries- employing different search queriesA serious burden may be shown when the A serious burden may be shown when the

inventions are classified together if the examiner inventions are classified together if the examiner can explain how the searches differ.can explain how the searches differ.


Part II - Defining an InventionPart II - Defining an Invention

Michael HartleyMichael Hartley

SPE Art Unit 1618SPE Art Unit 1618

Independent InventionsIndependent Inventions

Independent inventions have Independent inventions have no disclosed no disclosed relationship, relationship, i.e., they are unrelated.i.e., they are unrelated.

In other words, the inventions as disclosed In other words, the inventions as disclosed are are not connectednot connected in any of: in any of:

a. DESIGNa. DESIGNb. OPERATION b. OPERATION andandc. EFFECT c. EFFECT

MPEP 802.01(subsection I), 806.06, FP 8.20.02MPEP 802.01(subsection I), 806.06, FP 8.20.02

IndependentIndependent

Related InventionsRelated Inventions

Related inventions have a disclosed Related inventions have a disclosed relationship, i.e., relationship, i.e.,

are are connected in at least one ofconnected in at least one of::a. DESIGN (structure or method of manufacturing)a. DESIGN (structure or method of manufacturing)

b. OPERATION (function or method of use) b. OPERATION (function or method of use) oror

c. EFFECTc. EFFECT

MPEP 802.01(subsection II)MPEP 802.01(subsection II)

Related but Distinct Related but Distinct InventionsInventions

Related inventions are Related inventions are distinctdistinct if the claimed if the claimed inventions are inventions are not connected in at least one not connected in at least one ofof:: a. DESIGN a. DESIGN

b. OPERATION b. OPERATION ororc. EFFECTc. EFFECT

ANDAND at least one invention is patentable over at least one invention is patentable over the other. the other. (Note: one or both inventions may be (Note: one or both inventions may be unpatentable over the prior art.) unpatentable over the prior art.)

MPEP 802.01(subsection II), 806.05(a, c, d, e, f, g, h, i, j)MPEP 802.01(subsection II), 806.05(a, c, d, e, f, g, h, i, j)

Related - but are they Related - but are they distinct?distinct?

Establishing Distinctness Between Establishing Distinctness Between Related Product and Process Related Product and Process

InventionsInventions

Process of using an apparatus & Process of using an apparatus & apparatus for its practice – See apparatus for its practice – See MPEP MPEP 806.05(e)806.05(e)

Process of making a product & product Process of making a product & product made by the process – See made by the process – See MPEP MPEP 806.05(f)806.05(f)

Product & process of using the product – Product & process of using the product – See See MPEP 806.05(h)MPEP 806.05(h)

Establishing Distinctness Between Related Establishing Distinctness Between Related Inventions in the Same Statutory Category Inventions in the Same Statutory Category

(e.g., “Products” or “Processes”) (e.g., “Products” or “Processes”) Combination – Subcombination – See MPEP Combination – Subcombination – See MPEP

806.05(c)806.05(c)

Subcombinations Usable Together – See Subcombinations Usable Together – See MPEP 806.05(d)MPEP 806.05(d)

Apparatus for making a product & product Apparatus for making a product & product made by the apparatus – See MPEP made by the apparatus – See MPEP 806.05(g)806.05(g)

Related products or related processes Related products or related processes (including intermediate/final product) – See (including intermediate/final product) – See MPEP 806.05(j)MPEP 806.05(j)

Concepts Relevant to Concepts Relevant to Determining DistinctnessDetermining Distinctness

Mutually Exclusive/Do Not Overlap in Mutually Exclusive/Do Not Overlap in ScopeScope

Materially DifferentMaterially Different

Not Obvious VariantsNot Obvious Variants

Mutually Exclusive/Do Not Mutually Exclusive/Do Not Overlap in ScopeOverlap in Scope

Claims to two products (or two processes) are Claims to two products (or two processes) are mutually exclusive, i.e., do not overlap in scope, mutually exclusive, i.e., do not overlap in scope, if one claim recites limitations disclosed for a if one claim recites limitations disclosed for a first product (or process) but not a second, while first product (or process) but not a second, while a second claim recites limitations disclosed for a a second claim recites limitations disclosed for a second product (or process) but not the first.second product (or process) but not the first.

In other words, claims to two products (or two In other words, claims to two products (or two processes) do not overlap in scope if the first processes) do not overlap in scope if the first product (or process) would not infringe the product (or process) would not infringe the second product (or process), and the second second product (or process), and the second product (or process) would not infringe the first.product (or process) would not infringe the first.

Materially DifferentMaterially DifferentEstablishing distinction often requires showingEstablishing distinction often requires showing

- the claimed product can be used in, or made by, a - the claimed product can be used in, or made by, a materially different process than that claimed, or materially different process than that claimed, or

- the claimed process can result in, or be performed with, a - the claimed process can result in, or be performed with, a materially different product than that claimed. materially different product than that claimed.

Two products or two processes are “materially different” when Two products or two processes are “materially different” when they are independent or distinct from one another.they are independent or distinct from one another.

Burden on the examiner to provide a reasonable Burden on the examiner to provide a reasonable example of a materially different product/processexample of a materially different product/process- Example need not be documented- Example need not be documented- If applicant convincingly traverses the restriction - If applicant convincingly traverses the restriction

requirement, a viable alternative process or product is requirement, a viable alternative process or product is needed to maintain the restriction.needed to maintain the restriction.

Not Obvious VariantsNot Obvious VariantsDistinctness between related inventions requires Distinctness between related inventions requires

that at least one invention would not have been that at least one invention would not have been obvious over the other (i.e., that the inventions obvious over the other (i.e., that the inventions are not obvious variants).are not obvious variants).

Criterion can be met by stating, where appropriate, Criterion can be met by stating, where appropriate, that there is no indication on the record that the that there is no indication on the record that the inventions would have been obvious over each inventions would have been obvious over each other within the meaning of 35 U.S.C. 103.other within the meaning of 35 U.S.C. 103.

Notify applicant via FP 8.22 that if applicant Notify applicant via FP 8.22 that if applicant traverses the restriction requirement on the traverses the restriction requirement on the grounds that the inventions are not patentably grounds that the inventions are not patentably distinct and one invention is unpatentable over distinct and one invention is unpatentable over the prior art, such traversal may be used in a the prior art, such traversal may be used in a rejection of the other invention under 35 U.S.C. rejection of the other invention under 35 U.S.C. 103(a). 103(a).

Distinctness Between Related Distinctness Between Related ProductsProducts

or Between Related Processes or Between Related ProcessesFollow this analysis when related Follow this analysis when related

products or related processes are products or related processes are NOT related as either NOT related as either

Combination/subcombination Combination/subcombination

Subcombinations usable togetherSubcombinations usable together

Apparatus and product madeApparatus and product made

Intermediate-final product. Intermediate-final product.

Distinctness Between Related Distinctness Between Related Products or Between Related Products or Between Related

Processes Processes (cont’d)(cont’d)Test:Test:

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

ANDAND

the inventions as claimed are not obvious the inventions as claimed are not obvious variants; variants;

ANDAND

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

MPEP 806.05(j); FP 8.14.01MPEP 806.05(j); FP 8.14.01


Part III - Writing a RestrictionPart III - Writing a Restriction

Peter ParasPeter Paras

SPE Art Units 1635 and 1639SPE Art Units 1635 and 1639

Basic Restriction Basic Restriction GuidelinesGuidelinesEvery restriction requirement has two Every restriction requirement has two

criteria:criteria:

The inventions, as claimed, must be independent The inventions, as claimed, must be independent or distinct or distinct and and

There would be serious burden on the examiner if There would be serious burden on the examiner if restriction were not required.restriction were not required.

MPEP 803.02MPEP 803.02

Statement of Requirement Statement of Requirement

for Restrictionfor RestrictionSet forth the groups of inventions from which the Set forth the groups of inventions from which the applicant is required to elect applicant is required to elect

Set forth the reasons for insisting upon restrictionSet forth the reasons for insisting upon restrictionindependence/distinctness ANDindependence/distinctness ANDburden.burden.

Advise applicants about the reply to the Advise applicants about the reply to the requirement and means for traversal. requirement and means for traversal. FP 8.22 should be included in all restriction requirementsFP 8.22 should be included in all restriction requirementsFP 8.21.04 should be included in any requirement for FP 8.21.04 should be included in any requirement for

restriction between a product and a process of making restriction between a product and a process of making or process of using the product. or process of using the product.

Defining Groups of InventionsDefining Groups of Inventions

Review the specification (including claims) to Review the specification (including claims) to identify the invention(s) disclosed therein. identify the invention(s) disclosed therein.

Sort the claims into groups; each group is Sort the claims into groups; each group is directed to a single invention.directed to a single invention.A single claim should ordinarily be placed in only A single claim should ordinarily be placed in only

one group.one group.- An exception may be possible where the claim recites - An exception may be possible where the claim recites

inventions listed in the alternative.inventions listed in the alternative.Claims that appear to belong to more than one Claims that appear to belong to more than one

group should be ordinarily be considered group should be ordinarily be considered either generic claims or linking claims and either generic claims or linking claims and treated in accordance with FP 8.01, 8.02, or treated in accordance with FP 8.01, 8.02, or 8.12 as appropriate.8.12 as appropriate.

Each claim must be accounted for, either in a Each claim must be accounted for, either in a group, or as a generic or linking claim.group, or as a generic or linking claim.

Practice Tips – Defining Groups Practice Tips – Defining Groups

The same invention cannot be placed in two The same invention cannot be placed in two groups.groups.

Dependent claims cannot be grouped Dependent claims cannot be grouped separate from the group that contains separate from the group that contains their independent or intervening claims.their independent or intervening claims.

Claims that refer to, but are not dependent Claims that refer to, but are not dependent on, other claims may be placed in a on, other claims may be placed in a separate group from the referenced separate group from the referenced claims.claims.

Review the active steps, not just the Review the active steps, not just the preamble, when grouping method claims.preamble, when grouping method claims.

Product by process claims are a type of Product by process claims are a type of “product” claim that should usually be “product” claim that should usually be grouped with the product, not the grouped with the product, not the process.process.

Reasons for Insisting Upon Reasons for Insisting Upon RestrictionRestriction

Independence/distinctnessIndependence/distinctnessProvide a clear and detailed record of the Provide a clear and detailed record of the

restriction requirement, explaining how restriction requirement, explaining how each invention is either independent or each invention is either independent or distinct from each other invention.distinct from each other invention.

Establish reasons why a serious burden Establish reasons why a serious burden on the examiner would exist if the on the examiner would exist if the restriction were not required. restriction were not required. Each restriction requirement must Each restriction requirement must

conclude with one of form paragraphs conclude with one of form paragraphs 8.21.01-8.21.03.8.21.01-8.21.03.

MPEP 814, 817, and 818MPEP 814, 817, and 818

Importance of a Clear Importance of a Clear RecordRecordA clear and detailed record of the restriction A clear and detailed record of the restriction requirement provides a clear demarcation requirement provides a clear demarcation between restricted inventions. between restricted inventions. - Applicants have adequate notice regarding the - Applicants have adequate notice regarding the

inventions to be elected from. inventions to be elected from. - If applicants seek relief from a restriction requirement - If applicants seek relief from a restriction requirement

by petition, a clear record simplifies the petition by petition, a clear record simplifies the petition decision process. decision process.

- An examiner/court can determine whether inventions - An examiner/court can determine whether inventions claimed in a continuing application are consonant with claimed in a continuing application are consonant with the restriction requirement and therefore subject to the restriction requirement and therefore subject to the prohibition against double patenting rejections the prohibition against double patenting rejections under 35 U.S.C. 121. under 35 U.S.C. 121.

Geneva Pharms. Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, Geneva Pharms. Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1381, 68 USPQ2d 1865, 1871 (Fed. Cir. 2003). 1381, 68 USPQ2d 1865, 1871 (Fed. Cir. 2003).

Request for Oral Election Request for Oral Election Examiners are encouraged to contact the attorney Examiners are encouraged to contact the attorney

or agent of record by telephone to present the or agent of record by telephone to present the restriction requirement and request an oral restriction requirement and request an oral election with or without traverse.election with or without traverse.If the restriction requirement is complex or the examiner If the restriction requirement is complex or the examiner

knows from past experience that a telephone knows from past experience that a telephone election will not be made, the examiner may proceed election will not be made, the examiner may proceed directly to a written restriction requirement.directly to a written restriction requirement.

When an oral election is made, the next Office When an oral election is made, the next Office action will include a written record of the action will include a written record of the restriction requirement and a complete action restriction requirement and a complete action on the merits of the elected invention. on the merits of the elected invention. MPEP MPEP 810 and 812.01810 and 812.01

Form paragraph 8.23 should be used.Form paragraph 8.23 should be used.

Request for Oral Election Request for Oral Election (cont’d)(cont’d)

When an attorney or agent of record When an attorney or agent of record objects to making an oral election, the objects to making an oral election, the next Office action will be a written next Office action will be a written restriction requirement; no action on the restriction requirement; no action on the merits is made.merits is made.Form paragraph 8.23.01 should be used.Form paragraph 8.23.01 should be used.

Written restriction requirements made Written restriction requirements made without an action on the merits are without an action on the merits are given a given a 1-month (not less than 30 1-month (not less than 30 days) shortened statutory period days) shortened statutory period for responsefor response. . MPEP 812.01MPEP 812.01

Timing of Restriction Timing of Restriction RequirementsRequirements

37 C.F.R. 1.142(a) 37 C.F.R. 1.142(a) Requirement for Requirement for restrictionrestriction states: states:

“…“…Such requirement will normally be Such requirement will normally be made made before any action on the before any action on the meritsmerits; however, it may be made at ; however, it may be made at any time before final action.”any time before final action.”

Before final rejection, a second Before final rejection, a second restriction requirement may be restriction requirement may be made even if there was a prior made even if there was a prior requirement with which applicant requirement with which applicant complied. complied. MPEP 811.02MPEP 811.02

Applicant’s ResponseApplicant’s ResponseApplicant Applicant must electmust elect in response to the in response to the

restriction even if the restriction is restriction even if the restriction is traversed. traversed. MPEP 818.03(b)MPEP 818.03(b)

If applicant does not If applicant does not distinctly and distinctly and specificallyspecifically point out supposed errors in point out supposed errors in the restriction, the election should be the restriction, the election should be treated as an election treated as an election without traversewithout traverse. . MPEP 818.03(a) and (c)MPEP 818.03(a) and (c)

If applicant’s response states that the If applicant’s response states that the different grouped inventions are not different grouped inventions are not patentably distinct, the restriction patentably distinct, the restriction requirement should be withdrawn.requirement should be withdrawn.

Applicant’s Response – Applicant’s Response – Election Election withwith Traverse Traverse

Applicant must distinctly and specifically point out Applicant must distinctly and specifically point out the supposed errors in the restriction the supposed errors in the restriction requirement.requirement.

Reconsider the restriction requirement.Reconsider the restriction requirement.If proper and the claims are not allowable, respond to If proper and the claims are not allowable, respond to

the points raised in the traversal, repeat the restriction the points raised in the traversal, repeat the restriction requirement and requirement and make the requirement finalmake the requirement final in the in the next Office action. See FP 8.25.next Office action. See FP 8.25.

- Although the requirement for restriction is being made final, if - Although the requirement for restriction is being made final, if the action is a the action is a non-finalnon-final action it may be signed by someone action it may be signed by someone with at least with at least temporary partialtemporary partial signatory authority. signatory authority. MPEP MPEP 803.01803.01

- Applicant has the right to petition a final restriction - Applicant has the right to petition a final restriction requirement.requirement.

If improper, clearly state on the record that the If improper, clearly state on the record that the requirement is withdrawn and examine all claims.requirement is withdrawn and examine all claims.

Applicant’s Response – Applicant’s Response – Election Election withwith Traverse Traverse (cont’d)(cont’d)

Reconsider the restriction requirement (cont’d).Reconsider the restriction requirement (cont’d).If proper when made, and the application is in If proper when made, and the application is in

condition for allowance except for the presence of condition for allowance except for the presence of claims to the non-elected invention, determine claims to the non-elected invention, determine whether rejoinder pursuant to MPEP 821.04 is whether rejoinder pursuant to MPEP 821.04 is appropriate.appropriate.

If so, rejoin nonelected invention, withdraw the restriction If so, rejoin nonelected invention, withdraw the restriction requirement, and examine the rejoined claims on the requirement, and examine the rejoined claims on the merits.merits.

If not, contact the applicant for permission to cancel the If not, contact the applicant for permission to cancel the claims. Use FP 8.03 to set a response period of one month claims. Use FP 8.03 to set a response period of one month or 30 days. If applicant does not respond within the time or 30 days. If applicant does not respond within the time period, cancel the claims to the non-elected invention by period, cancel the claims to the non-elected invention by Examiner’s Amendment.Examiner’s Amendment.

MPEP 821.01MPEP 821.01

Applicant’s Response – Applicant’s Response – Election Election withoutwithout Traverse Traverse

Applicant cannot petition the restriction requirement Applicant cannot petition the restriction requirement under 37 CFR 1.144.under 37 CFR 1.144.

If all claims to elected invention are allowable, claims If all claims to elected invention are allowable, claims to non-elected inventions (including non-elected to non-elected inventions (including non-elected species) may be cancelled by Examiner’s species) may be cancelled by Examiner’s Amendment unless all claims to the non-elected Amendment unless all claims to the non-elected inventions depend from or otherwise include all the inventions depend from or otherwise include all the limitations of an allowable claim (see MPEP 821.04 limitations of an allowable claim (see MPEP 821.04 for rejoinder).for rejoinder).

See MPEP 821.02 and FP 8.25.01 (without traverse) See MPEP 821.02 and FP 8.25.01 (without traverse) or 8.25.02 (without traverse based on incomplete or 8.25.02 (without traverse based on incomplete reply).reply).

Switching Inventions after Switching Inventions after ElectionElection

Applicant is generally not permitted to Applicant is generally not permitted to switch to claiming a different invention switch to claiming a different invention after a first action on the merits.after a first action on the merits.Cancellation of all claims drawn to an Cancellation of all claims drawn to an

elected invention and presentation of elected invention and presentation of claims drawn to a non-elected invention is claims drawn to a non-elected invention is non-responsive.non-responsive.

An RCE may not be used as a matter of right An RCE may not be used as a matter of right to switch to an invention which is to switch to an invention which is independent or distinct from the invention independent or distinct from the invention examined previously.examined previously.

MPEP 819 and 821.03MPEP 819 and 821.03

Limits on Constructive ElectionLimits on Constructive ElectionClaims added Claims added after an Office actionafter an Office action should be should be

withdrawn as non-elected by original presentation withdrawn as non-elected by original presentation ONLY IF those claims are drawn to an invention ONLY IF those claims are drawn to an invention that is independent or distinct from the invention that is independent or distinct from the invention examined on the merits. examined on the merits. Where applicant presents claims that could not have been Where applicant presents claims that could not have been

restricted from the claims drawn to other elected restricted from the claims drawn to other elected invention had they been presented earlier, the newly invention had they been presented earlier, the newly added claims (if entered) must be examined on the added claims (if entered) must be examined on the merits.merits.

It is improper to hold claims constructively It is improper to hold claims constructively nonelected where a provisional election of a single nonelected where a provisional election of a single species was made in accordance with MPEP § species was made in accordance with MPEP § 803.02 and applicant amends the claims such that 803.02 and applicant amends the claims such that the elected species is cancelled.the elected species is cancelled.


Part IV - Linking Claims, Double Part IV - Linking Claims, Double Patenting, and RejoinderPatenting, and Rejoinder

Deborah ReynoldsDeborah Reynolds

tQAS 1600tQAS 1600

37 C.F.R. 1.141(a)37 C.F.R. 1.141(a) ““Two or more independent and distinct Two or more independent and distinct

inventions may not be claimed in one national inventions may not be claimed in one national application, except that application, except that

more than one species of an invention, more than one species of an invention, not to exceed a reasonable number, not to exceed a reasonable number, may be specifically claimed in different may be specifically claimed in different

claims in one national application, claims in one national application, provided the application also includes an provided the application also includes an

allowable claim generic to all the claimed allowable claim generic to all the claimed species species and all the claims to species in and all the claims to species in excess of one are written in dependent form (§ excess of one are written in dependent form (§ 1.75) or otherwise include all the limitations of 1.75) or otherwise include all the limitations of the generic claim.”the generic claim.”

Linking ClaimsLinking ClaimsDefinition: A linking claim is a claim which, if Definition: A linking claim is a claim which, if

allowable, would prevent restriction between two allowable, would prevent restriction between two or more otherwise properly divisible (restrictable) or more otherwise properly divisible (restrictable) inventions. MPEP 809 and 809.03.inventions. MPEP 809 and 809.03.Linking claims and linked inventions are usually either a Linking claims and linked inventions are usually either a

product claim linking properly divisible product product claim linking properly divisible product inventions, or a process claim linking properly divisible inventions, or a process claim linking properly divisible process inventions. process inventions.

- Genus claims linking species claims- Genus claims linking species claims- Subcombination claim linking plural combinations that - Subcombination claim linking plural combinations that

require the subcombination.require the subcombination.

If a linked invention is elected, the linking claims are If a linked invention is elected, the linking claims are examined with the elected invention.examined with the elected invention.

Allowable Linking ClaimsAllowable Linking ClaimsWhen a linking claim is allowable, a When a linking claim is allowable, a

restriction requirement between the restriction requirement between the inventions it links cannot be maintained.inventions it links cannot be maintained.The record The record must clearly statemust clearly state that the restriction that the restriction

requirement has been withdrawn, even if claims requirement has been withdrawn, even if claims to non-elected linked inventions have been to non-elected linked inventions have been canceled.canceled.

Any claim(s) depending from or otherwise Any claim(s) depending from or otherwise requiring all the limitations of the allowable requiring all the limitations of the allowable linking claim(s) will be rejoined and fully linking claim(s) will be rejoined and fully examined for patentabilityexamined for patentability

The Office must provide Applicant with an The Office must provide Applicant with an opportunity to reinstate canceled claims when a opportunity to reinstate canceled claims when a restriction requirement is withdrawn based on restriction requirement is withdrawn based on the allowability of the linking claim.the allowability of the linking claim.

Practical Tips on Linking Practical Tips on Linking ClaimsClaimsWhen requiring a restriction involving When requiring a restriction involving

linking claims per MPEP 809.03, the linking claims per MPEP 809.03, the linking claims should not appear in the linking claims should not appear in the list of claims for any particular group. list of claims for any particular group. The linking claims appear only in FP 8.12.The linking claims appear only in FP 8.12.

When requiring a provisional election of When requiring a provisional election of species involving genus-type linking species involving genus-type linking claims per MPEP 809.02, the species are claims per MPEP 809.02, the species are listed and the linking claims appear as listed and the linking claims appear as the generic claims in FP 8.01.the generic claims in FP 8.01.

Ramifications of Improper Ramifications of Improper Restriction RequirementsRestriction Requirements

Inventions that were subject to a restriction Inventions that were subject to a restriction requirement and thus held to be patentably requirement and thus held to be patentably distinct can not later be rejected under distinct can not later be rejected under double patenting over one another unless double patenting over one another unless the restriction requirement is withdrawn. the restriction requirement is withdrawn.

Patent rights may be unjustly extended.Patent rights may be unjustly extended.

MPEP 804.01MPEP 804.01

Ramifications of Improper Ramifications of Improper Restriction Requirements Restriction Requirements (cont’d)(cont’d)

Obviousness-type double patenting Obviousness-type double patenting rejections may be overcome by filing a rejections may be overcome by filing a terminal disclaimer tying together terminal disclaimer tying together ownership of inventions that are not ownership of inventions that are not patentably distinct.patentably distinct.

An improper restriction requirement may bar An improper restriction requirement may bar a double patenting rejection in a divisional a double patenting rejection in a divisional or continuation application.or continuation application.This could result in a situation where two This could result in a situation where two

patentably indistinct inventions are owned by patentably indistinct inventions are owned by different parties.different parties.

Ramifications of Improper Ramifications of Improper Restriction Requirements Restriction Requirements (cont’d)(cont’d)

A final restriction requirement may be A final restriction requirement may be petitioned if the applicant requested petitioned if the applicant requested reconsideration of the requirement.reconsideration of the requirement.The petition may be filed after final action or The petition may be filed after final action or

allowance of claims to the elected invention, but allowance of claims to the elected invention, but must be filed not later than appeal.must be filed not later than appeal.

If the examiner is reversed in the petition If the examiner is reversed in the petition decision, the examiner must examine an decision, the examiner must examine an invention(s) previously withdrawn from invention(s) previously withdrawn from consideration. This creates additional work consideration. This creates additional work for the examiner and may delay the patent for the examiner and may delay the patent and increase the cost of prosecution for and increase the cost of prosecution for applicants.applicants.

Relationship of Restriction to Relationship of Restriction to Double Patenting RejectionsDouble Patenting Rejections

Generally, a double patenting rejection is not permitted Generally, a double patenting rejection is not permitted where the claimed subject matter is presented in a where the claimed subject matter is presented in a divisional application as a result of a restriction divisional application as a result of a restriction requirement made in a parent application under 35 U.S.C. requirement made in a parent application under 35 U.S.C. 121.121.TC Director approval is needed for double patenting rejections TC Director approval is needed for double patenting rejections

between a parent application and a divisional or continuation between a parent application and a divisional or continuation application filed because of a requirement to restrict (including application filed because of a requirement to restrict (including election of species). election of species). MPEP 804.04MPEP 804.04

When examining a divisional or continuation application filed When examining a divisional or continuation application filed because of a restriction requirement, the examiner should because of a restriction requirement, the examiner should determine whether the claims of the different applications or determine whether the claims of the different applications or patents are consonant (consistent) with the restriction patents are consonant (consistent) with the restriction requirement made in the parent application. requirement made in the parent application.

If the claimed invention is not the same as the invention which was If the claimed invention is not the same as the invention which was held to be patentably distinct when the restriction requirement held to be patentably distinct when the restriction requirement was made, a double patenting rejection may be appropriate.was made, a double patenting rejection may be appropriate.

Relationship of Restriction to Relationship of Restriction to Double Patenting Rejections Double Patenting Rejections (cont’d)(cont’d)

When a restriction requirement is withdrawn, When a restriction requirement is withdrawn, 35 USC 121 no longer shields claims from 35 USC 121 no longer shields claims from double patenting considerations.double patenting considerations.

Double patenting situations may arise where Double patenting situations may arise where a restriction requirement was made subject a restriction requirement was made subject to the non-allowance of linking claims, the to the non-allowance of linking claims, the linking claims were subsequently allowed linking claims were subsequently allowed and the restriction requirement was and the restriction requirement was withdrawn. withdrawn.

RejoinderRejoinderWhen all claims directed to the elected When all claims directed to the elected

invention are in condition for allowance, invention are in condition for allowance, the nonelected invention(s) should be the nonelected invention(s) should be considered for rejoinder.considered for rejoinder.

Rejoinder is the process of withdrawing a Rejoinder is the process of withdrawing a restriction requirement between an allowable restriction requirement between an allowable elected invention and a nonelected invention elected invention and a nonelected invention and examining the formerly nonelected and examining the formerly nonelected invention on the merits.invention on the merits.

In order to be eligible for rejoinder, a claim to a In order to be eligible for rejoinder, a claim to a nonelected invention must depend from or nonelected invention must depend from or otherwise require all the limitations of an otherwise require all the limitations of an allowable claim. allowable claim. A claim that has been withdrawn from consideration and that A claim that has been withdrawn from consideration and that

does not require all the limitations of an allowable claim does not require all the limitations of an allowable claim will not be rejoined.will not be rejoined.

Rejoinder Rejoinder (cont’d)(cont’d)

Rejoinder between independent and distinct Rejoinder between independent and distinct products, or independent and distinct processes, is products, or independent and distinct processes, is appropriate when a generic claim, linking claim or appropriate when a generic claim, linking claim or subcombination claim is allowable and any subcombination claim is allowable and any previously withdrawn claim depends from or previously withdrawn claim depends from or otherwise requires all the limitations thereof. otherwise requires all the limitations thereof. MPEP 821.04(a)MPEP 821.04(a)

If nonelected claims which depended from or If nonelected claims which depended from or otherwise required all the limitations of an otherwise required all the limitations of an allowable claim were cancelled by applicant, the allowable claim were cancelled by applicant, the examiner should use FP 8.46, 8.47, or 8.47.01 to examiner should use FP 8.46, 8.47, or 8.47.01 to inform applicant that such claims may be inform applicant that such claims may be reinstated by applicant if submitted in an reinstated by applicant if submitted in an amendment.amendment.


Rejoined claims must be fully examined forRejoined claims must be fully examined for

patentability in accordance with 37 CFRpatentability in accordance with 37 CFR

1.104. Thus, to be allowable, the rejoined1.104. Thus, to be allowable, the rejoined

claims must meet all criteria forclaims must meet all criteria for

patentability including the requirements ofpatentability including the requirements of

35 U.S.C. 101, 102, 103, and 112. 35 U.S.C. 101, 102, 103, and 112.

MPEP 821.04MPEP 821.04


The requirement for restriction between The requirement for restriction between rejoined inventions must be withdrawn. rejoined inventions must be withdrawn.

Any claims presented in a continuation or Any claims presented in a continuation or divisional application that are anticipated divisional application that are anticipated by, or rendered obvious over, the claims of by, or rendered obvious over, the claims of the parent application may be subject to a the parent application may be subject to a double patenting rejection if the restriction double patenting rejection if the restriction requirement has been withdrawn in the requirement has been withdrawn in the parent application. parent application.

See MPEP 821.04 and 821.04(a) for further See MPEP 821.04 and 821.04(a) for further information on rejoinder. information on rejoinder.

Rejoinder of Process Claims Rejoinder of Process Claims Requiring an Allowable Requiring an Allowable ProductProduct

Rejoinder may be appropriate when claims to Rejoinder may be appropriate when claims to an elected product are allowable and claims an elected product are allowable and claims to a nonelected process of making and/or to a nonelected process of making and/or using the product depend from or otherwise using the product depend from or otherwise require all limitations of the allowable product require all limitations of the allowable product claim. claim.

If applicant cancels all claims to a nonelected If applicant cancels all claims to a nonelected process invention before rejoinder occurs, the process invention before rejoinder occurs, the examiner should not withdraw the restriction examiner should not withdraw the restriction requirement. This will preserve the requirement. This will preserve the applicant’s rights under 35 USC 121.applicant’s rights under 35 USC 121.

MPEP 821.04(b)MPEP 821.04(b)

Rejoinder Example 1Rejoinder Example 1Claim 1. (Original) A dielectric resonator circuit Claim 1. (Original) A dielectric resonator circuit

comprising: a dielectric resonator having a body formed comprising: a dielectric resonator having a body formed of a dielectric material, said body having at least one of a dielectric material, said body having at least one slit defining a gap in the body. [Linking claim generic to slit defining a gap in the body. [Linking claim generic to species I and II]species I and II]

Claim 2. (Original) The dielectric resonator circuit of claim Claim 2. (Original) The dielectric resonator circuit of claim 1, wherein the gap is comprised of air. [Species I]1, wherein the gap is comprised of air. [Species I]

Claim 3. (Withdrawn) The dielectric resonator circuit of Claim 3. (Withdrawn) The dielectric resonator circuit of claim 1, wherein the gap is filled with mixture of super-claim 1, wherein the gap is filled with mixture of super-conductive material and ceramic material. [Species II]conductive material and ceramic material. [Species II]

Claim 4. (Withdrawn) A dielectric resonator circuit Claim 4. (Withdrawn) A dielectric resonator circuit comprising: a dielectric resonator having a body formed comprising: a dielectric resonator having a body formed of a dielectric material, said body having first and of a dielectric material, said body having first and second dielectric portions in contact with each other. second dielectric portions in contact with each other. [Species III][Species III]

Rejoinder Example 1 Rejoinder Example 1 (cont’d)(cont’d)

The examiner required an election of species I, II, or The examiner required an election of species I, II, or III. Species I was elected. Claims 1 and 2 are III. Species I was elected. Claims 1 and 2 are allowable. allowable.

The examiner should withdraw the election of species The examiner should withdraw the election of species requirement related to Species II and the invention requirement related to Species II and the invention defined by claim 3 should be rejoined with the defined by claim 3 should be rejoined with the invention of claim 1 since claim 1 is generic to invention of claim 1 since claim 1 is generic to Species I and II.Species I and II.

Claim 4 remains as a non-elected species, and the Claim 4 remains as a non-elected species, and the examiner may cancel the claim without consulting examiner may cancel the claim without consulting applicant if the applicant elected species I applicant if the applicant elected species I withoutwithout traverse (FP 8.07) traverse (FP 8.07) OROR give applicant one month to give applicant one month to cancel claim 4 or take other appropriate action cancel claim 4 or take other appropriate action under 37 CFR 1.144 if the applicant elected species under 37 CFR 1.144 if the applicant elected species I I with with traverse (FP 8.03).traverse (FP 8.03).

Rejoinder Example 2Rejoinder Example 2Claim 1. (Original) A multi-layered printed circuit Claim 1. (Original) A multi-layered printed circuit

board comprising:board comprising:a plurality of dielectric layers arranged in a a plurality of dielectric layers arranged in a laminated structure;laminated structure;a ground layer disposed on a bottom surface of a ground layer disposed on a bottom surface of said laminated structure; andsaid laminated structure; anda chip capacitor and a signal conductor disposed a chip capacitor and a signal conductor disposed on a top surface of said laminated structure. on a top surface of said laminated structure.

Claim 2. (Original) The multi-layered printed circuit Claim 2. (Original) The multi-layered printed circuit board according to claim 1, wherein said board according to claim 1, wherein said laminated structure has a plurality of holes laminated structure has a plurality of holes therethrough to connect said chip capacitor and therethrough to connect said chip capacitor and said ground layer.said ground layer.


Claim 3. (Original) A method of making a multi-Claim 3. (Original) A method of making a multi-layered printed circuit board comprising the steps layered printed circuit board comprising the steps of: of: providing a plurality of dielectric layers;providing a plurality of dielectric layers;press-fitting said plurality of dielectric layers under a press-fitting said plurality of dielectric layers under a pressure of 4000-5000 pounds per square inch; andpressure of 4000-5000 pounds per square inch; andfiring said plurality of dielectric layers at a firing said plurality of dielectric layers at a temperature of approximately 870 degree Celsius.temperature of approximately 870 degree Celsius.

The examiner required restriction between Invention I The examiner required restriction between Invention I (claims 1 and 2) and Invention 2 (claim 3).(claims 1 and 2) and Invention 2 (claim 3).

In response, Applicant elected Invention I without In response, Applicant elected Invention I without traverse and amended claim 3 to the following:traverse and amended claim 3 to the following:


Claim 3. (Amended) A method of making a multi-Claim 3. (Amended) A method of making a multi-layered printed circuit board layered printed circuit board according to claim 1 according to claim 1 comprising the steps of: comprising the steps of: providing a plurality of dielectric layers;providing a plurality of dielectric layers;press-fitting said plurality of dielectric layers press-fitting said plurality of dielectric layers under a pressure of 4000-5000 pounds per under a pressure of 4000-5000 pounds per square inch; andsquare inch; andfiring said plurality of dielectric layers at a firing said plurality of dielectric layers at a temperature of approximately 870 degree temperature of approximately 870 degree Celsius.Celsius.

After claim 1 is determined to be allowable, the After claim 1 is determined to be allowable, the examiner should withdraw the restriction examiner should withdraw the restriction requirement and claim 3 should be rejoined with requirement and claim 3 should be rejoined with claim 1 (see MPEP 821.04(b), FP 8.42, 8.43)). claim 1 (see MPEP 821.04(b), FP 8.42, 8.43)).

Thank You!Thank You!

Documents

USPTO Restriction Training Materials and Chapter 800 Revisions