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OCR transcription for search; preserved printed pages are authoritative

# Chapter 800 Restriction; Double Patenting

801 Introduction

802
Basis for Practice in Statutes and Rules

802.01 Meaning of "Independent", "Distinct"
802.02 Definition of Restriction

803
Restriction -- When Proper
803.01 Review by Primary Examiner

804
Definition of Double Patenting

804.01 Nullification of Double Patenting Rejection

804.02
Terminal Disclaimer Avoiding Double Pat-
enting Rejection

804.03 Terminal Disclaimer Not Applicable-Com-
monly Owned Cases of Different Inventive
Entities

804.04 Submission to Group Director

805
Effect of Improper Joinder in Patent

806
Determination of Distinctness or Independence
of Claimed Inventions

806.01
Compare Claimed Subject Matter

806.02
Patentability Over the Prior Art Not Con-
sidered

806.03
Single Embodiment, Claims Defining Same
Essential Features

806.04 Independent Inventions

806.04 (a)
Species-Genus

806.03 (b)
Species May Be Related Inventions

806.04 (c)
Subcombination Not Generic to Combina-
tion

806.04 (d) Definition of a Generic Claim

806.04 (e)
Claims Restricted to Species

806.04 (f)
Claims restricted to Species By Mutually
Exclusive Characteristics

806.04 (h )
Species Must Be Patentably Distinct
From Each Other and From Genus

806.04 (i) Generic Claims Rejected When Presented
for First Time After Issue of Species

806.04 (j)
Generic Claims in One Patent Only
806.05 Related Inventions

806.05 (a) Combination or Aggregation and Sub-
combination or Element

806.05 (b) Old Combination-Novel Subcombina-
tion

806.05(c) Criteria of Distinctness for Combination,
Subcombination or Element of a Com-
bination

806.05 (d)
Subcombinations Usable Together

806.05 (e)

Process and Apparatus for Its Practice ----
Distinctness

806.05(f) Process and Product Made-Distinctness
806.05 (g) Apparatus and Product Made-Distinct-
ness

807 Patentability Report Practice Has no Effect on
Restriction Practice

## 808 Reasons for Insisting Upon Restriction

808.01 Independent Invention

808.01 (a) Species

808.02 Related Inventions
809 Claims Linking Distinct Inventions

809.02 Generic Claim Linking Species

809.02 (a) Election Required

809.02 (b) Election Required-Generic Claim Allow-
able

809.02(c) Action Following Election

809.02 (d) No Species Claims

809.02 (e)
Generic Claim Allowable in Substance

809.03 Linking Claims

809.04 Retention of Claims to Non-Elected Inven-
tion

810
Action on Novelty

810.01 Not Objectionable When Coupled with Re-
quirement

810.02 Usually Deferred

810.03 Given on Elected Invention when Require-
ment is Made Final

### 811 Time for making Requirement

811.02 Even After Compliance with Preceding Re-
quirement

811.03
Repeating After Withdrawal-Proper

811.04 Proper Even Though Grouped Together in
Parent Case

812
Who should Make the Requirement
812.01 Telephone Restriction Practice

814
Indicate Exactly How Application Is To Be
Restricted

815
Make Requirement Complete

816
Give Reasons for Holding of Independence or
Distinctness

817
Outline of Letter for Restriction Requirement
between Distinct Inventions

### 818 Election and Response

818.01 Election Fixed by Action on Claims

818.02 Election Other Than Express

818.02(a) By Originally Presented Claims

818.02 (b) Generic claims only-No Election of Spe-
cies

818.02(c) By Optional Cancellation of claims

818.03 Express Election and Traverse

818.03 (a) Response Must Be Complete

818.03(b) Must Elect, Even When Requirement is
Traversed

818.03(c) Must Traverse to Preserve Right of Peti-
tion

818.03(d) Traverse of Non-Allowance of Linking
Claims

818.03(e) Applicant must make his own Election

819 Office Generally does not Permit Shift

819.01 Office May Waive Election and Permit Shift
820 Not an Election; Permissible Shift

820.01 Old Combination Claimed-Not an Election
820.02 Interference Issues-Not an Election

821 Treatment of Claims Held to be Drawn to Non-
elected Inventions

821.01 After Election With Traverse

821.02
After Election Without Traverse

821.03
Claims for Different Invention Added After
an Office Action

822 Claims to Inventions That are Not Distinct in
Plural Applications of Same Inventive Entity
822.01 Copending Before Examiner

## 801 Introduction

The subject of restriction and double patent-
ing are herein treated under U.S.C. Title 35,
which became effective January 1, 1953, and
the revised Rules of Practice that became effec-
tive January 1, 1953.

## 802 Basis for Practice in Statutes and Rules [R-45]

The basis for restriction and double patent-
ing practice 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 Commissioner may require the
application to be restricted to one of the inventions.
If the other invention is made the subject of a divi-
sional application which complies with the require-
ments 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 applica-
tion as filed, the Commissioner may dispense with sign-
ing and execution by the inventor. The validity of a
patent shall not be questioned for failure of the Com-
missioner to require the application to be restricted to
one invention.

Rule 141. Different inventions in one application.
Two or more independent and distinct inventions may
not be claimed in one application, except that more
than one species of an invention, not to exceed five,
may be specifically claimed in different claims in one
application, provided the application also includes an
allowable claim generic to all the claimed species and

all the claims to each species in excess of one are writ-
ten in dependent form (rule 75) or otherwise include
all the limitations of the generic claim.

Rule 142. Requirement for restriction. (a) If two or
more independent and distinct inventions are claimed
in a single application, the examiner in his action shall
require the applicant in his response to that action to
elect that invention to which his claims shall be re-
stricted, this official action being called a requirement
for restriction (also known as a requirement for divi-
sion). If the distinctness and independence of the in-
ventions be clear, such requirement will be made be-
fore any action on the merits; however, it may be
made at any time before final action in the case, at
the discretion of the examiner.

(b) Claims to the invention or inventions not
elected, if not cancelled, 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 over-
ruled.

Rules 141 through 146 outline Office practice
on questions of restriction.

### 802.01 Meaning of "Independent", "Distinct" [R-45]

35 U.S.C. 121 quoted in the preceding section
states that the Commissioner may require re-
striction if two or more "independent and dis-
tinct" inventions are claimed in one applica-
tion. In rule 141 the statement is made that
two or more "independent and distinct inven-
tions" may not be claimed in one application.

This raises the question of the subjects as be-
tween which the Commissioner may require
restriction. This in turn depends on the con-
struction of the expression "independent and
distinct" inventions.

"Independent," of course, means not depend-
ent. If "distinct" means the same thing, then
its use in the statute and in the rule is re-
dundant. If "distinct" means something dif-
ferent, then the question arises as to what the
difference in meaning between these two words
may be. The hearings before the committees
of Congress considering the codification of the
patent laws indicate that section 121: "enacts
as law existing practice with respect to divi-
sion, at the same time introducing a number
of changes."

The report on the hearings does not mention
as a change that is introduced, the subjects be-
tween which the Commissioner may properly
require division.

The term "independent" as already pointed
out, means not dependent. A large number of
subjects between which, prior to the 1952 Act,
division had been proper, are dependent sub-

jects, such, for example, as combination and a
subcombination thereof; as process and appara-
tus used in the practice of the process; as com-
position and the process in which the composi-
tion is used; as process and the product made
by such process, etc. If section 121 of the 1952
Act were intended to direct the Commissioner
never to approve division between dependent
inventions, the word "independent" would clear-
ly have been used alone. If the Commissioner
has authority or discretion to restrict independ-
ent inventions only, then restriction would be
improper as between dependent inventions, e.g.,
such as the ones used for purpose of illustration
above. Such was clearly, however, not the intent
of Congress. Nothing in the language of the
statute and nothing in the hearings of the com-
mittees indicate any intent to change the sub-
stantive law on this subject. On the contrary,
joinder of the term "distinct" with the term "in-
pendent", indicates lack of such intent. The
law has long been established that dependent
inventions (frequently termed related inven-
tions) such as used for illustration above may
be properly divided if they are, in fact "dis-
tinct" inventions, even though dependent.

#### INDEPENDENT

The term "independent" (i.e., not depend-
ent) means that there is no disclosed relation-
ship between the two or more subjects disclosed,
that is, they are unconnected in design, opera-
tion or effect, for example, (1) species under a
genus which species are not usable together as
disclosed or (2) process and apparatus incapa-
ble of being used in practicing the process.

#### DISTINCT

The term "distinct" means that two or more
subjects as disclosed are related. for example
as combination and part (subcombination)
thereof, process and apparatus for its practice,
process and product made, etc., but are capable
of separate manufacture, use or sale as claimed,
AND ARE PATENTABLE OVER EACH
OTHER (though they may each be unpatent-
able because of the prior art). It will be noted
that in this definition the term "related" is
used as an alternative for "dependent" in refer-
ring to subjects other than independent subjects.

It is further noted that the terms "inde-
pendent" and "distinct" are used in decisions
with varying meanings. All decisions should
be read carefully to determine the meaning
intended.

### 802.02 Definition of Restriction [R-45]

Restriction, a generic term. includes that
practice of requiring an election between dis-

tinct inventions. for example, election between
combination and subcombination inventions,
and the practice relating to an election between
independent inventions, for example, an elec-
tion of species.

### 803 Restriction-When Proper [R- 45]

Under the statute an application may prop-
erly 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 (§§ 806.04-806.04(j)) or
distinct (§§ 806.05-806.05 (g)).

If it is demonstrated that two or more claimed
inventions have no disclosed relationship ("in-
dependent"), restriction should be required. If
it is demonstrated that two or more claimed in-
ventions have a disclosed relationship ("depend-
ent"), then a showing of distinctness is required
to substantiate a restriction requirement.

Where inventions are neither independent nor
distinct, one from the other, or they are not suf-
ficiently different to support more than one
patent, their joinder in a single application must
be permitted.

#### PRACTICE RE MARKUSH-TYPE CLAIMS

This sub-section deals with Markush-type
claims which include a plurality of alternatively
usable substances or members. In most cases this
recitation by enumeration is used because there
is no appropriate or true generic language.

Where an application claims two or more in-
dependent and distinct inventions, the Commis-
sioner, under the provisions of 35 U.S.C. 121,
may require the application to be restricted to
one of the inventions.

A Markush-type claim is directed to "inde-
pendent and distinct inventions," if two or more
of its 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. 103 with re-
spect to the other member (s).

If the claim is of that nature, the examiner
is authorized to reject it as an improper Mar-
kush claim and for misjoinder under 35 U.S.C.
121 and to require the applicant to restrict the
application to a single invention. In making
such a requirement, the examiner will (1) clear-
ly delineate the members or groups of mem-
bers believed to constitute improperly joined
inventions, and (2) state reasons fully explain-
ing why they are independent and distinct. Ap-
plicant's response to such a requirement should
be an election of a single adequately disclosed

and supported invention, with or without re-
striction of the claim (s) to that invention. Of
course, the response must not introduce new
matter into the application. See 35 U.S.C. 132
and In re Welstead, 59 CCPA 1105, 463 F. 2d
1110, 174 USPQ 449 (1972). A refusal to elect
a single invention will be treated as a non-re-
sponsive reply.

If the members of the Markush group are suf-
ficiently few in number or so closely related that
a search and examination of the entire claim can
be made without serious burden, the examiner
is encouraged to examine it on the merits, even
though it is directed to independent and dis-
tinct inventions. In such a case, the examiner
will not follow the procedure outlined in the
preceding paragraph and will not require re-
striction.

Where the examiner has rejected the claim
and required restriction and the applicant has
responded without restricting the claim(s) to
a single invention, the examiner shall, if the
position is adhered to, again reject the claim
and any other Markush claims not restricted
to the elected invention. No further examination
of these claims is required unless and until such
rejection has been overcome. However, if the
search of the single elected invention develops
prior art which would render both the elected
invention and the improper Markush claim (s)
unpatentable, such prior art may be applied in
rejections of both without a complete search of
the subject matter of the improper Markush
claim (s). Otherwise, only true generic claims
and those restricted to the elected invention will
be examined in the usual manner.

The primary examiner is responsible for and
must sign the action making a requirement for
restriction between inventions recited in a Mar-
kush-type claim final.

Review of the rejection will be by appeal to
the Board of Appeals under 35 U.S.C. 134.

## 803.01 Review by Primary Examiner [R-45]

Since requirements for restriction under Title
35 U.S.C. 121 are discretionary with the Com-
missioner, it becomes very important that the
practice under this section be carefully admin-
istered. Notwithstanding the fact that this sec-
tion of the statute apparently protects the ap-
plicant 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, the primary ex-
aminer must personally review and sign all
final requirements for restriction.

## 804 Definition of Double Patenting [R-45]

There are two types of double patenting re-
jections. One is the "same invention" type
double patenting rejection based on 35 U.S.C.
101 which states in the singular that an inven-
tor "may obtain a patent." This has been inter-
preted as meaning only one patent.

The other type is the "obviousness" type dou-
ble patenting rejection which is a judicially
created doctrine based on public policy rather
than statute and is primarily intended to pre-
vent prolongation of monopoly by prohibiting
claims in a second patent not patentably dis-
tinguishing from claims in a first patent. In re
White et al., 160 USPQ 417; In re Thorington
et al., 163 USPQ 644. Note also §§ 804.01 and
804.02.

The Court of Customs and Patent Appeals
has held that a terminal disclaimer is ineffec-
tive in the first type, where it is attempted to
twice claim the same invention. However, the
"obviousness" type double patenting rejection
may be obviated by a terminal disclaimer.

The term "double patenting" is properly ap-
plicable only to cases involving two or more
applications and/or patents having the same in-
ventive entity and where an invention claimed
in one case is the same as, or not patentably
distinct from, an invention already claimed.
The term "double patenting" should not be ap-
plied to situations involving commonly owned
cases of different inventive entities. Commonly-
owned cases of different inventive entities are
to be treated in the manner set out in § 804.03.

The inventive entity is the sole inventor or the
joint inventors listed on a patent or patent ap-
plication. A sole inventor in one application and
joint inventors in another application cannot
constitute a single or the same entity, even if
the sole inventor is one of the joint inventors.
Likewise, two sets of joint inventors do not con-
stitute a single inventive entity if any individ-
ual inventor is included in one set who is not
also included in the other set.

## 804.01 Nullification of Double Patent- ing Rejection [R-20]

35 U.S.C. 121, third sentence, provides that
where the Office requires restriction, the patent
of either the parent or any divisional applica-
tion thereof conforming to the requirement can-
not be used as a reference against the other.

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 re-
striction where the claims define essentially the
same inventions in different language and
which, if acquiesced in, might result in the issu-
ance of several patents for the same invention.

The apparent nullification of double patent-
ing as a ground of rejection or invalidity raises
many troublesome questions as to meaning and
situations where it applies.

A. SITUATIONS WHERE 35 U.S.C. 121 DOES NOT
OSAPPLY

(a) The applicant voluntarily files two or
more cases without requirement by the exam-
iner.

(b) The claims of the different applica-
tions or patents are not consonant with the
requirement made by the examiner, due to the
fact that the claims have been changed in ma-
terial respects from the claims at the time the
requirement was made.

(c) The requirement was made subject to
the nonallowance of generic or other linking
claims and such linking claims are subse-
quently allowed.

B. SITUATIONS WHERE 35 U.S.C. 121 APPAR-
ENTLY APPLIES

It is considered that the prohibition against
holdings of double patenting applies to re-
quirements for restriction between the related
subjects treated in §§ 806.04 through 806.05(g),
namely, between combination and subcombina-
tion thereof, between subcombinations disclosed
as usable together, between process and appara-
tus for its practice, between process and prod-
uct made by such process and between appara-
tus and product made by such apparatus, etc.,
so long as the claims in cach case filed as a result
of such requirement are limited to its separate
subject.

## 804.02 Terminal Disclaimer Avoiding Double Patenting Rejection [R-45]

If two or more cases are filed by a single in-
ventive entity, and if the expiration dates of
the patents, granted or to be granted, are the
same, either because of a common issue date or
by reason of the filing of one or more terminal
disclaimers, two or more patents may properly
be granted, provided the claims of the different
cases are not drawn to the same invention (In re
Knohl, 155 USPQ 586; In re Griswold. 150
USPQ 804: In re Vogel and Vogel. 164 TSPQ
619).

Claims that differ from each other (aside from
minor differences in language, punctuation,
etc.), whether or not the difference is obvious,
are not considered to be drawn to the same inven-
tion for double patenting purposes. In cases
where the difference in claims is obvious, termi-
nal disclaimers are effective to overcome rejec-
tions on double patenting. However, such termi-
nal disclaimers must include a provision that the
patent shall expire immediately if it ceases to
be commonly owned with the other application
for patent. Note rule 321(b).

Where there is no difference, the inventions
are the same and a terminal disclaimer is
ineffective.

Rule 321 (b). A terminal disclaimer, when filed in
an application to obviate a double patenting rejection,
must include a provision that any patent granted on
that application shall be enforceable only for and dur-
ing such period that said patent is commonly owned
with the application or patent which formed the basis
for the rejection. See rule 21 for fee.

See § 1403 for form.

804.03
Terminal Disclaimer Not Ap-
plicable-Commonly Owned
Cases of Different Inventive
Entities [R-39]

Rule 78(c). Where two or more applications, or an
application and a patent naming different inventors
and owned by the same party contain conflicting
claims, the assignee may be called upon to state which
named inventor is the prior inventor. In addition to
making said statement, the assignee may also explain
why an interference should be declared or that no
conflict exists in fact.

In view of 35 U.S.C. 135, it is necessary to
determine priority of invention whenever two
different inventive entities are claiming a single
inventive concept, including variations of the
same concept each of which would be obvious in
view of the other. This is true regardless of
ownership and the provision of rule 201 (c)
that interferences will not be declared or con-
tinued between commonly owned cases unless
good cause is shown therefor. A terminal dis-
claimer can have no effect in this situation, since
the basis for refusing more than one patent is
35 U.S.C. 102 or 103, and is not connected with
any extension of monopoly.

Accordingly, the assignee of two or more
cases of different inventive entities, containing
conflicting claims must maintain a line of de-
marcation between them. If such a line is not
maintained, the assignee should be called on
to state which entity is the prior inventor of
that subject matter and to limit the claims of
the other application accordingly. If the as-

signee does not comply with this requirement,
the case in which the requirement to name the
prior inventor was made will be held aban-
doned.

An application in which a requirement to
name the prior inventor has been made will not
be held abandoned where a timely response in-
dicates that the other application is abandoned
or will be permitted to become abandoned. Such
a response will be considered sufficient since it
renders the requirement to identify the prior in-
ventor moot because the existence of conflicting
claims is eliminated.

If after taking out a patent, a common
assignee presents claims for the first time in a
copending application not patentably distinct
from the claims in the patent, the claims of the
application should be rejected on the ground
that the assignee, by taking out the patent at
a time when the application was not claiming
the patented invention, is estopped to contend
that the patentee is not the prior inventor.

If a patent is inadvertently issued on one of
two commonly owned applications by different
inventive entities which at the time when the
patent issued were claiming inventions which
are not patentably distinet, the assignee should
be called on to make a determination of priority
as in the case of pending applications. If the
determination indicates that the patent issued
to the senior entity a rejection under 35 U.S.C.
102 or 103 should be made. An election of the
applicant (senior entity) as the first inventor
should not be accepted without a complete (not
terminal) disclaimer of the conflicting claims
in the patent.

### 804.04 Submission to Group Director [R-38]

In order to promote uniform practice, every
action containing a rejection on the ground of
double patenting of either a parent or a divi-
sional case (where the divisional case was filed
because of a requirement to restrict by the ex-
aminer under 35 U.S.C. 121, including a re-
quirement to elect species, made by the Office)
must be submitted to the group director for ap-
proval prior to mailing. When the rejection on
the ground of double patenting is disapproved.
it shall not be mailed but other appropriate
action shall be taken. Note § 1003, item 4.

### 805 Effect of Improper Joinder in Patent [R-16]

35 U.S.C. 121, last sentence provides: "The
validity of a patent shall not be questioned for
failure of the Commissioner to require the ap-
plication 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 Inven- tions [R-20]

The general principles relating to distinct-
ness or independence are elementary, and may
be summarized as follows:

1\. Where inventions are independent (i.e.,
no disclosed relation therebetween ), restriction,
to one thereof is ordinarily proper, §§ 806.04-
806.04 (j), though up to 5 species may be claimed
when there is an allowed claim generic thereto,
rule 141, §§ 809.02-809.02 (e).

2\. Where inventions are related as disclosed
but are distinct as claimed, restriction may be
proper.

3\. Where inventions are related as disclosed
but are not distinct as claimed, restriction is
never proper. Since, if restriction is required
by the Office double patenting cannot be held,
it is imperative the requirement should never
be made where related inventions as claimed
are not distinct. For (2) and (3) see §§ 806.05-
806.05(g) and 809.03.

## 806.01 Compare Claimed Subject Mat- ter

In passing upon questions of double patent-
ing 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 inde-
pendence.

## 806.02 Patentability Over the Prior Art Not Considered [R-29]

For the purpose of a decision on the question
of restriction, and for this purpose only, the
claims are ordinarily assumed to be in proper
form and patentable over the prior art.

This assumption, of course, is not continued
after the question of restriction is settled and
the question of patentability of the several
claims in view of prior art is taken up.

806.03 Single Embodiment, Claims
Defining Same Essential Fea-
tures [R-45]

Where the claims of an application define
the same essential characteristics of a single
disclosed embodiment of an invention, restric-
tion therebetween should never be required.
This is because the claims are but different
definitions of the same disclosed subject mat-
ter, varying in breadth or scope of definition.

806.04

Where such claims appear in different appli-
cations optionally filed by the same inventor,
disclosing the same embodiments. see §§ 804-804.
02.

### 806.04 Independent Inventions [R- 45]

If it can be shown that the two or more
inventions are in fact independent, applicant

should be required to restrict the claims pre-
sented to but one of such independent inven-
tions. For example :

1\. Two different combinations, not disclosed
as capable of use together, having different
modes of operation, different functions or differ-
ent effects are independent. An article of ap-
parel such as a shoe, 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.

2\. 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 which
cannot be used to practice the specific process.

3\. Where species under a genus are independ-
ent. For example, a genus of paper clips having
species differing in the manner in which a sec-
tion of the wire is formed in order to achieve a
greater increase in its holding power.

## SPECIES ARE TREATED EXTENSIVELY IN THE FOLLOWING SECTIONS

806.04(a) Species-Genus [R-38]

The statute (35 U.S.C. 121) lays down the
general rule that restriction may be required to
one of two or more independent inventions.
Rule 141 makes an exception to this, providing
that up to five species may be claimed in one
application if the other conditions of the rule
are met.

## 806.04(b) Species May Be Related Inventions [R-45]

Species, while usually independent may be
related under the particular disclosure. 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 §§ 806.05-806.05 (g). 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. In ex parte
Healy 1898 C.D. 157; 84 O.G. 1281, a clamp for
a handle bar stem and a specifically different
clamp for a seat post both usable together on
a bicycle were claimed. In his decision, the
commissioner considered both the restriction
practice under election of species and the prac-
tice applicable to restriction between combina-
tion and subcombinations.

As a further example, species of carbon com-
pounds may be related to each other as inter-
mediate 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 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.

## 806.04(c) Subcombination ( Not). Ge- neric to Combination

The situation is frequently presented where
two different combinations are disclosed, hav-
ing a subcombination common to each. It is
frequently puzzling to determine whether a
claim readable on two different combinations
is generic thereto.

This was early recognized in Ex parte Smith
1888 C.D. 131; 44 O.G. 1183, where it was held
that a subcombination was not generic to the
different combinations in which it was used.

To exemplify, a claim that defines only the
subcombination, e.g., the mechanical structure
of a joint, is not a generic or genus claim to
two forms of a combination, e.g., two different
forms of a doughnut cooker each of which
utilize the same form of joint.

## 806.04(d) Definition of a Generic Claim [R-45]

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 subcombina-
tion common to the several species.

It is not possible to define a generic claim
with that precision existing in the case of a
geometrical term. In general, a generic claim
should include no material element additional
to those recited in the species claims, and must
comprehend within its confines the organiza-
tion covered in each of the species.

For the purpose of obtaining claims to more
than one species in the same case, the generic
claim cannot include limitations not present in
each of the added species claims. Otherwise
stated, the claims to the species which can be
included in a case in addition to a single spe-
cies must contain all the limitations of the
generic claim.

Once a claim that is determined to be generic
is allowed, all of the claims drawn to species
in addition to the elected species which include
all the limitations of the generic claim will ordi-
narily be obviously allowable in view of the al-
lowance of the generic claim, since the addi-
tional species will depend thereon or otherwise
include 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 include all the limitations of the
generic claim, then that species cannot be
claimed in the same case with the other species,
see § 809.02(c) (2).

## 806.04 (e) :Claimsd:Restricted to Species . [R-45]

Claims are definitions of inventions. Claims
are never species. Claims may be restricted to
a single disclosed embodiment (i.e. a single
species, and thus be designated a specific spe-
cies claim), or a claim may include two or more
of the disclosed embodiments within the breadth
of scope of definition (and thus be designated
a generic or genus claim).

Species are always the specifically different
embodiments.

Species are usually but not always independ-
ent as disclosed (see § 806.04(b) ) since there
is usually no disclosure of relationship there-
between. The fact that a genus for two differ-
ent embodiments is capable of being conceived
and defined, does not affect the independence of
the embodiments, where the case under con-
sideration contains no disclosure of any com-
munity of operation, function or effect.

### 806.04(f) Claims Restricted to Spe- cies, by Mutually Exclusive Characteristics

Claims to be restricted to different species
must be mutually exclusive. The general test
as to when claims are restricted respectively to
different species is the fact that one claim re-
cites limitations which under the disclosure are
found in a first species but not in a second,
while a second claim recites limitations dis-
closed only for the second species and not the
first. This is frequently expressed by saying
that claims to be restricted to different species,
must recite the mutually exclusive characteris-
tics of such species.

806.04 (h) Species Must Be Patentably
Distinct From Each Other
and From Genus [R-38]

Where an applicant files a divisional appli-
cation claiming a species previously claimed
but nonelected in the parent case, pursuant to
and consonant with a requirement to restrict,
there should be no determination of whether
or not the species claimed in the divisional ap-
plication is patentable over the species retained
in the parent case since such a determination
was made before the requirement to restrict was
made.

In an application containing claims directed
to more than five species, the examiner should
not require restriction to five species unless he
is satisfied that he would be prepared to allow
claims to each of the claimed species over the
parent case, if presented in a divisional appli-
cation filed according to the requirement. Re-

striction should not be required if the species
claimed are considered clearly unpatentable
over each other.

In making a requirement for restriction in
an application claiming plural species, the ex-
aminer should group together species consid-
ered clearly unpatentable over each other, with
the statement that restriction as between those
species is not required.

Where generic claims are allowed, applicant
may claim in the same application additional
species as provided by rule 141. As to these, the
patentable distinction between the species or be-
tween the species and genus is not rigorously
investigated, since they will issue in the same
patent. However, the practice stated in § 706.03
(k) may be followed if the claims differ from
the allowed genus only by subject matter that
can be shown to be old by citation of prior art.

Where, however, an applicant optionally files
another application with claims to a different
species, or for a species disclosed but not claimed
in a parent case as filed and first acted upon by
the examiner, there should be close investigation
to determine the presence or absence of patenta-
ble difference. See §§ 804.01 and 804.02.

### 806.04 (i) Generic Claims Rejected When Presented for First Time After Issue of Species [R-45]

Where an applicant has separate applica-
tions for plural species, but presents no generic
claim until after the issue of a patent for one
of the species, the generic claims cannot be al-
lowed, even though the applications were
copending. In re Blattner, 114 USPQ 299, 44
C.C.P.A. 994 (CCPA 1957).

#### 806.04 (j) Generic Claims in One Pat- ent only [R-45]

Generic claims covering two or more species
which are separately claimed in two or more
patents to the same inventor issued on copend-
ing applications must all be present in a single
one of the patents. If present in two or more
patents, the generic claims in the later patents
are void. Thus generic claims in an applica-
tion should be rejected on the ground of dou-
ble patenting in view of the generic claims of
the patent. Ex parte Robinson, 121 USPQ 613.
(Bd. App., 1956).

#### 806.05 Related Inventions. [R-45]

Where two or more related inventions are
being claimed, the principal question to be de-
termined 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, restric-
tion may be proper. If they are not distinct.
restriction is never proper. If non-distinct in-
ventions are claimed in separate applications or
patents, double patenting must be held, except
where the additional applications were filed con-
sonant with a requirement to restrict.

The various pairs of related inventions are
noted in the following sections.

## 806.05(a) Combination or Aggrega- tion and Subcombination or Element [R-45]

A combination or an aggregation is an or-
ganization of which a subcombination or ele-
ment is a part.

The distinction between combination and ag-
gregation is not material to questions of re-
striction or to questions of double patenting.
Relative to questions of restriction where a
combination is alleged, the claim thereto must
be assumed to be allowable as pointed out in
$ 806.02, in the absence of a holding by the ex-
aminer to the contrary. When a claim is
found in a patent, it has already been found
by the Office to be for a combination and not
an aggregation and must be treated on that
basis.

## 806.05 (b) Old Combination-Novel Subcombination [R-25]

Restriction is ordinarily not proper between
a combination (AB) that the examiner holds
to be old and unpatentable and the subcombina-
tion (B) in which the examiner holds the
novelty, if any, to reside, ex parte Donnell 1923
C.D. 54, 315 O.G. 398. (See § 820.01.)

## 806.05(c) Criteria of Distinctness for Combination, Subcombina- tion or Element of a Com- bination [R-45]

In order to establish that combination and
subcombination inventions are distinct. two-
way distinctness must be demonstrated.

To support a requirement for restriction. both
two-way distinctness and reasons for insisting
on restriction are necessary.

If it can be shown that a combination. as
claimed

( 1) does not require the particular- of the
subcombination as claimed for patentability.
and

(2) the subcombination can be shown to have
utility either by itself or in other and different
relations. the inventions are distinct. When

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

The following examples are included for gen-
eral guidance.

## 1. SUBCOMBINATION NOT ESSENTIAL TO COMBINATION

ABbr
B &p
Restriction proper

Where a combination as claimed does not set
forth the details of the subcombination as sepa-
rately claimed and the subcombination has sepa-
rate utility, the inventions are distinct and re-
striction is proper if reasons exist for insisting
upon the restriction. i.e. separate classification.
status, or field of search.

This situation can be diagramed as combina-
tion A Bur, and subcombination BRp. Bir indi-
cates that in the combination the subcombina-
tion is broadly recited and that the specific char-
acteristics set forth in the subcombination claim
Bxp are not set forth in the combination claim.

Since claims to both the subcombination and
combination are presented and assumed to be
patentable, the omission of details of the claim-
ed subcombination Bsp in the combination claim
A Bir is evidence that the patentability of the
combination does not rely on the details of the
specific subcombination.

## 2. SUBCOMBINATION ESSENTIAL TO COMBINATION A B B": Norestriction

### B.F

If there is no evidence that combination A Bxp
is patentable without the details of Bap, restric-
tion should not be required. Where the relation-
ship between the claims is such that the sepa-
rately claimed subcombination Bap constitutes
the essential distinguishing feature of the com-
bination A Bay as claimed. the inventions are
not distinct and a requirement for restriction
must not be made, even though the subcombina-
tion has separate utility.

3\. SOME COMBINATION CLAIMS RECITE SPECIFIC
FEATURES OF THE SUBCOMBINATION BUT OTHER
COMBINATION CLAIMS GIVE EVIDENCE THAT
THE SUBCOMBINATION IS NOT ESSENTIAL TO
THE COMBINATION.

ABS
A Bu (Evidence claim)
B.F. Restriction proper

Claim A B., is an evidence claim which indi-
rates that the combination does not rely upon
the specific details of the subcombination for its
patentability. If claim & Bar is subsequently
found to be allowable. the question of re-
joinder of the inventions restricted must be re-
considered and the letter to the applicant should
so state. Therefore, where the combination evi-

806.05(d)

dence claim A Bur does not set forth the details
of the subcombination Bxp and the subcombina-
tion Bap 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-subcombina-
tion and also as different statutory categories,
both applicable criteria for distinctness must
be demonstarted to support a restriction re-
quirement. See also § 806.04(b).

## 806.05 (d) Subcombinations Usable Together [R-45]

Two or more claimed subcombinations, dis-
closed as usable together in a single combina-
tion. and which can be shown to be separately
usable, are usually distinct from each other.

Care should always be exercised in this situ-
ation to determine if the several subcombina-
tions are generically claimed. (See 806.04 (b).)

## 806.05(e) Process and Apparatus for Its Practice-Distinctness [R-45]

In applications claiming inventions in differ-
ent statutory categories, only one-way distinct-
ness is generally needed to support a restriction
requirement. However, see § 806.05(c).

L+ Process and apparatus for its practice can
be shown to be distinct inventions, if either or
both of the following can be shown: (1) that
the process as claimed can be practiced by an-
other materially different apparatus or by
hand, or (2) that the apparatus as claimed can
be used to practice another and materially dif-
ferent process.

### 806.05 (f) Process and Product Made-Distinctness [R- 18]

A process and a product made by the process
can be shown to be distinct inventions if either
or both of the following can be shown: (1)
that the process as claimed is not an obvious
process of making the product and the process
as claimed can be used to make other and dif-
ferent products, or (2) that the product as
claimed can be made by another and materially
different process.

## 806.05(g) Apparatus and Product Made-Distinctness [R- 45]

An apparatus and a product made by the ap-
paratus can be shown to be distinct inventions

if either or both of the following can be shown :
(1) that the apparatus as claimed is not an ob-
vious apparatus for making the product and
the apparatus as claimed can be used to make
other and different products, or (2) that the
product as claimed can be made by another and
materially different apparatus.

## 807 Patentability Report Practice Has No Effect on Restriction Practice [R-25]

Patentability report practice ($ 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 can not properly be required.

### 808 Reasons for Insisting Upon Re- striction

Every requirement to restrict has two as-
pects. (1) the reasons (as distinguished from
the mere statement of conclusion) why the in-
ventions as claimed are either independent or
distinct, and (2) the reasons for insisting upon
restriction therebetween.

## 808.01 Independent Inventions [R-25]

Where the inventions claimed are independ-
ent, i.e., where they are not connected in de-
sign, operation or effect under the disclosure of
the particular application under consideration
($ 806.04), the facts relied upon for this con-
clusion are in essence the reasons for insisting
upon restriction. This situation, except for
species, is but rarely presented, since persons
will seldom file an application containing dis-
closures of independent things.

### 808.01 (a) Species [R-38]

Where there is no disclosure of relationship
between species (see § 806.04(b) ), they are inde-
pendent inventions and election of one follow-
ing a requirement for restriction is mandatory
even though applicant disagrees with the exam-
iner. There must be a patentable distinction be-
tween the species as claimed, sce § 806.04(h).
Thus the reasons for insisting upon election of
one species, are the facts relied upon for the con-
clusion that there are claims restricted respec-
tively to two or more patentably different
species that are disclosed in the application, and
it is not necessary to show a separate status in
the art or separate classification.

A single disclosed species must be elected as
a prerequisite to applying the provisions of
rule 141 to four additional species if a generic
claim is allowed.

Even though the examiner rejects the generic
claims, and even though the applicant cancels
the same and thus admits that the genus is un-
patentable, where there is a relationship dis-
closed 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 estab-
lish the propriety of restriction.

Election of species should not be required.
if the species claimed are considered clearly
unpatentable over each other. In making a
requirement for restriction in an application
claiming plural species, the examiner should
group together species considered clearly un-
patentable over each other, with the statement
that restriction as between those species is not
required.

Election of species should be required prior
to a search on the merits (1) in all applications
containing claims to a plurality of species with
no generic claims, and (2) in all applications
containing both species claims and generic or
Markush claims.

In all applications in which no species claims
are present and a generic claim recites such a
multiplicity of species that an unduly extensive
and burdensome search is required, a require-
ment for an election of species should be made
prior to a search of the generic claim.

In all cases where a generic claim is found
allowable, the application should be treated as
indicated in $$ 809.02(b), (c) or (e). If an
election is made pursuant to a telephone re-
quirement, the next action should include a full
and complete action on the elected species as
well as on any generic claim that may be
present.

### 808.02 Related Inventions [R-45]

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 (§ 806.05). If applicant optionally re-
stricts, double patenting may be held.

Where the related inventions as claimed are
shown to be distinct under the criteria of
$$06.05(c-g). the examiner, in order to es-
tablish reasons for insisting upon restriction.
L+ must show by appropriate explanation one of
the following :

(1) Separate classification thereof:

This shows that each distinct subject has at-
tained recognition in the art as a separate sub-
ject for inventive effort, and also a separate
field of search. Patents need not be cited to show
separate classification.

(2) A separate status in the art when they
are classifiable together ;

Even though they are classified together, as
shown by the appropriate explanation each
subject can be shown to have formed a separate
subject for inventive effort when an explanation
indicates a recognition of separate inventive ef-
fort by inventors. Separate status in the art
may be shown by citing patents which are evi-
dence of such separate status.

(3) A different field of search :

Where it is necessary to search for one of the
distinct subjects in places where no pertinent
art to the other subject exists, 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 classifi-
cation and field of search, no reasons exist for
dividing among related inventions.

### 809 Claims Linking Distinct Inven- tions [R-45]

Where, upon examination of an application
containing claims to distinct inventions, linking
claims are found, restriction can nevertheless
be required. See § 809.03 for definition of linking
claims.

A letter including only a restriction require-
ment or a telephoned requirement to restrict
(the latter being encouraged) will be effected,
specifying which claims are considered linking.
See § 812.01 for telephone practice in restriction
requirements.

No art will be indicated for this type of link-
ing claim and no rejection of these claims made.

A 30-day shortened statutory period will be
set for response to a written requirement. Such
action will not be an "action on the merits" for
the purpose of the second action final program.

To be complete, a response to a requirement.
made according to this section need only include
a proper election.

The linking claims must be examined with
the invention elected, and should any linking
claim be allowed, rejoinder of the divided in-
ventions must be permitted.

# 809.02 Generic Claim Linking Species [R-25]

Under rule 141, an allowed generic claim may
link up to five disclosed species embraced there-
by.

The practice is stated in rule 146: 14

Rule 146. Election of species. In the first action on
an application containing a generic claim and claims
restricted separately to each of more than one species
embraced thereby, the examiner, if of the opinion after
a complete search on the generic claims that no generic
claim presented is allowable, shall require the appli-
cant in his response to that action to elect that species
of his invention to which his claims shall be restricted
if no generic claim is finally held allowable. However,
if such application contains claims directed to more
than five species, the examiner may require restriction
of the claims to not more than five species before taking
any further action in the case.

The last sentence of rule 146, that the ex-
aminer may require restriction of the claims
so that not more than five species are separately
claimed, is permissive. It may be used in ag-
gravated cases of a multiplicity of species,
without acting on generic claims, to narrow
the issues down to five species. But see
§ 806.04 (h).

## 809.02 (a) Election Required [R-25]

Where generic claims are present, a letter in-
cluding only a restriction requirement or a tele-
phoned requirement to restrict (the latter being
encouraged) should be effected. See § 812.01 for
telephone practice in restriction requirements.

Action as follows should be taken :

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

(2) Clearly identify each (or in aggravated
cases at least exemplary ones) of the disclosed
species, to which claims are 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 sev-
eral species, the mechanical means, the par-
ticular material, or other distinguishing char-
acteristic of the species should be stated for
each species identified. If the species cannot
be more conveniently identified. the claims may
be grouped in accordance with the species to
which they are restricted.

(3) 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 com-
plete response and his rights under rule 141.

For generic claims, a search should not be
made and art should not be cited.

A 30-day shortened statutory period will be
set for response when a written requirement is
made without an action on the merits. Such
action will not be an "action on the merits" for
purpose of the second action final program.

To be complete, a response to a requirement
made according to this section need only include
a proper election.

In those applications wherein a requirement
for restriction is accompanied by an action on
all claims, such action will be considered to be
an action on the merits and the next action
should be made final.

The following form paragraphs are sug-
gested :

"Generic claims ... (identify) are pres-
ent in this application. Applicant is required
under 35 U.S.C. 121 to elect a single disclosed
species to which his claims shall be restricted
if no generic claim is finally held allowable."

"Applicant is advised that his response
must include, an identification of the disclosed
species that he elects consonant with the re-
quirement, and a listing of all claims read-
able thereon. An argument that a generic
claim is allowable, or that all claims are ge-
neric or amended to be generic, unless accom-
panied by an election, is nonresponsive."

"Upon the allowance of a generic claim ap-
plicant will be entitled to consideration of
claims to not more than four species in addi-
tion to the single elected species, provided all
the claims to each additional species are writ-
ten in dependent form or otherwise include
all the limitations of an allowed generic claim
as provided by rule 141."

If claims are added after the election, appli-
cant must indicate which are readable on the
elected species.

### How EXPRESSED

The following text is ordinarily sufficient in
requiring election of species:

"Applicant is required (1) to elect a single
disclosed species under 35 U.S.C. 121, even
though this requirement be traversed and (2)
to list all claims readable thercon, including
any claims subsequently added. Section 809 .-
02(a) Manual of Patent Examining Proce-
dure."

This may be used instead of the three quoted
paragraphs in part (3) of this section except
where applicant is prosecuting his own case of
there are other reasons for believing that the
short form would not be understood.

It is necessary to (1) identify generic claims
or state that none are present, and (2) to clearly
identify each species involved.

## 809.02(b) Election Required-Ge- neric Claim Allowable [R-18]

When a claim generic to two or more claimed
species is found to be allowable on the first or
any subsequent action on the merits and election
of a single species has not been made, applicant
should be informed that the claim is allowable
and generic, and a requirement should be made
that applicant elect a single species embraced by
the allowed genus unless the species claims are
all in the form required by rule 141 and no more
than five species are claimed. Substantially
the following should be stated:

"Applicant is advised that his response to
be complete must include an identification of
the single, disclosed species within the allowed
genus that he elects and a listing of all claims
readable thereupon. Applicant is entitled to
consideration of claims to not more than four
disclosed species in addition to the elected spe-
cies, which species he must identify and list
all claims restricted to each, provided oll the
claims to each additional species are written
in dependent form or otherwise include all
the limitations of an allowed generic claim as
provided by rule 141."

## 809.02(c) Action Following Election [R-18]

An examiner's action subsequent to an elec-
tion of species should include a complete ac-
tion on the merits of all claims readable on the
elected species.

(1) When the generic claims are rejected. all
claims not readable on the elected species
should be treated substantially as follows:

"Claims
are held to be with-
drawn from further consideration under rule

142(b) as not readable on the elected species."

(2) When a generic claim is subsequently
found to be allowable. and not more than 4
additional species are claimed. treatment should
be as follows:

When any claim directed to one of said addi-
tional species embraced by an allowed generic
claim is not in the required form, all claims to
that species should be held to be withdrawn
from further consideration by the examiner.
The holding should be worded somewhat as fol-
lows:

"('Jaims
directed to species

are withdrawn from further con-
sideration in this case, since all of the claims
to this species do not depend upon or other-
wise include all of the limitations of an al-
lowed generic claim as required by rule 141."

When the case is otherwise ready for issue,
an additional paragraph worded somewhat as
follows should be added to the holding :

"This application is in condition for al-
lowance except for the presence of such
claims. Applicant is given one month from
the date of this letter to amend the claims in
conformance to rule 141 or take other action
(rule 144). Failure to take action during this
period will be treated as authorization to can-
cel claims to the nonelected species by Ex-
aminer's Amendment and pass the case to
issue. The prosecution of this case is closed
except for consideration of the above matter."
Claims directed to species not embraced by
an allowed generic claim should be treated as
follows: Claims
are for species not
embraced by allowed generic claims
as required by rule 141 and are withdrawn
from further consideration in this case, rule
142(b).

## 809.02 (d) No Species Claims [R- 18]

Where only generic claims are presented no
restriction can be required except in those cases
where the generic claims recite such a multi-
plicity of species that an nnduly extensive and
burdensome search is necessary. See $ 808.01 (a).
If after an action on only generic claims with
no restriction requirement, applicant presents
species claims to more than one species of the
invention he must at that time indicate an
election of a single species.

## 809.02(e) Generic Claim Allowable in Substance [R-18]

Whenever a generic claim is found to be al-
lowable in substance, even though it is objected
to or rejected on merely formal grounds, action
on the species claims shall thereupon be given
as if the generic claim were allowed.

The treatment of the case should be as indi-
cated in §§ 809.02 (b), (c), or (d).

## 809.03 Linking Claims [R-45]

There are a number of situations which arise
in which an application has claims to two or
more properly divisible inventions, so that a re-
quirement to restrict the application to one
would be proper, but presented in the same case
are one or more claims (generally called "link-
ing" claims) inseparable therefrom and thus
linking together the inventions otherwise
divisible.

The most common types of linking claims
which, if allowed, act to prevent. restriction be-

tween inventions that can otherwise be shown to
be divisible, are:

Genus claims linking species claims.

A claim to the necessary process of making a
product linking proper process and product
claims.

A claim to "means" for practicing a process
linking proper apparatus and process claims.

Where linking claims exist, a letter including
a restriction requirement only or a telephoned
requirement to restrict (the latter being encour-
aged) will be effected, specifying which claims
are considered to be linking.

For traverse of rejection of linking claim see
$ 818.03(d).

## 809.04 Retention of Claims to Non- Elected Invention [R-34]

Where the requirement is predicated upon
the non-allowability of generic or other type
of linking claims, applicant is entitled to retain
in the case claims to the non-elected invention
or inventions.

If a linking claim is allowed, the examiner
must thereafter examine species if the linking
claim is generic thereto, or he must examine
the claims to the nonelected inventions that are
linked to the elected invention by such allowed
linking claim.

When a final requirement is contingent on
the non-allowability of the linking claims, ap-
plicant may petition from the requirement un-
der rule 144 without waiting for a final action
on the merits of the linking claims; or he may
defer his petition until the linking claims have
been finally rejected, but not later than appeal,
rule 144, § 818.03 (c) .

# 810 Action on Novelty [R-18]

In general, when a requirement to restrict is
made, no action on novelty and patentability is
given.

# 810.01 Not Objectionable When Cou- pled With Requirement [R- 45]

A basic policy of the present examining pro-
gram is that the second action on the merits
should be made final whenever proper. § 706.07
(a). In those applications wherein a require-
ment for restriction or election is accompanied
by a complete action on the merits of all the
claims, such action will be considered to be an
action on the merits and the next action by the
examiner should be made final. When prepar-

ing a final action in an application where appli-

cant has traversed the restriction requirement.
see $ 821.01.

Although an action on novelty and patentabil-
ity is not necessary to a requirement, it is not
objectionable, ex parte Lantzke 1910 C.D. 100;
156 O.G. 257.

However, except as noted in § 809, if an action
is given on novelty, it must be given on all
claims.

## 810.02 Usually Deferred

The Office policy is to defer action on novelty
and patentability until after the requirement is
complied with, withdrawn or made final.

Ex parte Pickles, 1904 C.D. 126; 109 O.G.
1888

Ex parte Snyder, 1904 C.D. 242; 110 O.G.
2636

Ex parte Weston, 1911 C.D. 218; 173 O.G.
285

## 810.03 Given on Elected Invention When Requirement Is Made Final

Rule 143 last sentence states: "If the require-
ment is repeated and made final, the examiner
will at the same time act on the claims to the
elected invention." Thus, action is ordinarily
given on the elected invention in the action
making the requirement final.

### 811 Time for Making Requirement

Rule 142(a), 2nd sentence: "If the distinct-
ness and independence of the inventions be
clear, such requirement (i.e. election of the in-
vention to be claimed as required by 1st sen-
tence) will be made before any action upon the
merits; however, it may be made at any time
before final action in the case, at the discretion
of the examiner."

This means, make a proper requirement as
early as possible in the prosecution, in the first
action if possible, otherwise as soon as a proper
requirement develops.

### 811.02 Even After Compliance With Preceding Requirement

Since the rule 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 com-
plied ( Ex parte Benke, 1904 C.D. 63; 108 O.G.
1588).

### 811.03 Repeating After Withdrawal- Proper

Where a requirement to restrict is made and
withdrawn, because improper, when it becomes
proper at a later stage in the prosecution, re-
striction may again be required.

### 811.04 Proper Even Though Grouped Together in Parent Case

Even though inventions are grouped together
in a requirement in a parent case, restriction
thereamong may be required in the divisional
case if proper.

### 812 Who Should Make the Require- ment [R-45]

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

An examiner should not require restriction in
an application none of the claimed subject mat-
ter of which is classifiable in his group. Such
an application should be transferred to a group
to which at least some of the subject matter
belongs.

### 812.01 Telephone Restriction Practice [R-34]

If an examiner determines that a requirement
for restriction should be made in an applica-
tion, he should formulate a draft of such re-
striction requirement including an indication of
those claims considered to be linking or
generic. No search or rejection of the linking
claims should be made. Thereupon, he should
telephone the attorney of record and ask if he
will make an oral election, with or without
traverse if desired, after the attorney has had
time to consider the restriction requirement.
The examiner should arrange for a second tele-
phone call within a reasonable time, generally
within three working days. If the attorney
objects to making an oral election, or fails to
respond, the usual restriction letter will be
mailed, and this letter should NOT contain any
reference to the unsuccessful telephone call.
See $$ 809 and 809.02(a).

When an oral election is made, the examiner
will then proceed to incorporate into his letter
a formal restriction requirement including the
date of the election, the attorney's name, and a
complete record of the telephone interview, fol-
lowed by a complete action on the elected claims
including linking or generic claims if present.

If on examination the examiner finds the
elected claims to be allowable and no traverse
was made, the letter should be written on POL-
37 (Examiner's Amendment) and should in-
clude cancellation of the non-elected 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 tele-
phone call and thus requires action by the ap-
plicant should be handled under the Ex parte
Quayle practice, using POL-326; these would
usually be drawing corrections or the like re-
quiring payment of charges.

Should the elected claims be found allowable
in the first action, and an oral traverse was
noted, the examiner should include in his action
a statement under § 821.01, making the restric-
tion final and giving applicant one month to
either cancel the non-elected claims or take other
appropriate action (rule 144). Failure to take
action will be treated as an authorization to can-
cel the non-elected claims by an examiner's
amendment and pass the case to issue. Prosecu-
tion of this application is otherwise closed.

In either situation (traverse or no traverse),
caution should be exercised to determine if any
of the allowed claims are linking or generic be-
fore cancelling the non-elected claims.

Where the respective inventions are located
in different groups the requirement for restric-
tion should be made only after consultation
with and approval by all groups involved. If
an oral election would cause the application to
be examined in another group, the initiating
group should transfer the application with a
signed memorandum of the restriction require-
ment and a record of the interview. The re-
ceiving group will incorporate the substance of
this memorandum in its official letter as indi-
cated above. Differences as to restriction
should be settled by the existing chain of com-
mand, e.g. supervisory primary examiner or
group 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 primary examiner.

### 814 Indicate Exactly How Application Is To Be Restricted [R-45]

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

As pointed out in ex parte Ljungstrom 1905
C.D. 541: 119 O.G. 2335, the particular limi-
tations in the claims and the reasons why such
limitations are considered to restrict the claims

to a particular disclosed species should be men-
tioned if necessary to make the requirement
clear.

B. Inventions other than species. It is nec-
essary to read all of the claims in order to de-
termine what the claims cover. When doing
this, the claims directed to each separate sub-
ject should be noted along with a statement of
the subject matter to which they are drawn.

This is the best way to most clearly and pre-
cisely indicate to applicant how the application
should be restricted. It consists in identifying
each separate subject amongst which restriction
is required, and grouping each claim with its
subject.

The separate inventions should be identified
by a grouping of the claims with a short de-
scription of the total extent of the invention
claimed in each group, specifying the type or re-
lationship of each group as by stating the group
is drawn to process, or to subcombination, or
to product, etc., and should indicate the clas-
sification or separate status of each group, as
for example, by class and subclass.

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 re-
quirement is otherwise proper and the correct
disposition of the omitted or erroneously
grouped claim is clear.

C. 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 any one of the
linked inventions that may be elected. This
fact should be clearly stated.

### 815 Make Requirement Complete [R-18]

When making a 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 exam-
iner has any doubt as to the proper line among
the same, he should refer the application to the
examiner of the other art unit for information
on that point and such examiner should render
the necessary assistance.

### 816 Give Reasons for Holding of Inde- pendence or Distinctness [R- 45]

The particular reasons relied upon by the
examiner for his 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 combination and a
subcombination thereof, the examiner should
point out the reasons why he considers the
subcombination to have utility by itself or in
other combinations, and why he considers that
the combination as claimed does not rely upon
the subcombination as its essential distinguish-
ing part.

Each other relationship of claimed invention
should be similarly treated and the reasons for
the conclusions of distinctness of invention as
claimed set forth.

The separate inventions should be identified
by a grouping of the claims with a short descrip-
tion of the total extent of the invention claimed
in each group, specifying the type or relation-
ship of each group as by stating the group is
drawn to a process, or to subcombination, or to
product, etc., and should indicate the classifica-
tion or separate status of each group, as for
example, by class and subclass. Sce § 809.

### 817 Outline of Letter for Restriction Requirement between Distinct In- ventions [R-45]

The statement in §§ 809.02 through 809.02(d)
is adequate indication of the form of letter
when election of species is required.

No outline of a letter is given for other types
of independent inventions since they rarely
occur.

The following outline of a letter for a require-
ment to restrict is intended to cover every type
of original restriction requirement between
related inventions including those having link-
ing claims.

### OUTLINE OF LETTER

A. Statement of the requirement to restrict and
that it is being made under 35 U.S.C. 121
Identify each group by Roman numeral
List claims in each group

Check accuracy of numbering
Look for same claims in two groups
Look for omitted claims

Give short description of total extent of
the subject matter claimed in each
group

Point out critical claims of different
scope

Identify whether combination, subcom-
bination, process, apparatus or prod-
uct
Classify each group

B. Take into account claims not grouped, indi-
cating their disposition.

Linking claims

Indicate-(make no action)

Statement of groups to which linking
claims may be assigned for examina-
tion

Other ungrouped claims
Indicate disposition

e.g., previously nonelected, nonstatu-
tory, canceled, etc.

C. Allegation of distinctness

Point out facts which show distinctness
Treat the inventions as claimed, don't
merely state your conclusion that in-
ventions in fact are distinct

(1) Subcombination - (Subcombination
(disclosed) as usable together)
Each usable alone or in other identified
combination

Demonstrate by examiner's sugges-
tion

(2) Combination-Subcombination
Combination as claimed does not require
subcombination
1

AND

Subcombination usable alone or in other
combination

Demonstrate by examiner's sugges-
tion

(3) Process -- Apparatus

Process can be carried out by hand or
by other apparatus

Demonstrate by examiner's sugges-
tion

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

(+) Process and /or apparatus-Product
Demonstrate claimed product can be
made by other process (or appara-
tus)

By examiner's suggestion
OR
Process (or apparatus) can produce
other product (rare)

D. Allegation of reasons for insisting upon re-
striction

Separate status in the art
Different classification
Same classification but recognition of di-
vergent subject matter
Divergent fields of search

search required for one group not re-
quired for the other

E. Summary statement

Summarize (1) distinctness and (2) rea-
sons for insisting upon restriction, if
applicable.

Include paragraph advising as to response
required.

Indicate effect of allowances of linking
claims, if any present.

Indicate effect of cancellation or non-allow-
ance of evidence claims (see § 806.05 (c) ).

#### 818 Election and Response [R-38]

Election is the designation of the particular
one of two or more disclosed inventions that
will be prosecuted in the application.

A response is the reply 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 appli-
cant relies for his conclusion that the require-
ment is in error.

To be complete, a response to a requirement
which merely specifies the linking claims need
only include a proper election.

Where a rejection or objection is included
with a restriction requirement, applicant, be-
sides making a proper election must also dis-
tinctly and specifically point out the supposed
errors in the examiner's rejection or objection.
See rule 111.

### 818.01 Election Fixed by Action on Claims

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

### 818.02 Election Other Than Express

Election may be made in other ways than
expressly in response to a requirement.

### 818.02(a) By Originally Presented Claims [R-45]

Where claims to another invention are prop-
erly added and entered in the case 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, and sub-
sequently presented claims to an invention
other than that acted upon should be treated
as provided in § 821.03.

### 818.02 (b) Generic Claims Only -- No Election of Species [R- 38]

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 species of the invention he must
at that time indicate an election of 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 § 808.01 (a).

### 818.02(c) By Optional Cancellation of Claims

Where applicant is claiming two or more
inventions (which may be species or various
types of related inventions) and as a result of
action on the claims he 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

Rule 113. Reconsideration of requirement. If the
applicant disagrees with the requirement for restric-
tion, he may request reconsideration and withdrawal
er modification of the requirement, giving the reasons
therefor (see rule 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 be.
comes 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 response to a requirement may
be made either with or without an accompany-
ing traverse of the requirement.

### 818.03 (a) Response Must Be Complete

As shown by the first sentence of rule 143,
the traverse to a requirement must be complete
as required by rule 111(b) which reads in
part : "In order to be entitled to reexamination
or reconsideration, the applicant must make
request therefor in writing, and he must dis-
tinctly and specifically point out the supposed
errors in the examiner's action: the applicant
must respond to every ground of objection and
rejection of the prior office action.

and the applicant's action must appear
throughout to be a bona fide attempt to ad-
vance the case to final action. The mere alle-
gation that the examiner has erred will not
be received as a proper reason for such re-
examination or reconsideration."

Under this rule, the applicant is required to
specifically point out the reasons on which he
bases his conclusion that a requirement to re-
strict is in error. A mere broad allegation that
the requirement is in error does not comply
with the requirement of rule 111. Thus the
required provisional election (See § 818.03(b) )
becomes an election without traverse.

# 818.03 (b) Must Elect, Even When Requirement Is Traversed [R-18]

As noted in the second sentence of rule 143,
a provisional election must be made even
though the requirement is traversed.

All requirements should have as a conclud-
ing paragraph a sentence stating in substance:
"Applicant is advised that his response to
be complete must include an election con-
sonant with the requirement, see rule 143."

The suggested concluding statement should
be reworded to fit the facts of the particular
requirement, e.g .. as in § 809.02(a) second form
paragraph under (3).

# 818.03 (c) Must Traverse To Preserve Right of Petition

Rule 144. Petition from requirement for restriction.
After a final requirement for restriction, the applicant,
in addition to making any response dne on the re-
mainder of the action, may petition the Commissioner
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 reconsid-
eration of the requirement was not requested. (See
rule 181.)

# 818.03(d) 818.03(d) Traverse of Non-Allowance of Linking Claims [R- 18]

A traverse of the non-allowance of the linking
claims is not a traverse of the requirement to
restrict, it is a traverse of a holding of non-
allowance.

Election combined with a traverse of the non-
allowance of the linking claims only is an agree-
ment with the position taken by the Office that
restriction is proper if the linking type claim
is not allowable and improper if they are al-
lowable. If the Office allows such a claim it is
bound to withdraw the requirement and to act
on all linked inventions. But once all linking
claims are canceled rule 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 type claim).
that also prevents restriction, the merits of the
requirement are contested and not admitted.
Assume a particular situation of process and
product made where the claim held linking is
a claim to product limited by the process of
making it. The traverse may set forth partic-
ular reasons justifying the conclusion that re-
striction is improper since the process neces-
sarily makes the product and that there is no
other present known process by which the
product can be made. If restriction is made
final in spite of such traverse, the right to
petition is preserved even though all linking
claims are canceled.

# 818.03(e) Applicant Must Make His Own Election

Applicant must make his own election. The
examiner will not make the election for him,
rule 142, rule 143, second sentence.

# 819 Office Generally Does Not Permit Shift

The general policy of the Office is not to
permit the applicant to shift to claiming an-
other invention after an election is once made
and action given on the elected subject matter.
When claims are presented which the exam-
iner holds are drawn to an invention other
than elected he should treat the claims as out-
lined in § 821.03.

Where the inventions are distinct and of
such a nature that the Office compels restric-
tion, an election is not waived even though the
examiner gives action upon the patentability
of the claims to the non-elected invention, Ex
parte Loewenbach 1904 C.D. 170. 110 O.G. 857,

and In re Waugh 1943 C.D. 411; 553 O.G. 3
(CCPA).

# 819.01 Office May Waive Election and Permit Shift [R-38]

While applicant, as a matter of right, may
not shift from claiming one invention to claim-
ing another, the Office is not precluded from
permitting a shift. It may do so where the
shift results in no additional work or expense,
and particularly where the shift reduces work
as by simplifying the issues (Ex parte Heri-
tage Pat. No. 2,375,414 decided January 26,
1944). If the examiner has accepted a shift
from claiming one invention to claiming an-
other, the case is not abandoned (Meden v.
Curtis, 1905 C.D. 272; 117 O.G. 1795).

# 820 Not an Election; Permissible Shift

Where the Office rejects on the ground that
the process is obvious, the only invention being
in the product made, presenting claims to the
product is not a shift (Ex parte Trevette,
1901 C.D. 170; 97 O.G. 1173).

Product elected -- no shift where examiner
holds invention to be in process (Ex parte
Grier, 1923 C.D. 27; 309 O.G. 223).

Genus allowed, applicant may elect up to
four additional species thereunder, in accord-
ance with Rule 141, this not constituting a
shift (Ex parte Sharp et al., Patent No.
2,232,739).

# 820.01 Old Combination Claimed- Not an Election [R-45]

Where an application originally presents
claims to a combination (AB), the examiner
holding the novelty if any, to reside in the sub-
combination (B) per se only (see § 806.05 (b) ),
and these claims are rejected on the ground of
"old combination," subsequently presented
claims to subcombination (B) of the originally
claimed combination should not be rejected on
the ground of previous election of the combi-
nation, nor should this rejection be applied to
such combination claims if they are reasserted.
Ex parte Donnell. 1923 C.D. 54. Final rejection
of the reasserted "old combination" claims is the
action that should be taken. The combination
and subcombination as defined by the claims un-
der this special situation are not for distinct in-
ventions. (See $ 806.05(c).) See also § 706.03(j).

# 820.02 Interference Issues-Not an Election

Where an interference is instituted prior to
an applicant's election, the subject matter of
the interference issues is not elected. An ap-
plicant may, after the termination of the in-

terference, elect any one of the inventions that
he claimed.

## 821 Treatment of Claims Held to be Drawn to Non-Elected Inventions [R-45]

Claims held to be drawn to non-elected in-
ventions, including claims to non-elected spe-
cies, are treated as indicated in $$ 821.01
through 821.03. However, for treatment of
claims held to be drawn to species non-elected
without traverse in applications not ready for
issue (where such holding is not challenged),
see §§ 809.02(c) through 809.02(e).

The propriety of a requirement to restrict, if
traversed, is reviewable by petition under rule
144, In re Hengehold, 169 USPQ 473.

All claims that the examiner holds are not
directed to the elected subject matter should be
withdrawn from further consideration by the
examiner as set forth in § 809.02(c) and
§§ 821.01 through 821.03. As to one or more of
such claims the applicant may traverse the ex-
aminer's holding that they are not directed to
the elected subject matter. The propriety of
this holding, if traversed, is appealable. Thus,
if the examiner adheres to his position after
such traverse, he should reject the claims to
which the traverse applies on the ground that
they are not directed to the elected subject
matter.

# 821.01 After Election With Traverse [R-26]

Where the initial requirement is traversed, it
should be reconsidered. If, upon reconsidera-
tion, the examiner is still of the opinion that
restriction is proper he shall repeat and make
final the requirement in the next Office action.
(See § 803.01). In doing so, the examiner
should reply to the reasons or argument ad-
vanced by applicant in his traverse. If the
examiner, upon reconsideration, is of the opin-
ion that the requirement for restriction is im-
proper he should state in the next Office action
that the requirement for restriction is with-
drawn and give an action on all the claims.

If the requirement is repeated and made
final. in that and in each subsequent action,
the claims to the nonelected invention should
be treated substantially as follows:

"Claims
stand withdrawn from
further consideration by the examiner. rule
142(b), as being for a nonelected invention
(or species ) . the requirement having been tra-
versed in paper No.

This will show that applicant has retained
the right to petition from the requirement.
under rule 144. (See § 818.03 (c).)

When the case is otherwise ready for issue,
and has not received a final action, the examiner
should treat the case substantially as follows :
"Claims _____ L __ stand allowed.

"This application is in condition for allow-
ance except for the presence of claims
to an invention (or species) nonelected with
traverse in paper No. _. Applicant is
given one month from the date of this letter
to cancel the noted claims or take other ap-
propriate action (rule 144). Failure to take
action during this period will be treated as
authorization to cancel the nonelected claims
by examiner's amendment and pass the case
for issue.

"The prosecution of this case is closed ex-
cept for consideration of the above matter."

When preparing a final action in an applica-
tion where there has been a traversal of a re-
quirement for restriction, the examiner should
indicate in his action that a complete response
must include cancellation of the claims drawn
to the non-elected invention, or other appropri-
ate action (rule 144). Where a response to a
final action has otherwise placed the application
in condition for allowance, the failure to cancel
claims drawn to the non-elected invention or to
take appropriate action will be construed as
authorization to cancel these claims by examin-
er's amendment and pass the case to issue after
the expiration of the period for response.

Note that the petition under rule 144 must
be filed "not later than appeal". This is con-
strued to mean appeal to the Board of Appeals.
If the case is ready for allowance after appeal
and no petition has been filed, the examiner
should simply cancel the non-elected claims by
examiner's amendment, calling attention to the
provisions of rule 144.

# 821.02 After Election Without Trav- erse

Where the initial requirement is not tra-
versed, if adhered to, appropriate action should
be given on the elected claims and the claims
to the nonelected invention should be treated
substantially as follows:

"Claims
stand withdrawn from
further consideration by the examiner, rule
142(b). as being for a nonelected invention
(or species). Election was made without tra-
verse in paper No.

This will show that applicant has not re-
tained the right to petition from the require-
ment under rule 144.

Under these circumstances, when the case is
otherwise ready for issue, the claims to the
nonelected invention, including nonelected spe-
cies, may be canceled by an examiner's amend-
ment, and the case passed for issue. The exam-
iner's amendment should state in substance :

"In view of the fact that this application is
in condition for allowance except for the pres-
ence of claims
to an invention (or
species) nonelected without traverse in paper
No.
these claims have been canceled."

# 821.03 Claims for Different Invention Added After an Office Action [R-26]

Claims added by amendment following ac-
tion by the examiner, §§ 818.01, 818.02(a), to
an invention other than previously claimed,
should be treated as indicated by rule 145.

Rule 145. Subsequent presentation of claims for dif-
ferent invention. If, after an office action on an ap-
plication, the applicant presents claims directed to an
invention distinct from and independent of the inven-
tion 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 rules 143 and 144.

The action should take substantially the fol-
lowing form :

"I. Claims
are directed to
(identify the invention) elected by
(indicate how the invention was elected, as
by original presentation of claims, election
with (or without) traverse in paper No.

etc.) and applicant has received an ac-
tion on such claims.

II. Claims
are for
(identify invention, give factual showing of
reasons why. as claimed, it is distinct from
elected invention, show separate classification
or status, etc., i.e., make complete showing of
propriety of requirement in manner similar
to an original requirement).

Applicant is required to restrict the claims
to the invention previously elected, and thus
the claims of group II are held withdrawn
from further consideration by the examiner
by the prior election, rule 142(b)."

Of course, a complete action on all claims to
the elected invention should be given.

Note that the above practice is intended to
have no effect on the practice stated in § 1101.01.

An amendment canceling all claims drawn to
the elected invention and presenting only claims
drawn to the non-elected invention should not
be entered. Such an amendment is non-respon-

sive. Applicant should be notified as directed in
§§ 714.03 and 714.05.

# 822 Claims to Inventions That Are Not Distinct in Plural Applications of Same Incentive Entity [R-29]

The treatment of plural applications of the
same inventive entity, none of which has become
a patent, is treated in rule 78 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 § 304 for conflicting subject matter in two
applications, same inventive entity, one
assigned.

See §§ 305 and 804.03 for conflicting subject
matter, different inventors, common ownership.
See § 706.03 (k) for rejection of one claim on
another in the same application.

See §§ 706.03(w) and 706.07(b) for res judi-
cata.

See § 709.01 for one application in inter-
ference.

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

Wherever appropriate, such conflicting ap-
plications should be joined. This is particu-
larly 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 Co-pending Before the Exam- iner [R-26]

Under rule 78(b) the practice relative to
overlapping claims in applications copending
before the examiner (and not the result of and
consonant with a requirement to restrict, for
which see § 804.01), is as follows :

Where claims in one application are unpat-
entable over claims of another application of
the same inventive entity because they recite
the same invention, a complete examination
should be made of the claims of one application.
The claims of the other application may be
rejected on the claims of the one examined,
whether the claims of the one examined are
allowed or not.

In aggravated situations no other rejection
need be entered on the claims held unpatentable
over the claims of the other application. How-
ever, any additional claims in the one applica-
tion that are not rejected on the claims of the
other should be fully treated.

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