900

OCR transcription for search; preserved printed pages are authoritative

# Section 9. DIVISION; GENUS AND SPECIES

9-1.
Introduction

-2.
Basis for Practice

-3.
Discretion of Office in Requirement for Division

-4.
Determination of Distinctness or Independence of
Claimed Inventions

-4-1.
In Single Embodiments

-4-2.
Independent Embodiments; Genus and Species

-4-2.1
Patentability of Genus and Species Claims

-4-3.
Combination or Aggregation and Subcombination

-4-4.
Subcombination Claims usable together

-4-5.
Process and Apparatus

-4-6.
Process and Product made

-4-7.
Apparatus and Product made

-5.
Mixed Questions of Division

-6.
Effect of Dual Prosecution on Division

-7.
Elements of Office Action Requiring, Division

-7-1.
independent inventions

-7-2.
Related Inventions

-7-3.

When Linking Claims are Rejected

-7-3.1

Citation of Art

-7-3.2
Precise Division Required

-7-3.3
Make Requirement Complete

-7-3.4
Reasons to be given

-7-3.5
Sample Letter

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## 9-8. Election and Response

-8-1.
Procedure Relative to Genus and Species
-9.
Plural Applications with Overlapping Inventions

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### ^-1. Introduction

A requirement to divide or a remitent toalet
a species is on vetion by the exshiver which ruled that
two or more inventions or pauseles of in i wentim re
claimed in a single application, which inventions of
species of Invontlor ant le presented, if at :il, lo
separato applications.

### 9-2. Basis for Practice-Statutes, Rules

The basis of division ind election ractieo is
found in the following st tutes and rules:

Sec. 4886, R.S. Any person who has Invented or
discoverel any now and useful art
may
obtain a patent therefor.

Sec. 4888, R.S. Before any inventor or discoverer
shall receive a patont for his invention or dis-
covery
he shall particularly point out and
distinctly claim the port, improvement or combina-
tion which he claims is his invention or discovery.
Rule 11.1 Different invent ons in our ; plig tien.
Two or Dry inlep indent inventions can not be
claimed in one application; but (a) where sover.1
distinct inventions are dependent upon e el other
und mutually contribute to produce a single result
they may be claimed in one application, and (1 )
more than one species of an invention, not to et-
ceed three, as to specifically cleind in siff ...
ent el tu in my . plication, it
clin . voi ..

Road 11.2 Requirement For tivi.in. If We op .
inventions que el Hand in pln .. . . .
they rif uch a nature the t .. . .

he may elect, the offer ! Getin Lingettes

before any of relation merits; other
:oct any til. Febr. final setion in th
the af aretim of the manor.

1

: :: to !". Metin of INHA

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elected if not cancelled ure nevertheless withdrawn
from further consideration by the ex miner, by the
election, subject however to reinstatement in the
event the requirement for division is withdrawn or
overruled.

Rule: 11.3 Reconsideration of requirement. If the
applicant disagrees with the requirement for division,
he may request reconsideration, giving the reasons
therefor (see rule 15.1). In requesting roconsidera-
tion the applicant must indie te a provision: 1 elect-
ion of one invention for prosecution, which invention
shall be the one elected in the event the requirement
becomes final.

The requirement for division will be reconsid-
ered on such a request, but will not be repeated and
made finul without the written a provai of : n Examin-
er of classification, a copy of which approval shull
be supplied to the applicant. If the requirement is
repeated and made final, the Examiner will ut the
same time uct on the claims to the elected invention.

Rule 11.4 Appeal from requirement for division.
After u final requirement for division the applicant,
in addition to any response due on the remainder of
the action, nay appeal from the requirement. The
prosecution of claims to the elected invention may be
continued during such appeal. Apteul may be deferred
until after final action on or allowance of the claims
to the invention elected. Appeal may not be taken if
reconsideration of the requirement was not requested.

Rule 11.6 Subsequent presentation of ol ims for
different invention. If, after an office action on
an application, the applicant presents cl ims directed
to un invention divisible from the invention provi-
ously claimed such cl: ims, if the .mendm mt is enter-
ed, will be rejected an. the applic ut will be requir-
od to limit the claims to t! : invention previously
claimed. Such rejection n. r nirement will not be
reported and made final without the written a proval
of an Examiner of cl suific: tion.

Rule 11.7 Election of simies. In the first action
on an application containing a generic claim and clams
restricted separately to e eh of more than one species
embraced thereby, the Examiner, if of the opinion uf-
tor a complete search that no americ claim presented
is allowable, shall require the applicant in his re-
s onse to that action to elect that species of his
invention to which his ci ine shall le restricted if

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vor, if not to iic tio : cat : a fair ct-
ca to more L'on Auto s acics, tho * In r
Rocio priet boat of the ch ins Li he bre tton

:at hit on (po1 : 1! . 2),
ii -

jects of se net. : kie tions, lich mot coif ....
+: the rules . Licalle to pri, inl ; lietiom and
klausLientions. If such an application is fil i
Laforo the origin 1 :, Lisation in patata or le-
comes chanconed, and if it is ide the 1 1th the
origin 1 . piic tion es filsa, the drawings boing
identic. I and they were elbst tytube copy of the
origincl ) pors which were signed ona executed by
the inventor ( except that its claims are the orie-
inal claim. to the con rate invention and .otter
irrelev: ni thereto :y 'o deleted ), signing . nd
execution by the inventor wy brodittel; a ort-
ified copy of the official . prsty mine
to be out in the file wy combe stit tion may con-
sist in a copy of the drawings con ting to rules
rei tin . to drawings and a certifiod troo ritten
copy of the original application ne file, tooth-
er with an windmint puncollias the irrelevant
claims or other fi tter.

### 9-3. Discretion of Office in Requirements to Divide

At 1 :1. in Stein ta v. Allen, 100A CADA MES ;- 06-,
arbitrary muss to miliony dalia.

The way of the Office is that division is never
troper if the civic ( that matter would be subject to a.
rejection of the brand of double , thating. sometimes,
inven ted 1: 00

the Office : konig met In. i.t. r on it. ba-fx.

void because of that thet. No decision is known in which a
a tent has been found this ty retain of improper joiner of
inventions.

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### 9-4. Determination of Distinctness or Independence of Claimed Inventions

The general principles of distinctness or independ-
ence may be summarized as follows:

(1) Where there is no disclosed relation botwoen in-
ventions, the inventions are independent; in such a case
division is compulsory.

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

(3) Where inventions which as disclosed are related,
and are not distinct as claimed, division is never proper.

The criteria relative to p tentability of claimed
inventions over prior disclosures are the sume criteria that
are applied relative to double patenting, if double patenting
may result as a consequence of the requirement for division,
the requirement should not be made.

Rule ll.l draws a distinction between the two terms
"independent" and "distinct" by setting forth the criteria 1,
that independent inventions can not be claimed in one appli-
cation and 2, that distinct but mutually dependent inventions
may be so claimed. As used in this rule the term "independ-
ent" means that there is no disclosed relationship between
the two or more subjects disclosed, i.e. they are unconnect-
ed in design, operation or effect, e.g. species under u genus
which species are not usable together as disclosed. The con-
trasting term "distinct" means that two or more subjects as
disclosed are connected in design, operation or effect, for
example as combination and part ( subcombination) thereof, pro-
cess and apparatus for its practice, process und product mude,
etc., but are capable of separate manufacture, use or sale,
as claimed.

In passing upon the question of division, it is the
claimed subject matter that is considered and such claimed
subject matter must be compared in order to determine the
question of distinctness or independence.

ANY REASONABLE DOUBT AS TO INDEPENDENCE AND DIS-
TINCTNESS SHOULD BE RESOLVED IN APPLICANT'S FAVOR.

For the purpose of a decision on the question of
division, and for this purpose only, the claims are con-
sidered as being in proper form and as being patentable.
This assumption, of course, is not continued after the
question of division is settled and the question of pa-
tentability of the several cluims is taken up.

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The question of independence and distinctness of in-
vention may arise in applications disclosing a single em-
hodiment or u number of entodiments.

### 0-4-1. Single Embodiment, Claims Defining Same Essential Features

Where the claims of on aprlication define the same
essential characteristics of a single disclosed embodiment
of an invention, they should never be divided since there
would result a holding of double patenting. "This is obvi-
ously because the claims aro but different definitions of
the same disclosed subject matter.

Claims drawn to the same process or arparatus which
recite the same essential steps or means and differ only in
a statement of the function performed or the result obtained,
should not be divided for if divided, the second issued pa-
tent may be void ,

9-4-1.2
Differing in Use or Property Stated

Where a composition or compound defined in two claims
is the sume, the allegation in the one cis im of a use or
property not mentioned in the other does not myk . it a dif-
ferent composition or compound. Thus where claims to u com-
position or compound, some of which differ from the others
only by a statement of use or property, are in the came ap-
plication, division is not proper.

Division may be proper between a composition or com-
pound and a process of using the same.

#### Differing in Title

Closely allied with the situation of the preceding
section is where the s me inventive characteristics are piv-
en a different name or title. The different names ordinari-
ly connote different uses or functions that the subject mat-
tor may have, and division should not be required.

Differing in Prendth or Score Only

Where thelower . la won : single disclosed em-
bodiment,mert testes only in the !!!!
or scope of definition of auch - aledigent, division is never
proper.

0-4-2.
Intet Halodi ants

Rote il.i cont ino to mari in "two or pre fade-
pendent inventions comot . el ar in derglication,

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Independent embodiments necessitate at least two
different subjects, and lack of any disclosure of relationship
due to structure, operation, function or effect.

Two different combinations, not disclosed as capable
of use together, having different modes of operation, differ-
ent functions or different effects are independent. An arti-
cle of apparel 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. Obviously, where
two independent combinations are disclosed, a subcombination
of one of them which is incapable of use with the second,
would be independent of the second.

Where the two embodiments are process and apparatus,
and the apparatus can not be used to practice the process or
any part thereof, they are independent. A process of burn-
ing oil is independent of an oil burner which cannot be caused
to operi ,e in such a manner as to practice the process.

A manufacturing process is independent of an article
of manufacture when it does not produce or use such an arti-
cle. A process of painting a house which does not use a mag-
netio compass.

Similarly a manufacturing apparatus is independent of
an article of manufacture that cannot be made by the appara-
tus.

### Species of an Unclaimed Genus

Where claims to two embodiments are euch related to
a single unclaimed subject mutter, the claims may be for in-
dependent inventions, even though the embodiments may be dis-
closed as related to each other. Thus in a particular dis-
closure several species of inventions may be related as be-
onging to an unclaimed genus. In such a case tho claims are
regarded as drawn to independent inventions and a require-
ment for division is proper. Also, subcombinations usable
with each other may be species of some generic invention, as
in ex parte Healy 1898 C.D. 157, where a clamp for u handle
bar stem and a specifically different clamp for a seat post
for use on a bicycle were claimed and were held to be proper-
ly divisible since no combination claim was presented.

As a further example, one species of carbon compound
may have such chemical characteristics as to spontaneously
convort into a second species of carton compound. Those spo-
cies would obviously be quite closely related, but neverthe-
less be independent in the sense of the rule und therfore
divisible.

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# Species May be Related; Closely Related to Combination - Subcombination

The relation "combination - subcombination" pre-
sents the situation where plural claims are all readable
upon a single embodiment, where the relation is not speci-
fio claim to menus, but the relation of a whole to a part
thereof. A claim to a subcombination is not gonoric to
tho combination in which it is used.

Further, a claim to a combination is not poneric
to alternative elements that may be used in the combina-
tion. For example, a claim to an org nired machine which
has a cutting tool generically recited, is not a Pereric
claim that would pormit the claiming of three species of
cutting tool per se.

## Definition of a Generic Claim

In un application presenting three spocies illus-
trated, for example, in Figures 1, 2 and 3 respectively,
u pomorie claim should re: d on ouch of these views; but.
the fact that a claim does so read is not conclusive thet
it is generic. It may dofine only un clement common to the
Several specios.

It is not possible to sofine a @ nurie claim with
thut precision cristina in the case of the sciences, auch
as biology. hrmeric claim must be for the a me combin .-
tion : . the species el ins and just define broadly the ele-
mont or lesents . fish ... y rianto in the several sp. cie".
though tho americ al .in muy set forth in greater det: il
than i .. done in th ancios claims, those elements which
are common to all the acties.

One ; . gusta that tomutorained to be cenoric is
allowed, el In. restrict i ras ectively to the species em-
Erased it! in !! Paris el im lil 1 : wamined even
though they any .. inein y avoiry Linitation of the generic
ci Im us to thefuture Achardown to thesole.

Thus, fordert mye which Feitos the
species v: rin! . (@), 82) renerienlly but !s specific as to
characteristics ( ) conon the sever Luis, claim
restricted to the galaxy be remont ith i recited
sitter branky - Melty. For exit, claims an-

1\. .. . meille, E comorio

2\.
3\.

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In such cases it is to be noted that the p.tonta-
bility of claims 2 and 4 restricted to the species (A broad,
B] and A broad, B2) does not necessarily follow from the allow-
ability of the generic claim 1 ( A specific, B generic) .

The illustration assumes the situation where the broad-
er statement of the genus, A broad, B generic, is not present,
either because it has been shown by the examiner to bo unpat-
entable or because applicant has failed to present such a
claim.

The subject matter A is common to the two species
( A B]) and ( A B2). The claim drawn to ( A specific, B
generic) includes within its scope ench of the two species
and is thus generic thereto, and this is true regardless of
the detail with which the common features A are defined,
since the variant features that dete hine species B1 und B2
are generically defined.

The claims ( A broad, B]) and (A broad, B2) ure re-
stricted respectively to the two species, since euch claim
recites the detailed features (either B] or B2) which are
found in the one embodiment and exclude the second.

Species of invention are usually independent, und
come under the first provision of Rule 11.1 since there is
usually no disclosure of relationship therebetween. The
fact that a genus for two different embodiments is capable
of being conceived and defined, does not affect the inde-
pendence of the embodiments, where the case under consider-
ation contains no disclosure of any community of operation,
function or effect.

## How Species Claims are Recognized

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 recites limitations which under the dis-
closure are found in a first species but not in s second,
while a second claim recites limitations tischler only for
the second species and not the first.

## Claiming of Plural Species

Rule il.1 provides that "more than one species of in-
vention, not to exceed three, may be specifically claimed in
different claims in one application, if that application al-
so includes an allowable claim generic to all claimed species."

This constitutes an exception to the first arovigo
of the rule that independent inventions cannot be claimed in
one application.

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A definition can be rawr to embrace wit: in its
breadth or scope any two or more sul jects that come within
the patent statutes, no matter how diverse their specific
charset risties may be. If such : definition is presented
in an applicati m as a coin. it is a gomerie claim ana
must be treated on that basis.

Where auditional el Mak ere present of res actively
restricted to two or more of the different omlidlment: am-
ing within the breadth or scope of the ponerie claims,
treatment must be on the basis of plural claimed species
with & claimed gonus.

### 9-4-2.1. Patentability of Species and Genus Claims

It was early jold ( when the practice was to permit
the claiming of but a single species ) that when no potent-
able difference exists between the several disclosed spe-
cies, un application could claim one species and such ron-
eric claims as may be ullowable, rut that no claims re-
stricted to the other species could be allowed either in
the same or in semrute applications.

The above practice is still in force, as modified by
the change in the rule permitting the claiming of three
species.

Where generic claims ure alloyed, a olicant muy
claim in the same case species not to exceed three if the
species aro patentably distinct.

Other awiiations prosentod cluiming additional
species under the menue claiand in the first are closely
investigated to doter fine if the differences are in fact
patentable. "he claimed subject matter of the application
or later issued copen ing mitont to the same inventor
must be putentable over the species claimed in the earlier
issued patent either along or co bi iod with the prior urto

Species Must be Fatontally Distinct
rom Genus Claimed

A giorgio cho nast also be pitentaiiy fistinet from

There medlemmerunsere claimed in the same
apollonthin and where the Lack of ~ tentalle distinction
is clear them oies claim must be rejected on the sen-
gric cis im.

then hatten alle and scented. spe
cing claims to ma collection (comending with the

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application that resulted in the uptent containing generic
claims ) are properly rejected on the generic claims when
not patentably distinct therefrom.

# Generic Claims not Allowable When Presented for First Time After Issue of Species Patent

Where an applicant has separate applications 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 allowed, even though applications were
copending, and even though the genus is patenti ble over the
patented species, since by failure to present generic claims
until after issue of a patent on one species, the genus is
dedicated to the public.
៛

# Generic Claims in One Patent Only (generic claims in application rejected )

Generic claims covering two or more species which
are separately claimed in two or more patents to the same
inventor issued on copending applications must all be pre-
sent in a single one of the patents ..

Where generic claims are allowed in a p: tent, gen-
eric claims in an application by the same inventor are pro-
perly rejected on the ground of double putenting.

# Where Applications are Copending, Generic Claims May be Pluged in the One Applicant Elects

As between plural copondign applications for differ-
ent species, euch of which is capable of supporting generic
claims ap licant may eleot any one in which to present his
generis claims. However, applicant may not elect to have
generic claims in one application, without species claims
and claims to a species in another application. Applicant
should be advised to take the generic claims out in the
first issued of a series of prtonts to the same inventor
for different species under the genus. If this is done, and
the courts subsequently hold that the difference between
the claimed subjects of the several patents is unpatent-
able (courts hold dakle patenting), the lesser patents cov-
ering additional species are void, not the more important
first lasned patent covering the genus.

## 0-4-3 Combination or Aggregation und Sbucombination

A combination is an organization of which a sub-
combination (or element) is a part. An upgregation is also

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an orra ation of which a subcombination ( or element )
in . ......

The distinction between combination and serveration
is not material to questione of division. Whore & combi-
nution is alleged, it must be assumed to be allowable ..
Therefore ,in the following remarks, the term "combination"
will be ured to mean toth combination and aggregation for
ease of referring to the same.

## Old Combination - Novel Subcombination

Division is never proper between a combination (AB)
that the Examiner holds to be old and unpatontable and the
sube it inacien (B) in which the Examiner holds the novelty,
if any to roside.

### Combination with Subcombination proud ( Ası Bor - Dsp)

Where in un application, a combination as claimed
does not ant forth the deteils of the subcombination as
separately claimed. the inventions are distinct and divi-
sion may be proper. Division, however, is proper only if a
separate status in the art us & separate subject of invent-
ive effort can be shown for the subcombination, or, stated
another way if it can be demonstrated by appropriate cita-
tion of art that the subcombination is of utility alone or
in other : ni different combinations.

### Subcombination Essential to Combination ( AbrBsp - Bsp )

Have claims :re related such that the separately
claimed subeomination constitutes the essential distin-
phishing forture or features of the combination os claimed
the inventions are not listinet.

#### Bubcombination Recites Fouturos Having Utility Only in Combination

Where the clain to the subcombination recites features
which , ester the diseissare. are of utility only in the com-
bination. division is het proper unless it can be clearly
shown (novelty by citation of art) that such features arelof
aoro general utility or is a subject matter of invention
copurate brai distinct from the combination, as by separate
classification in the Office.

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Combination Recites Specific Subcombination.
Evidence Shows Subcombination not Essential
( AspBsp - Bsp )

The situation where the combination recites particu-
lar characteristics of the subcombination but there is evi-
dence that the particular characteristics of the subcombi-
nation are not essential to the combination, may be dia-
grammed as AspBsp - Bsp.

The best evidence that the subcombination Bsp is not
essential is one or more allowed claims in the case at the
time division is required, which claims the combination with
the subcombination recited as AspBbr.

## Subsequent Search May Show Combination

## to be old

Where sound reasons are advanced to clearly demon-
strate distinctness of invention between combination and sub-
combination and reasons exist for compelling division, divi-
sion is proper. A subsequent search of the prior art may
demonstrate that the combination is not allowable.

Since, however, at the time division was required,
two distinct and properly divisible inventions were claimed,
the fact that one or both are found not to be allowable be-
cause of prior art does not make the requirement improper.

# Combinations and Plural. Subcombinations (AB-A;B)

Where an application has combination claims AB and
also claims to two or more different subcombinations & and
B, each of the subcombinations must be tested separately
against the combination to determine whether it is divisible
from the combination.

# Composition or Compound

Relative to combination and subcombination, the prin-
ciples of division and double patenting in the chemical arts
are the same as in the mechanical and electrical arts when
the facts to which those principles are applied are analogous.

Where chemical facts are involved not analogous to
facts in the mechanical and electrical arts, the law relative
to division and double patenting has developed taking cogni-
zance of those specialized facts.

In some types of cases which involve questions of
chemical action, the Board of Appeals holds division is pro-
per between a combination which involves a composition or
compound as the sole distinguishing characteristic and such

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material ciuimod par do, where it can be shown that the
composition or compound has other ina different usos. The
dicisions of the Bourd are not, however uniform, and at
times they refuse division 'here the composition or com-
pound is the sole distin mishing feobure of tho combination.
9-4-4.
Subcombinations Usable Torethor

Subcombinations disclosed as usablo together ( in
some combination which is not claimed ) are generally dis-
tinct from ouch ot'er, particularly where there is no a-
daptation of one to the other. In such cases the Office
does not insist noon division where a separate fields of
search cannot be shown by citation of appropriate art.

# Are Not Necessarily Distinct

Where subcombinations disclosed as usable torother
are separately claimed, it is necessary to clearly estab-
lish separate and independent utilities for each as a ba-
sis for a holding of distinctness of invention. Lack of
such a showing may lead to the conclusion that they are
usable only together and thus are not distinct inventions.

## 9-4-5. Process and Apparatus for its Fructice

Steinmet :: v. Allon 1 04 C.D. 703; O.G. pivos a
broad general discussion of 'he principles to be applied
relative to division and double patenting amongst invent-
ions related as process and apparatus for its practice.
This is one of the basic decisions which every Examiner
should rend an wiprehond in principio thoroughly.

## Process can b. Practiced by other Apparatus

In the disonssion of combination and subcombination,
it was pointed out thet (with but y a few exceptions)
where the coal in tion involved the ankeontination es on es-
Dential part thereof, divia. m . s. navy prveir even though
the subcontInation hed utility ty itself or in offer and
different relations. In other words, as beteron combina-
tion and subgabin tions with very few exec tions, one way
dependency this entry to dest vin.

The same dan+ true relatty . to process and apou-
ratus for its practice. Division !. pour if there is
either and may distinctness or if there is two way dis-
tinctness ( usually s: fled mmenally distinct). Thus, if
it can !. shon by urpropriato evidence that the process
as claimed can be practiced by other a pratus or that the
apparatus de called can be used to practice another and

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different process or both of these, the inventions ure dis-
tinct. The alternative process or apparatus must not be in-
cluded within the scope of the claimed process or apparatus.

In cases where the process and apparatus pro mutual-
ly dependent, the apparatus claim is usually drawn in func-
tional terms, tho apparatus features being afther broadly
one or more means for e forsine the function or various de-
vices specified by type for performing the function, or the
process claim recitos the appe ratus characteristics quite as
particularly as do the appar: tus claims. In all of these
cases, the inventions, as cluimed, ure mutually dependent on
each other and, as claimed, neither con Fe Practiced without
the other. Each requires the other for its practico under
the terms of the clains. The inventions so claimed are not
distinet. Division is not proper, and if divided double
patenting may result.

Where the process is the necessary function of the
apparatus as claimed, process and apparatus ure mutually
dependent. The inventions are not distinct.

Where the process recites particulars of the appara-
tus that is separately claimed, the two are never distinct.

A process and the apparatus for its practice where
the apparatus ciuim is drawn in terms of means or a series
of means to practice the several process steps, should not
be allowed in one application. In In re Arendt 1935 C.D.
455 O.G. 7, claims to a process of motor vehicle propul-
sion were held unpatentable over the aper tus as cinimed
in appellants prior ptont granted on a copendine corlica-
tion. The court quoted and approved the statement of the
solicitor of 'he Patent Office in his briof ( 1935 C.D. at
pure 252).

"The true test of independence of the
subject matter of the method elaine and th
apparatus claims lies not in the disclosures
in the specifications, but in comparison of
of the things enumerated in the respective
claims themselves. The method cloths gate
the doing of curtoin acts. The appsruins
claims claim broadly "means for" doing the
same acts, without reference to any angoffic
means. the apparatus claims are intended to
cover all means for dolny the tets specified.
That being so, there is no other apparatus
for doing the gets specified, or the method
can be carried out on y by the apparatus
claimed. The case, of course, might be dif-
forent if the apparatus claims involved any
particular structure of meune for performing
the functions indicated. As before indicated,

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it is conceivable thut : variety of specifi-
cally different means nicht be used to per-
form the sume function. But that is not the
case, because hure the apparatus is not limit-
ea to thy Articuler structure of moans. In
other words, there is but a single invontive
id : , . 1th no potentablo distinction, in set-
itar forth a series of steps of process or In
."math means for doing the same series
9-4-6.
Process and Product Made

In this situation, claims for process and product
mide are for distinct invention where there is no depend-
oncy between thom or where there is but one way dependency.

It is noted that a blank, stock material or inter-
mediate is troatod as a subcombination and a process that
oborutog thereon to convert or change it, is troated os à
combination. Whether or not division should be required
depends on whether the inventions are distinct or not.

There is two way dependency between a product and
& process of making the same which process us claimed is
either the necessary way of making the product or is obvi-
ous from a consideration of the characteristics of the pro-
duct. If the process claimed is obvious, it is immaterial
that there are additional, different processos obvious or
unobvious. In such : case, the inventions are not distinct.

Where the process as claimed necessarily produces
the product, na it cannot be demonstrated that the product
us claimed can be made by other processes, the inventions
ure dependent.

Where the product claim recites the particular pro-
cero of making it, it is never distinct from the process,
since, under the terms of the claims, the product oun not be
made by other processes.

'Then the product can be made by other processes, and
the process alias : is not an obvious way of making the pro-
quet or it is not obvious from a consideration of the churac-
teristics of the product how It was Made, the inventions ope
distinct. each other process must not be pabraced within
the scene of the process te claimed.

Ja o' ses of one wy dependency, namely where the
process necessarily produces the product, but it con be
shown that the ronet ss claimed can be made by other "ro-
cessos , division is procur.

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Where process and product are mutually distinct,
namely, where the process will produce other articles and
the article can be produced by other processes, division is
proper.

9-4-7.
Apparatus and Product Made

The question of division or double patentine botroen
manufacturing apparatus and the product made thereby, soldom
arises. In all situations, it should be tested in the same
manner for distinctness as between process and product made.

### 9-5. Mixed Questions of Division

In the preceding, the various relationships between
claimed inventions were broken down into several types cou-
pled together two at a time. Many applications involve mix-
ed questions. Applicant will disclose two or more species
of an invention. He may claim these species generically
und specifically. Each of the species may be for a combi-
nation and relative to each species one or more subcombina-
tions may be claimed. The several species may be processes
and he may disclose for each process specius a different spe-
cies of apparatus for its practice and claim the apparatus
both generically and specifically and also claim one or more
subcombinations of each type of apparatus. Where the process
is a manufacturing process and the apparatus is a manufactu-
ring apparatus, two or more different intermediates, stock
materials or blanks may be disclosed which may be claimed
both generically and specifically. The product made by each
of the species of process utilizing the corresponding species
of apparatus may be claimed and the several species of pro-
cess may produce several species of final product so that
the several final products may be claimed both genericelly
and specifically.

Some only, or all, of these situations may be pre-
sent. The case must be studied. Each character of rela-
tion ship must be properly classified and then tronted on
the basis of the principles appropriate to it.

One common mixed question of division is where spe-
cies of inventions are presented, euch separately claimed
with the gonus also claimed. In addition there are present-
ed claims to a second character of invention not distinct
from and thus not divisible from each of the several species,
but with no claim to & genus for the second character of in-
vention, cither due to failure to present such claims or
due to cancellation of such generic claims after a rejection
thereof. This situation may be diagrammed relative to pro-
coas and product made as follows:

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Method Generic

Method

Species I

Product Specios

I

Method

Species II

Product Spocies

II

Method

Species III

Product Spocios

III

When the generic method is allowalle, division is not
proper amongst the three species of method (Rule 11.1) .
Thus the applicant is entitled to prosecute in that single
application the three species of method due to the presence
of an allowable genus, whether or not he is also entitled to
claim the three species of product depends upon the princi-
ples set forth in Section 9-4-6. The generic method is,of
course, not generic to the products.

### Effect of Dual Prosecution on Division

Duul prosecution practice (see Section 10-4) by which
inventions (which us claimed, are not divisible) are acted
upon by different examining divisions of the Office, has no
bearing upon the propriety of a requirement to divide. Such
practice does not modify in any way the practice of division,
being designed merely to facilitate the handling of cases in
which division can not properly be required where considera-
tion in two or more examining divisions is considered neces-
sary.

9-7.

### Elements of Office Action Roquiring Division

Every requirement to divide hus two aspects, (1) the
reasons (as distinguished from the mere stutement of conclus-
ion) why the invention us claimed are either independent or
distinct, and (2) the rousons for insisting upon division
therebetween.

The criteria that determine whether or not division
should be insisted upon are different for independent inven-
tlons and for inventions which, though distinct, pro reistod
under the disclosure of the application.

9-7-1.

#### Independent Inventions

Where the inventions claimed are independent, i.c.
whore they are not connected in design, operation or effect
under the disclosure of the particular application under con-
sidoration, the facts relied upon for this conclusion are in
essence the reasons for insisting upon division, since under
Rule 11.1 division is ; ndatory. This situation, except for
species is but rarely preconted, since few orsons will file
an application containing disclosure of independent things.

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Where there is no disclosure of relationship between
species, they are independent inventions, and division there-
between is mandatory, even though tore is no retenterle dis-
tinction tetoon the species .a ol land. Thus the rossons
for insisting upon division letyeen species, ere the facts
relied upon for the conclusion that there are aisims re-
stricted rospotively to two or More different anecios that
are disclosed in the application.

An exception was m de by the amendment to the rules
permitting the claiming of three species when . claim senerio
thereto Is allowed. The menlatory regnir ent to divide ap-
plies to all claims restricted to species in excess of three
Included within the allowed wenns, even though these : ddition-
ul specios are not allowatio over either the other species
or the allowed genus.

Even though the Exuninor rejects the roneric cisims,
and even though the applicant o nocle the same and thus ad-
mits that the genus is unputentable, where there is a rela-
tionship disclosed between spocies, such lisclosed relation
must be discussed and ressone adv need leading to the conclu-
sion that the disclosed roletion doop not prevent division.

9-7-2.
Related Inventions

Where, as disclosed in the application, the several
inventions claimed are related, and such related inventions
are not patentably distinct as claimed, division is never
proper .

Where the rol: td inventions As cle tand aro shown
to ko distinct, it is the Office policy to pornit them to
by claimed in one application where they are classified to-
other and involve the sume field of search. The Examinar
st chow by appropriate citation of art at least one of the
following, in order to establish reasons for insisting upon
division:

(1) Separate classification thereof;

This shows that euch distinct subject has
attained a separate status in the art as a
separate subject for inventive effort, und
also a separate field of sourch.

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

Even though they are classified together,
by oiting appropriate art from the single sub-
class, each subject oun be shown to hovo formed
a seperate subject for inventive effort when

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Some extent Into the on a jet
Into the other subject.

(3) www field of march;

It de nesway to reach for one
of the distinct mnieta in Les where no
pertinent wat to the other suldet exists, a
seper te field of search is shown, even though
the to re classified to etter. "he urt
cited to m'a a separate field of anarch must
in fact he pertinent to the type of subject
matter of red by the chains.

Where, however, the classification Is the same und
the field of : wirch is the same nu there is no clear in-
dication of coparte fiture classification und field of
search, no reasons exist for dividing among related inven-
tions. This artiomi rly true in the manufacturing arts
where menufeeturine processos and the resultant product
are classified toroth ir, e.g. Carbon Compounds lass 260.

#### 9-7-3. When Linking Clains Rejected - Proper

There are a number of situations which crise, in
which an " lix tion l s etias to two or more properly
divisible inventions, but presented in the come onse are
one or more claims to invention ( - nerally called "link-
ing" claims ). indivisible from each and every one thereof.
These claims fins link torathor inventions otherwise di-
visible.

Where the g'tu tion exists, and it is found after a
complete cxcale tion of the linking claims that they are not
allowable, anchel'as well treated ml division re-
mired trong the ahl different in motions el food. Such
requirement should he's dass erl. La the coronation of
the case 49 pox ilin, thor 's 's soon as tho propriety
for it is asextain der develops. an early disapproved
requirement for af . imay be repeated where the prose-
culion a riffy * incepandonge or distin thets of the
inventions.

No action on novelty wat mettent. bility need be made
on the cillas to th. distinct investi ms, but it should be
mintalot to the .. ilont thy the inventions are distinct
.. inte , nient, and in c .ses not invoisine wav , and species,
the redsand the one of Him to Find atatover , even
Here :tommy med atty is not necessary
to a reply sunt to telte or elcet a samies, it is not
of Jectionable to wet in Ml of the remaining :la ins.
Should the Ex einer wat an army of camias of his own
selection, the efic nt chonta be advised that ho is not

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bound to accept this group of claims for prosecution in
the instant application.

The Examiner is bound to act on 'he claims relating
to the elected invention at the time that he makes final
the requirement for division or election.

After election, linking claims if presented again,
either in its original or in an amended form, must be ux-
umined with the invention elected, and should any linking
claim subsequently be allowed, rejoinder of the divided in-
ventions must be permitted,, The divisional practice has
been carried over into the class of claims involving genus
und species. However, as stated by Rule 11.7, no more than
three species may be claimed in any event, in ono applica-
tion. The last sentence of the rule, that the Examiner may
require restriction of the claims so that not more than three
species ure separately claimed, is permissive. It should
be used only when a claim is allowed on the first action
that is generic to three or more of the disclosed species,
and more than three species are separately claimed.

Rule 11.1 and 11.7 require that election must be of
one, two or three of the disclosed species, not of claims,
and the elected species must be clearly identifies.

In requiring election of species the Examiner will
note that the application contains claims restricted to more
than one, or more than three disclosed species that he must
clearly identify, . for example, the species of Figs. 1, 2
und 3 or the species of xamples I, II und III respectively.
Or, in the absence of distinct Pirates of examples to ident-
ify the several soncios, the mech nical means, or the partic-
ular substance, or other distinguishing characteristic of
the species should be stated for bach species noted. Group-
ing of claims for the respective species should not be made
unless the species cannot be otherwise identifies. The re-
quirement in each case should be for a eligant to elect the
particular disclosed species.

Applicant should be advisua that his response to be
complete under Rules 11. 3 am 15.1 must include en identi-
fication of the disclos ri Mascles tl t be giveto comu inant
with the requirement, and a listing of all cl.1ms restrict-
ed or generic thereto, An atgreat that the : norte claims
are allowable, or that ail altima are reneric, or amended
to be generic, unless acertamled by an election, is non-
responsive.

An Examiner's action subsequent to an election of
species shonid Include a complete action on the merits of
all claims which are readable on the elected species. All
other plains should be rejected as not readable on the

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elected species. Should there be : disagreement as to the
listing, the Examiner shall point out the reason therefor.

Whenever a generic claim is found to be allowable in
substance, even though it is objected to or rejected on
merely formal grounds, action on the grocies ala ims shall
thoreunon be given as if the generic claim had been allowed.

Since rejection of the generic claims is . prereq-
uisite to the rognirement to elect ( except where generic
claims are allowed and more than three species are sepa-
rately claimed ) the rejection should be on the best urt to
anticipate the genoric claims that a complete soarch makes
uvailable, and for the best reasons that the Examiner can
present.

Where division is required predicated upon the non-
allowability of generic or other type of linking claims, ap-
plicant is entitled to rot in in the c: se claims to the moon-
elected invention or inventions so long .@ ho proscontos a
generic or other type of linking claim.

If a linking claim is allowed, the Exominer must
thereafter. without further request from the applicant,
examine species not to exceed three if the linking claim
is goneric thereto, or he must examine the claims to the
non-clocted inventions that are linked to the clected in-
vention by such allo ed linking; cluim.

Obviously, since the requirement to divide is pre-
dicated on the non- llowability of the linking claims, ap-
peal should not be immediately taken as provided for by Rule
11.3. If the Examiner allows # linking claim, he will then
act on the non-elected inventions linked. If he finally re-
jects the linking claims, the Board can then p: ss upon the
propriety of the final rejection. If the Board allows the
linking claims, the remiremont is made void.

An Examiner should not require division in an appli-
cation none of the claimed subject matter of which is class-
ifiable in his division. Buch an application should be
transferred to a division to which at least some of the sub-
ject mitter belongs.

However, if one or pro claims belong to the Exam-
iner having the case, and he believes that division is
proper, he should retain the case and make the requirement
to divide even though the claims that control classification
belong in an aber division. If the subject matter elected
belongs to him, a nebulosa contlo transfor is avoided.

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9-7-3.1

#### Citation of Art

As pointed out in general previously the wxaminor must
cite art to substanti te his requirement to divido:

Whore generic or other type linking cla lis
are rejected the best art and the best reasons
should le viven for th repetion.

Art resulting from a cursory soarch parti-
nent to the several inventions is citod. It
is not necessary to cite art to show separate
classification, a separate status in the art or
a separate field of sesroh, where it is shown
that the inventions as disclosed in that par-
ticular case uro in fact Independent.

A cursory search should be made and the mont
pertinent .rt found should to cited that shows
separate classification, . : oparta status in the
art or a soperate field of sourch. It is the
claimed subject matter of U.S. p: tents that shows
the first two. . ny disclosure pertinent to the
claimed sul ject matter of the aplication shows
the third.

5-7-3.2.
Precise Division Required

The indication of how to divide between species is
set forth early in Section 0-7-3.

As mintos out in ex werte Ljungstrom 1905 C.D. 541,
119 O.G. 2215 the particular Limitations in the claims and
the reasons why suel ; Imitations fre camtired to restrict
the claims to a bertie lar disclosed species should be men-
tioned if necessary to indie te el . riy the ling of division.

Whether the et tis aire circcted to different specios
of invention or different Inventi ins, it is necessary to
read all of the cialis in order to determine what the claims
cover. When walny this, the ai ims directed to auch sepa-
rato genus, spelet are subject este noted on a separate
sheet of paper . aloge sig, tote pot of the attor to
which they are truth or in tobuter form. Thon, in writing
to the agilent, the ent let etter at one intention and
Its Gesorteerd el 1: should be set apart from the subject
matter of another invention and its associated claims.

While every etoim should be accounted for, the o-
alasion to gramma claim, or slatina claim in the wring.
wrap will not affect the Final retirement
there the r. autrement sewith rice proper and the correct

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Giemsition of the atre door erroneously Frowned claim
1\. 1 ....

The generus or water linking where should not be
associated with any way of the linked Inventions since
such clains sust to en dined with any one of the linked
inventions that my telest di. Miis that should le
clearly :+ + 2.

r-7-3.3.
MED GONE THE Complete

When i hing : se aire want to liviaa, overy effort
should be mes to have . .. .... Frewent to Civile complete.
othor division :nd the . ther has any doult :s to the
proper sind for telefon way the same, he Should Dofr
the application to the einer of the ath theaction ".
information on that. .... in such a aimer should render
the Bro mbtay mor i.t.i.s .

:- 7-3.4.
Reasons

The artioma ~ ~ sons relied upon ty the Examiner
for his holding tht **. inventions as cluleis ure either
independent or distinct, Chand is concisely stated. A
more atutcent of poonajustoon is in 3stato. "he ringons
upon which the conclusion is based should be given.

For extra, in I thing that plural species are
claimed, the particules Limitations weitid which are
re: dable nron one dise cend praise ghoul : be referred to
had the pawn ty under the disclosure, the other spe-
cies . e DASIyou.

Native to wait tion and a enbcontinuation there-
of, the Meiner show saint out the persons why he con-
afders the width mentality by it alf o" in
wor conti . tion , na. hy be consi er: that the contine-
tim as olie det - selv won the falconker tion as

bestede by theend w. the way for the seaclusion of

9-7-3.5
Outline und Sam le Letter

Relative to saveice, it is thought that the mutter
in the early part of Section 0-7-3 is adequate indication
of the form of letter when election of species is required,
there being no allowable Generic claims.

The folly ins peraine for . ro girenont to divide

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and sample letter is intended to cover every type of divi-
sion requirement as to form, including those having linking
claims between related inventions, except species because
they. are treated in Section 9-7-3 and other characters of
independent inventions because they rarely occur.

#### OUTLINE AND SAMPLE LETTER

A

Citation of art

Preferably tvo patents for each type of invention
Group by spacing
Identify groups by Roman numerals
Give original classification (not X or UX)

B
Statement of the requirement

Identify each group by Roman numeral
Same as corresponding patent groups
List claims in each group
Check accuracy of numbering
Look for same claim in two groups
Look for omitted claims
Take into account cloims not grouped, indicating their
disposition

C
Statement of facts

Give short description of total extent of the subject
mutter claimed in each group
Point out critical claims of different scope
Identify whether combination, subcombination,
process, apparatus or product
Classify euch group und refer to corresponding patent
for evidence
(Note B and C are usually worked in together, soo form letter)

D
Special treatment of ungrouped claims
Linking claims
Reject
Make con lote rejection, giving reasons there-
for
Statement on groups to which linking claims may be
assigned for examination
Other ungrouped claims
Indicate disposition
eg: previously non-elected, non-statu-
tory, canceled, etc.

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##### Sample Letter

A sumple letter follows:

This application has leon examined.
References cited :

I Chith

3. 336.517

Dec. 25, 2000

123-31

Jones

5,698,521

Nov. 27, 1966

123-31

II Doe

3,210,456

July 4, 1976

261-39

Roe

3,336,060

Oct. 12, 1992

261-39

III X Y

3,456,789

Feb. 29, 1990

123-69

3,000,001

Muy 30, 1966

123-69

Division is required as follows:

I
Claims 1-6 which recite an internal combustion engine
combination and would be classified with the Smith
and Jones patents.

II C

II
Claims 7-12 which recite a carburetor subcombin: tion
und would be classified with the Doe and Roe patents

III Claims 13-18 which recite a spark plug subcombination
and would be classified with the X and Y patents.

Claim 19, which recites the specific details of both
the carburetor and the spark plug und is thus not divisible
from either, is rejected on the ground of uppreration (give
statement of reasons). For purposes of examination it muy
be retained with either Group II or Group III, and if a com-
bination of this type is found allowable the question of re-
joinder of Groups II and III will be considered.

Claim 20, which is rejected as indefinite and not in
com; lance with Revised Statutes 4888, may bo ret: ined with
any group for pirposes of examination.

Claim 2] drawn to : leering structure, is rejected as
being for a previously non-elected invention.

The several inventions are distinct, ouch from the
others, because (1) the engine contination, as defined in
the claims of Group I, does not recite por mes the engine
require either the specific carburetor subcombination as do-
fined in the claims of Group III, and (2) the curtur tor und
spark plug subgent functions have separate utility in other
and different combinations. For example, the carburetor of
Doe and the spark .ug of X conte be used in the combination
defined by the claims of Group I. The carburetor and spork
plug as defined in Groups Il ant III could equally well be
used in a furnace coml ination.

M

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Point out fiets which show with thetimes
Trout the iny inti ins as tolaed, do not merely
st: te your conclusion that inventions in fact
ure distinct

(1) Subcombination - Subcontination ( jsclosed as
usable tor ther)
Each usable :lo! : )" in othor Identified
combination
Demonstrate by site! : tant
Demonstrate ty Xxx diner's suprastion
(2)
Combination - Subeomt Ination
Combination As claland was not require
subcombin: tion

and
Subcombination usable alone or in other
identified cool In: tion
Demonstrate by cit wtent
Demonstrate by Examiner's sugestion
(3)
Process - Apparatus
Process can be carried out by hand or by
other anpuratus
Demonstrate by cited outent
Demonstrate by Examiner's oncrestion
or
(1)

Demonstrate a pratus o n . : used in other
process ( rare )
Process and for aper tus - product
Demonstrate cisine prodnet can be Made
by other process ( or a, porutus)
By cited patent
By Examiner's an . stion

or
Process (or apparatus) e'n produce other
product (rare)

Allocation of reasons for insisting non division (Sec-
tion 9-7-3.4)
Must be demonstrated by citation of art
Separate status in the art
Different classification
Refer to exemplary p. tento
Bane classifie: tion
Refer to exemplary o t nts
Divercont fields of search
Search required for one group not required
for the other
Refer to oxamplyry patents

F

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Since those distinct inventions hive euch acquired
a separate status in the art as shown by the different
classifications of the above cited exemplary art, and since
the fields of search for the respective Inventions are not
coextensive, division is proper.

0-8.

##### Election und Response

Rule 11.2 authorizes the Examiner to require uppli-
cunt to limit the claims to whichever invention the appli-
cant elects.

The expression "limit the olaims" does not mean
that all reference to the non-elected inventions must be
eliminated from the application.

Election is the designation of the particular one
of divisible inventions that will be prosecuted in the
application. Election may be made in other ways than ex-
pressly in response to the requirement.

A response is the reply to each point raised by the
Examiner's action, and may be a compliance or, in accordance
with Rule 11.3, include a trevorse.

traverse of : re niroment to divide is a statement
of the reasons upon which the applicant relies for his
conclusion that the re nimoment is in error und must be com-
plete as required by R ls 15.1.

Election herons fred ther after either an implied
or express election on the rapt ne contient, the claims
in an application have received an action on their merits
by the Office. "lie at mistake his own Lection,
whether of hill in mot ton of bec use of a capirement to
divido. The Ty iner 'll ret : " el ction for him.
Med to the invention properly added
und entered in the anlatan offen tuin, insofar
as ol ation to someone, they de tede original
cl ......

Only when c. & cobri dadlly asserted have been
acted upon by the Office m their amrits has the invention
elected by an applicant toun fixed. Subsequently prevented
claims to a divisihis invention should be entered but
required lo bo once ; in other words, they .houts be
rejected ta bela. for ha Intention other than elected.

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Where the originally presented claims are still
generic to the several disclosed species, no election of
a single species has been made.

Where applicant is claiming two or more inventions
which may be species or various types of related inventions,
and as a result of Office action on the claims he cancels
the claims to one or more of such inventions, leaving claims
to at least one, and which claims are acted upon by the
Examiner, the claimed inventions that remain in the case
are elected.

Under former practice, some requirements to divide
required an election even though accompanied with a
traverse, others did not. Rule 11.3 makes the practice
uniform. An election must be made in response to all
requirements to divide even though accompanied by a
traverse of the requirement. Requirements to divide, if
traversed, will not be repeated without the written
approval of the Examiner of Classification. From this
repeated requirement, and not otherwise may applicant
appeal. Thus, in order to appeal the requirement to
divide, the applicant must traverse the requirement, an
Examiner of Classification must approve the requirement
and the Examiner must repeat it and make it final.

As first stated in ex parte Higinootham 1922
C.D. 29, an election following a requirement to divide,
which election is made without traverse of the requirement
results in loss of right to appeal from the requirement.
This results from the fact that applicant has acquiesced
in the accuracy of the holding so that the question is
not twice acted upon; and appoalable questions must be
twice acted upon to give the Board its jurisdiction.

A traverse of the rejection of the linking claims
is not a traverse of 're requirement to divito, it is a
traverse of a holding of non-patentability.

Election combined with a traverse of the rejection
of the linkin: claims only is an agreement with the
position taken by the office that division is propor if
the linking type claim is not allover and impropor if
they are allowed. The Biginnotham doctrine does not apply
so long as linking claims are urgen to be allowable since
Rule 11.3 makes an election mandatory, and, if the Office
allows such a claim, it is bound to withdraw the require-
ment and to act on all linked inventions. But once all
linking claims are canceled tre doctrine would apply,
since the record would be one of agreement as to the
propriety of division.

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Such a rejection is a requirement to divide, but
does not give applicant a second right of election since he
had previously made sis election.

Where the inventions are distinct and of auch a
nature that the office compels division, an election is
not waived even tho the Examiner gives action upon the
patentability of the claims to the non-elected invention.
The benefits received by an applicant through an Examiner's
oversight are not such as would compel the Office to
continue a mistake after its discovery.

9-8-1.
Species, with or without Genus

Where generic claims are rejected, a traverse of
the rejection is not a traverse of the requirement to
divide between the species, and Is not reviewaole except
on appeal .

Where there is no difference of opinion between
the Examiner and applicant that the sole question is one
of species, and since division between species is mandatory
there is nothing to be reviewed by an Examiner of Class-
ification.

Even though the claimed subjects are species, and
even though the goteric claim is rejected, when the traverse
is on the ground treat there in some relation other than or
in addition to the fact that plural species are claimed,
the case is submitted for revlov by on Examiner of Class-
ification.

For example :

(1) Where linking claims are rejected and
division required but the Examiner fails to hold
that the rejected linking claims are gonorio.

(2) Where the Examiner holds claims to be
generic and rejects some, and applicant trovorses
on the ground that the claims are not generic out
are for a suscombines lon common to the invont ions
olaimed .

(3) Where the traverse In on the ground
that the species are tlacloand an used in a
single combination and are indivisible for that
reason, even though the gonerio claims aro rejected.

All mixod requirements to divide sould be submitted
for review.

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Where, however, there is a traverse on the ground
that there is some relationship (other than on: in
addition to the linking type claim) that also prevents
division, the merits of tre requirement are contested
and not admitted. Assume a particular situation of
process and product made where the claim neld linking =
is a claim to a product limited by the process of making
it. The traverse may set forth particular reasons for
the conclusion that division is impropor since the process
necessarily makes the product and that there is no other
present known process by which the product can be made.
Ir division is approved and made rinal in spite of such
traverse, the right to appeal is preserved even though
all linking claims are canceled.

The Iliginbotham doctrine does not apply in connection
with species where the generic claims aro rejected.

While an election without traverse of the requirement
results in loss of right of appeal, it does not result in
loss of right of review vy an Examiner of Classification
on the question of identity or invention of subsequently
presented claims.

Once an election is made in response to a requirement
to divine, all ;laims retained in the onse drawn to the so
divided and non-elected inventions should be finally
rejected chi the ground of misjoinder.

Where an interference is instituted prior to an
applicant making an election the subject matter of the
interference issues is not elected. An applicant mav, after
tro termination of tre interference, elect and one of the
iversions unt, se cl. jon.

The general policy of ere Office is not to permit.
the applicant to shirt to claiming another invention after
un electrica in once male. While applicant, as a matter
of ristt, may not snitt f'rem claiming one invention to
alma mater, the Office is not precluded from por-
matchens that any de so where the shift results
in no additional vort or expense, and par icularly wrere
the shift reduce ware as by simplitving the issues.
Having once accessed and acted upon the amendment which
shifted the invention the Examiner may not thereafter
hola the stift is improper as hold the case abandoned for
that reason. A change from a mothod setting forth only
the necessary or obvious way of making a product to the
product is not a shift.

When claims are presented which the Examiner holds
are drawn to an invention other than elected he should
reject the claims on tiat ground.

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A traverse of the rejection of Linking claims only
is not a traverse of the requirement, and is not reviewed
by an Examiner of Classification .

When there is on additional traverse (other than
such rejection) that sets torth reasons why the inventions
among which division is repaired is improper, it must be
submitted to an Examiner of Classification before being
made rinal.

Where an examiner ankes a complete requirement to
divide, fully staring ris reasons as to why the inventions
as claimed are considered to be either independent or
distinct and fully givin; ris reasons for compelling divi-
sion, there is ordinarily no reason for the Examiner in
submitting the case for review to write a memorandum. His
reasons are already on record, to accompany the traverse
of the applicant

However, where claims are added, a memorandum should
be submitted to point out now the added claims should be
disposed of in the light of the requirement to divide.

Also, where the claims are amended in substance the
Examiner may rant to submit a memorandum. If such changes
affect the requirement to divide, the Examiner should submit
a memorandum pointing out now it affects the requirement.
If such amendments do not affect the requirement to divide,
no memorandum is necessary.

Finally. where some of the arguments in the traverse
have not been anticipated, the Examiner may wish to submit
a memorandum answering the same .

Where an Examiner of Classification renders a
decision which approves, either in whole or in part, a
requirement to divide he will supply the Primary Examiner
with both an original copy and a carbon copy of his decision.
These copies will be attached to the original and carbon
copies respectively of the Office action making the re-
quirement final so as to become parts thereof. The
necessity of quoting tre decision in the Office action is
thereby removed In the body of the Examiner's action
should appear the statement that the requirement to divide,
as approved in the attached decision, la made finol. The
decision and action will trus have the same paper number
and will be entered together In the "Contents" section of
the file wrapper

Where the requirement to divide is entirely dis-
approved, the decision should not be entered in the file
The next Office action, novever, should either withdraw the
requirement, nolt it in abeyance, or modify it, as the facts
warrant

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Several applications may be filed by the same appli-
cant or owned by the same party with conflicting claims.
Rule 10.7, in such cases requires elimination of such
claims from all but one of the applications, in the absence
of good and sufficient reason for their retention in more
than one application.

llere, treatment is given of only applications of a
single inventor, not the applications of different inven-
tors that are all owned by one party ..

The aprlication of the rule in three different sit-
uations is given hereinafter.

Under Rule 10.7 the practice relative to applications
both pending before the Examiner and where both claim either
the same invention or inventions that are not distinct, is:

Where claims in an application are unpatentable over
claims of an earlier application of the same inventor, (either
because they recite the same subject matter, or because the
prior art shows that the differences do not impart a patent-
able distinction) reject the claims of the later application
on the claims of the earlier one, whether the earlier applica-
tion be in issue or not or whether the claims of the earlier
one are allowed or not. Should the later application be in
issue with claims unpatentable over the claims in the earlier
application the claims in the earlier application should be
rejected Also claims unpatentable over each other in cases
one of which is in interference should be treated by rejecting
the claims in the application not in interference ..

The claims in the earlier application should not be re-
jected on the claims in the later application ..

No other rejection should be entered on the claims held
unpatentable over the claims of the earlier application. How-
over, any additional claims in the later application that are
patentably distinct over the claims of the earlier one should
be fully treated.

Where an application is in issue, a proper line of di-
vision may be established under Rule 34. 2 without withdrawing
the allowed case from issue.