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OCR transcription for search; preserved printed pages are authoritative

# Chapter 800 Restriction; Double Patenting

800
Introduction

801
Definitions : Restriction, Double Patenting ; "In-
dependent", "Distinct"

802
Basis for Practice in Statutes and Rules

803
Restriction-When Proper

803.01
Review by Primary Examiner

804
Double Patenting Rejection

804.01
When Proper

804.02
Submission to Supervisory Classification Ex-
aminer

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 Not Considered

806.03
Single Embodiment, Claims Defining Same
Essential Features

806.04
Independent Embodiments

806.04
(a)
Species-Genus

806.04 (
(b)
Species May Be Related Inventions

806.04 (c)

Subcombination Not Generic to Com-
bination

806.04 (d)
Definition of a Generic Claim

806.04 (e)
Claims Restricted to Species

806.04 (f)
By Mutually Exclusive Character-
istics

806.04 (g)

\- Plural Species Claimed

806.04 (h)
Species in Separate Applications Must
Be Distinct From Each Other and
From Genus

806.04 (i)

Generic Claims Rejected When Pre-
sented for First Time After Issue of
Species

806.04 (j)
Generic Claims in One Patent Only

806.05
Related Embodiments

806.05 (a)
Combination or Aggregation and Subcom-
bination

806.05 (b)
Old Combination-Novel Subcombina-
tion

806.05 (c)
Criteria of Distinctness

806.05 (đ)
Subcombinations Usable Together

806.05 (e)
Process and Apparatus for Its Practice

806.05 (f)
Process and Product Made

806.05
(g)
Apparatus and Product Made

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
Linking Claims

809.01
Practice First Stated

809.02
Generic Claim Linking Species-
Election Required

809.02 (a)
Generic claim rejected

809.02

(b)
Generic claim allowed

809.02

809.02 (d) No species claims

809.02

(e)
Generic claim Allowable in Substance

809.03
Related Inventions, Linking Claim Rejected

809.03 (a) Types of Linking Claims

809.04
Retention of Claims to Non-Elected Invention

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

811.01
Proper Even Though Late in Prosecution

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

S12
Who should Make the Requirement

813
Citation of Art

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 Restriction Requirement and Sample
Letter

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
Species

818.02 (c) By Optional Cancelation 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 Rejection 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 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 Inventor

822.01
Copending Before Examiner

## 800 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.

The applicable law is determined by the date
a requirement to restrict was made final.

If made final prior to January 1, 1953, the
requirement could not have been made under
the provisions of 35 U. S. C. 121, and the pre-
ceding edition of the M. P. E. P. should be
consulted for applicable practice.

The provisions of 35 U. S. C. 121, and the
practice stated herein, apply to all require-
ments initially made on or after January 1,
1953, and also to all requirements initially made
prior to January 1, 1953, and either acquiesced
in without traverse or made final after traverse
on or after that date.

## 801 Definitions: Restriction, Double Patenting, "Independent", "Dis- tinet"

A requirement to restrict is a requirement to
limit the claims of the application under con-
sideration to one of the plurality of claimed
inventions (Rule 142) indicated in the require-
ment. ..

A rejection on the ground of double patent-
ing is a ruling that the invention claimed in an
application is the same as, or not patentably
distinct from, an invention already claimed by
the same applicant, usually in a patent, but at
times in a copending application. See 305,
706.03 (k), 822, and 822.01.

The term "independent" means that there is
no disclosed relationship between the two or
more subjects disclosed, i. e., they are uncon-
nected in design, operation or effect, e. g. (1)
species under a genus which species are not
usable together as disclosed or (2) process and
apparatus incapable of being used in practic-
ing the process, etc.

The term "distinct" means that two or more
subjects as disclosed are connected in design,
operation or effect, i. e., they are related, for
example as combination and part (subcombina-
tion) 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 unpatentable because
of the prior art).

## 802 Basis for Practice in Statutes and Rules

The basis for restriction and double patenting
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 sec-
tion 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 Office or in the courts
against a divisional application or against the origi-
nal application or any patent issued on either of them,
if the divisional application is filed before the issu-
ance of the patent on the other application. If a divi-
sional application is directed solely to subject matter
described and claimed in the original application as
filed, the Commissioner may dispense with signing and
execution by the inventor. The validity of a patent
shall not be questioned for failure of the Commis-
sioner to require the application to be restricted to one
invention,

Rules 141 through 147, which will be quoted
under pertinent topics, outline Office practice
on questions of restriction.

### 803 Restriction-When Proper

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 in-
dependent (804.04-804.04j) or distinct (806.05-
806.05g).

Where inventions are neither independent nor
distinct one from the other their joinder in a
single application must be permitted.

803.01 Review by Primary Examiner
Requirements for restriction under Title 35 U. S.
Code 121 being discretionary with the Commissioner,

806.01

€

(

it becomes very important that the practice under
this section be carefully administered. Notwith-
standing the fact that this section apparently pro-
tects the applicant against the dangers that pre-
viously might have resulted from compliance with
an improper requirement for restriction, it still re-
mains 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 possi-
bility, the Primary Examiner or the signatory to
an Office action must personally review all require-
ments for restriction. (Notice of April 14, 1953.)

## 804 Double Patenting Rejection

35 U. S. C. 121, third sentence, provides that
where the Office requires restriction, neither the
parent nor any divisional application thereof
conforming to the requirement can 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 restriction where
the claims define essentially the same inven-
tions in different language and which, if ac-
quiesced in, might result in the issuance of sev-
eral patents for the same invention.

## 804.01 When Proper

The rejection on the ground of double patenting
appears to be applicable only in the following
instances:

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

(b) The requirement for restriction was made
final prior to January 1, 1953, and so could not have
been made under Section 121 of the new law.

(c) The Office made either the initial or final
requirement for restriction to a single distinct and
independent invention on or after January 1, 1953,
but the claims of the different applications or
patents are not consonant with the requirement
made by the examiner, due to the fact that the
claims have been changed in material respects from
the claims at the time the requirement was made.

(d) The requirement was made subject to the
nonallowance of generic or other linking claims and
such linking claims are subsequently allowed.
(Extract from Notice of December 10, 1952:)

Where a rejection on an applicant's patent
on the ground of double patenting is proper,
such rejection cannot be avoided by filing under
Rule 321 a disclaimer of the invention claimed
in the patent.

# 804.02 Submission to Supervisory Classification Examiner

In order to promote uniform practice, every action
containing a rejection on the ground of double
patenting of either a parent or a divisional case
(where the divisional case was filed because of a
requirement to restrict, including a requirement to
elect species, made by the Office) must be sub-
mitted to the Supervisory Examiner of Classifica-
tion for approval prior to mailing. When the re-
jection on the ground of double patenting is dis-
approved, it shall not be mailed but other appro-
priate action shall be taken. (Notice of November
1, 1950, Revised.)

## 805 Effect of Improper Joinder in Patent

35 U. S. C. (1952) 121, last sentence pro-
vides: "The validity of a patent shall not be
questioned for failure of the Commissioner to
require the application to be restricted to one
invention." In other words, under this statute,
no patent can be held void for improper joinder
of inventions claimed therein.

## 806 Determination of Distinctness or Independence of Claimed Inven- tions

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), restric-
tion 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 dis-
closed 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, 809.03 (a).

## 806.01 Compare Claimed Subject Matter

In passing upon questions of double patent-
ing and restriction, it is the claimed subject mat-
ter that is considered and such claimed sub-
ject matter must be compared in order to de-

termine the question of distinctness or inde-
pendence.

## 806.02 Patentability Not Considered

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.

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

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

Where such claims appear in different appli-
cations optionally filed by the same inventor,
disclosing the same embodiments, only one ap-
plication can be allowed.

# 806.04 Independent Embodiments

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 applica-
tion, 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 written in
dependent form (Rule 75) or otherwise include all the
limitations of the generic claim,

If it can be shown that the two or more in-
ventions are in fact independent applicant
should be required to restrict the claims pre-
sented to but one only of such independent
inventions.

For example, two different combinations, not
disclosed as capable of use together, having
different modes of operation, different func-
tions or different effects are independent. An
article of apparel such as a shoe, and a loco-
motive bearing would be an example. A proc-
ess of painting a house and a process of boring
a well would be a second example.

As a further example, where the two embodi-
ments are process and apparatus, and the ap-
paratus cannot be used to practice the process

or any part thereof, they are independent. A
process of burning oil is independent of an oil
burner which cannot be caused to operate in
such a manner as to practice the process.

Species are treated extensively in the follow-
ing sections.

## 806.04 (a) Species-Genus

The statute 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 - Genus, Species May Be Related Inven- tions

Species, while usually independent, may be
related under the particular disclosure.

For example, subcombinations usable with
each other may be species of some generic in-
vention, Ex parte Healy 1898 C. D. 157; 84 O. G.
1281, where a clamp for a handle bar stem and a
specifically different clamp for a seat post both
for use on a bicycle were claimed and were
held to be properly divisible since no combina-
tion claim was presented and the practice at
that time permitted the claiming of but a single
species.

As a further example, one species of carbon
compound may have such chemical character-
istics as to spontaneously convert into a second
species of carbon compound. These species
would obviously be quite closely related.

# 806.04 (c) Species - Genus, Subcom- bination Not Generic to Combination

The relation "combination-subcombination"
presents the situation where plural claims are
all readable upon a single embodiment, where
the relation is not specific claim to genus, but
combination to subcombination or element.

The situation is frequently presented where
two different combinations are disclosed, having
a subcombination common to each. It is fre-
quently puzzling to determine whether a claim
readable on two different combinations is ge-
neric thereto, or is restricted to the common
subcombination.

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
combination in which it was used.

(
(

# (

€

806.04 (h)

## 806.04 (d) Species-Genus, Definition of a Generic Claim

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 organization
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 species
must contain all the limitations of the generic
claim.

Once a claim that is determined to be generic
is allowed, the claims restricted to species in
addition to one but not to exceed four additional
species, provided they comply with the require-
ments, will ordinarily be obviously allowable in
view of the allowance of the generic claim,
since the additional 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 first 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) Species-Genus, Claims Re- stricted to Species

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

Species are always the specifically different
embodiments.

They are usually but not always independent
as disclosed (See 806.04 (b) ) since there is usu-
ally no disclosure of relationship therebetween.
The fact that a genus for two different embodi-
ments is capable of being conceived and defined,

does not affect the independence of the embodi-
ments, where the case under consideration con-
tains no disclosure of any community 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 disclosed 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 characteristics of such
species.

# 806.04 (g) Claims Restricted to Spe- cies, Plural Species Claimed

Pending applications are to be permitted to take
advantage of Rule 141 at the stage in the prosecution
in which it is convenient to do so. Amendments
after allowance of an application proposing to add
species claims as permitted by the rule, should be
admitted by the examiner unless other reasons com-
pel their refusal. (Extract from Notice of Nov. 4,
1949, Revised.)

# 806.04 (1) Genus - Species, Species Must Be Patentably Dis- tinct From Each Other and From Genus

Where an applicant files another application
for a species claimed in a parent case and con-
sonant with a requirement to restrict, there
should be no investigation as to patentable dis- ≥
tinction between such species.

Where generic claims are allowed, applicant
may claim in the same application species not
to exceed five, as provided by Rule 141. As to
these, the patentable distinction between the
species or between 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 for a different species, or

(

## 806.04 (i)

for a species disclosed but not claimed in a par-
ent case as filed and first acted upon by the ex-
aminer, there should be close investigation to
determine the presence or absence of patentable
difference.

## 806.04 (i) Genus - Species, Generic Claims Rejected When Presented for First Time After Issue

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.

# 806.04 (j) Genus - Species, Generic Claims in One Patent Only (Generic Claims in Appli- cation Rejected)

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 double
patenting in view of the generic claims of the
patent.

## 806.05 Related Embodiments

Where two or more related embodiments 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 not distinct,
restriction is never proper. If claimed in sepa-
rate applications or patents, double patenting
must be held, except where the additional appli-
cations were filed consonant with a requirement
to restrict.

The various pairs of related inventions are
noted in following sections. The distinction be-
tween them shown as a basis for requiring re-
striction, or for a holding that there would be no
double patenting, must be material.

## 806.05 (a) Combination or Aggrega- tion and Subcombination

· A combination or an aggregation is an or-
ganization of which a subcombination (or
element) 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 com-
bination 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 Examiner 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) Combination and Subcom- bination, Old Combina- tion-Novel Subcombina- tion

Restriction is never proper between a com-
bination (AB) that the examiner holds to be
old and unpatentable and the subcombination
(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) Combination and Subcom- bination, Criteria of Dis- tinctness

Broadly stated, where a combination as
claimed does not require the particulars of the
subcombination as claimed for its patentability,
and 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.

## 806.05 (d) Subcombinations Usable Together

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

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

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 different
products, or (2) that the product as claimed can
be made by another and materially different
process.

## 806.05 (g) Apparatus and Product Made

The criteria are the same as in 806.05 (f)
substituting apparatus for process.

## 807 The Practice of Making Patenta- bility Reports Has No Effect Upon Restriction Practice

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 aspects,
(1) the reasons (as destinguished from the mere
statement of conclusion) why the inventions as
claimed are either independent or distinct, and
(2) the reasons for insisting upon restriction
therebetween.

## 808.01 Independent Inventions

Where the inventions claimed are independ-
ent, i. e., where they are not connected in design,
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 (treated in the following section) is but
rarely presented, since few persons will file an
application containing disclosures of independ-
ent things.]

## 808.01 (a) Species

Where there is no disclosure of relationship
between species (see 806.04 (b) ), they are inde-
pendent inventions and election of one is man-
datory even though there is no patentable dis-
tinction between the species as claimed. 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 different species that are
disclosed in the application, and it is not neces-
sary to show a separate status in the art or sepa-
rate classification.

A single disclosed species must be elected as
a prerequisite to applying the provisions of
Rule 141 to not more than four additional
species if a generic claim is allowed. Under
Office policy as set forth in Rule 141, only one
species may be claimed if no generic claim is
allowed and no more than five species may be
claimed if a generic claim is allowed, even
though the species are not patentably different.

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 establish the
propriety of restriction.

## 808.02 Related Inventions

Where, as disclosed in the application, the
several inventions claimed are related, and such
related inventions are not patentably distinct
as claimed, restriction is never proper (806.05).
If applicant optionally restricts, double patent-
ing will be held.

Where the related inventions as claimed are
shown to be distinct, it is the Office policy to
permit them to be claimed in one application
where they are classified together, do not have
a separate status in the art, and involve the
same field of search. The examiner must show
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 each distinct subject has at-
tained a separate status in the art as a separate
subject for inventive effort, and also a separate
field of search.

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

Even though they are classified together, by
citing appropriate art from the single subclass,
each subject can be shown to have formed a sep-
arate subject for inventive effort when some of
the art pertains to the one subject and some to
the other subject.

(3) A separate 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 separate field of

search is shown, even though the two are classi-
fied together. The art cited to show a separate
field of search must in fact be pertinent to the
type of subject matter covered by the claims.

Where, however, the classification is the same
and the field of search is the same and there is
no clear indication of separate future classifica-
tion and field of search, no reasons exist for
dividing among related inventions. This is
particularly true in the manufacturing arts
where manufacturing processes and the result-
ant product are classified together, e. g. Carbon
Compounds Class 260. Under these circum-
stances, applicant may optionally restrict to one
of plural" distinct inventions since double
patenting will not be held, but it is Office policy
not to require restriction.

## 809 Linking Claims

There are a number of situations which arise
in which an application has claims to two or
more properly divisible inventions, so that a
requirement to restrict the 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 divis-
ible.

Where the situation exists, and it is found
after a complete examination that the linking
claims are not allowable, such claims should be
rejected and restriction required.

The linking claims must be examined with the
invention elected, and should any linking claim
subsequently be allowed, rejoinder of the di-
vided inventions must be permitted.

Since a rejection of linking claims is a pre-
requisite to a requirement to restrict, a complete
action must be made on such claims, but no
action on novelty and patentability need be
made on the claims to the divisible inventions.

## 809.01 Practice First Stated

So far as can be determined, this practice was
first stated in ex parte Mansfield and Hayes 1902
C. D. 94, 98 O. G. 2363 where a rejection of ag-
gregative claims which linked two inventions
(which were divisible in the absence of such
aggregative claims) was approved. This was a
Commissioner's decision, in which he said that
to do otherwise would "amount to piecemeal
consideration of the merits of the application."

## 809.02 Generic Claim Linking Species

Under Rule 141, an allowed generic claim may
link up to five disclosed species embraced
thereby.

The practice is stated in Rule 146:

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 Exam-
iner may require restriction of the claims so
that not more than five species are separately
claimed is permissive. It may be used in aggra-
vated cases of a multiplicity of species, without
acting on generic claims, to narrow the issues
down to five species.

### 809.02 (a) Election Required-Ge- neric Claim Rejected

The most usual situation is where there are
claims restricted to more than one disclosed
species, and none of the generic claims are
allowable. Action as follows should be taken :

(1) Reject the generic claims, making a com-
plete examination thereof.

(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, and advised as
to the requisites of a complete response and his
rights under Rule 141. The following form
paragraphs are suggested :

"None of the generic claims . . . (identify)
having been allowed, applicant is required 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, in addition to a response to the rejec-
tion an identification of the disclosed species

)

809.03

that he elects consonant with the requirement,
and a listing of all claims readable thereon.
An argument that a generic claim is allowable,
or that all claims are generic or amended to be
generic, unless accompanied 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 addition
to the single elected species, provided all the
claims to each additional species are written
in dependent form or otherwise include all the
limitations of an allowed generic claim as pro-
vided by Rule 141."

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

#### 809.02 (b) Election Required-Ge- neric Claim Allowed

When a claim generic to two or more claimed
species is found to be allowable on the first
or any subsequent action and election of a single
species has not been made, applicant should be
informed that the claim is allowable and ge-
neric, 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
species, which species he must identify and list
all claims restricted to each, provided all the
claims to each additional species are written
in dependent form or otherwise include all the
limitations of an allowed generic claim as pro-
vided by Rule 141."

809.02 (c) Action Following Election

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 withdrawn
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: Claims
directed to species

are withdrawn from further consid-
eration in this case, since all of the claims to
this species do not depend upon or otherwise
include all of the limitations of an allowed
generic claim as required by Rule 141.

Claims directed to species not embraced by an
allowed generic claim should be treated as fol-
lows: 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

Where only generic claims are first presented
and prosecuted in an application and claims to
more than one species are later presented, appli-
cant must indicate an election of a single species
at the time of presentation of the species claims.

## 809.02 (e) Generic Claims Allowable in Substance

Whenever a generic claim is found to be allowable
in substance, even though it is objected to-or re-
jected on merely formal grounds, action on the
species claims shall thereupon be given as if the
generic claim were allowed. (Extract from Notice
of Apr. 6, 1948.)

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

## 809.03 Related Inventions, Linking Claims Rejected

There are other situations where claims serve
to link related inventions in the manner that
species are linked by a generic claim. When-
ever two related inventions are distinct from
each other as claimed, but there is a claim to
invention from which neither is distinct, the
claimed "linking" invention must be rejected
as a prerequisite to restriction. When this is
done, the art used in rejecting the linking claims
must be the result of a complete search, and the
reasons for rejecting the linking claims must be
the best available, but no action on novelty of
the claims to distinct inventions should be given.

The practice parallels the practice for species
when generic claims are rejected.

☒

### 809.03 (a)

The best general statement of this practice
as applied to situations other than species with
a generic claim, is found in ex parte Robinson,
Pat. No. 2,329,086. This decision (which was
rendered in 1943) discusses a number of prior
decisions. In that particular case there was a
petition from the examiner's action of requiring
restriction between two inventions coupled with
a rejection of claims which were found to link
those two inventions. The particular holding
is quoted : "The practice of rejecting claims of
the linking type at the time of making a require-
ment of division is considered to be not only
proper but necessary in order to avoid com-
pelling the examiner to consider the merits of
independent inventions and thus unduly burden
the Office."

The main difference is, that in addition to
showing distinctness (which parallels showing
claim restriction to particular disclosed spe-
cies), reasons for insisting upon division be-
tween related inventions that are distinct as
claimed must be shown (as in 808.02) whereas
the mere showing of claim restriction to sepa-
rate disclosed species and lack of disclosed re-
lation therebetween is adequate (808.01(a)).

### 809.03 (a) Types of Linking Claims

The most common types of linking claims
that may prevent restriction between two re-
lated inventions that can otherwise be shown
to be distinct and divisible, are :

Aggregation or combination linking two sub-
combinations.

Claims to a product defined by process of
making the same linking proper product claims
and process 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.

### 809.04 Retention of Claims to Non- Elected Invention

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 not to exceed
five if the linking claim is generic thereto, or
he must examine the claims to the nonelected
inventions that are linked to the elected inven-
tion by such allowed linking claim.

When a final requirement is contingent on the
non-allowability of the linking claims, appli-
cant may petition from the requirement under
Rule 144 without waiting for a final action on
the merits of the linking claims; or he may de-
fer his petition until the linking claims have
been finally rejected, but not later than appeal,
Rule 144, 818.03 (c).

## 810 Action on Novelty

In general, except for linking claims (809)
when a requirement to restrict is made, no action
on novelty and patentability is given.

## 810.01 Not Objectionable When Cou- pled With Requirement

Even where 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
invention 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.

## 811.01 Proper Even Though Late in Prosecution

Rule 142 (a) makes it clear that restriction
may be required at any stage, however late, in
the prosecution up to the time of final action.

## 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 complied
(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

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

An examiner ordinarily should not require
restriction in an application none of the claimed
subject matter of which is classifiable in his
division. Such an application should be trans-
ferred to a division to which at least some of
the subject matter belongs. Exceptions may
arise in which immediate transfer is not ex-
pedient, e. g., when transfer would be contrary
to 903.08 (a).

## 813 Citation of Art

A. Linking claims rejected. Where generic
or other type linking claims are rejected the
best art and the best reasons should be given
for the rejection.

B. Independent inventions - no linking
claims. Art resulting from a cursory search
pertinent to the several inventions is cited. It
is not necessary to cite art to show separate
classification, a separate status in the art or a
separate field of search, where it is shown that
the inventions as disclosed in that particular
case are in fact independent.

C. Related but distinct inventions. A cur-
sory search should be made and the most perti-
nent art found should be cited that shows sepa-
rate classification, a separate status in the art
or a separate field of search. It is the claimed
subject matter of U. S. patents that shows the
first two. Any disclosure pertinent to the
claimed subject matter of the application shows
the third.

It is noted that the art referred to in the
above cases constitutes a general guide to the
applicant to aid him in his election. Where
the citation of art to establish distinctness of
inventions is necessary, the art must. be perti-
nent to the particular point being made, for
example, art may be cited to show that a prod-
uct can be made by processes other than that
claimed.

## 814 Indicate Exactly How Application Is To Be Restricted

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

As pointed out in ex parte Ljungstrom 1905
C. D. 341; 119 O. G. 2335, the particular limita-
tions 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.

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

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 division and the examiner
has any doubt as to the proper line among the
same, he should refer the application to the
examiner of the other division for information
on that point and such examiner should render
the necessary assistance.

### 816 Give Reasons for Holding of Inde- pendence or Distinctness

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 sub-
combination 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 distinguishing
part.

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

### 817 Outline of Restriction Require- ment and Sample Letter

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

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

The following outline for a requirement to
restrict and sample letter is intended to cover
every type of original restriction requirement
between related inventions including those hav-
ing linking claims, but not treatment on the
grounds set forth in 821-821.03.

OUTLINE AND SAMPLE LETTER

A. Citation of art

Preferably two 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 claims in two groups
Look for omitted claims

Take into account claims not grouped, indicating
their disposition

#### C. Statement of facts

Give short description of total extent of the sub-
ject matter claimed in each group

Point out critical claims of different scope
Identify whether combination, subcombination,
process, apparatus or product

Classify each group and refer to corresponding
patent for evidence.

(Note B and C are usually worked in together, see
form letter.)

D. Special treatment of ungrouped claims
Linking claims
Reject
Make complete rejection, giving reasons
therefor

Statement on groups to which linking claims
may be assigned for examination
Other ungrouped claims
Indicate disposition
e. g .: previously nonelected, nonstatutory,
canceled, etc.

E. Allegation of distinctness

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

(1) Subcombination-Subcombination (disclosed
as usable together)
Each usable alone or in other identified com-
bination
Demonstrate by cited patent
Demonstrate by Examiner's suggestion

(2) Combination -- Subcombination

Combination as claimed does not require sub-
combination
AND

Subcombination usable alone or in other iden-
tified combination
Demonstrate by cited patent
Demonstrate by Examiner's suggestion

(

##### RESTRICTION; DOUBLE PATENTING Sample Letter

POL-90
Rtt.

AZORKAS ONLY
THE COMMISSIONER OF PATENTS
WARRINGTON IS, D. C.

DEPARTMENT OF COMMERCE
UNITED STATES PATENT OFFICE
WASHINGTON

All communications respecting
this application should o're the
serial number, dans of fling.
and name of the applicant.

PAPER NO.
3

John A. Smith
16, 753 Main Street
Detroit 2, Michigan

L
Please find below a communication from the
EXAMINER in charge of this application.

Robert Closter
Commissioner of Patents.

Applicant: James A. Black et al.

Ser. No. 733.946

MAILED

Filed January 3, 1954

JUL 1 6 1954 PAT DIV 28

For

INTERNAL COMBUSTION ENGINE

This application has been examined.

Patents cited to show classification:

Smith

2,145,789

Dec.

25, 1950

123-31

Jones et al.

2,467,899

Jan.

11, 1951

123-31

II.

Doe

2,567,890

Mar.

23, 1951

261-34

Roe

2,699,999

June

13, 1952

261-34

III.

Brown

2,724,234

Sept.

23, 1953

123-12

White

2,825,780

Apr.

21, 1950

123-12

Restriction to one of the following inventions is required:

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

II. Claims 7-12 which recite a carburetor subcombination and
would be classified with the Doe and Roe patents.

III. Claims 12-18 which recite a spark plug subcombination
and would be classified with the Brown and White patents.

Claim 19, which is drawn to an igniter and fuel supply unit and
recites the specific details of both the carburetor and the spark plug
and is thus not divisible from either Group II or III, is rejected on the
ground of aggregation (give statement of reasons). As between Groups II
and III applicants must elect that group to which their claims shall be
restricted if no claim of the type of claim 19 is finally held allowable.
For purposes of examination claim 19 may be retained with either Group II
or Group III.

? ?

817

Serial No. 733,946
-2 -

Claim 20 is rejected as indefinite and not in compliance with
35 U.S.C. (1952) 112, and accordingly is not assigned to any group.
The several inventions are distinct, each from the others,
because (1) the engine combination, as defined in the claims of Group I,
does not recite nor does the engine require either the specific carburetor
subcombination as defined in the claims of Group II, or the specific
spark plug subcombination as defined in the claims of Group III, and
(2) the carburetor and spark plug subcombinations have separate utility
in other and different combinations. For example, the carburetor of Doe
and the spark plug of Brown could be used in the combination defined by
the claims of Group I. The carburetor and spark plug as defined in
Groups II and III could equally well be used in a furnace combination.

Since these distinct inventions have 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, restriction for examination purposes as indicated
is proper.

Applicants are advised that their response to be complete, must
include a provisional election of one of the above inventions identified
as I, II, and III (see Rule 143), even though they traverse the require-
ment.' An argument that a linking claim such as claim 19 is allowable,
unless accompanied by reasons why the subcombinations of II and III are
considered indivisible in the absence of such claims, will not be con-
sidered a traverse.
1

/
BC
ABClark/nes

Atbrau
Examiner

(
C

(
D

(3) Process-Apparatus

Process can be carried out by hand or by other
apparatus
Demonstrate by cited patent
Demonstrate by Examiner's suggestion
OB

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

(4) Process and/or apparatus-Product

Demonstrate claimed product can be made by
other process (or apparatus)
By cited patent
By Examiner's suggestion

OR
Process (or apparatus) can produce other
product (rare)

F. Allegation of reasons for insisting upon restriction
Must be demonstrated by citation of art
Separate status in the art
Different classification
Refer to exemplary patents
Same classification
Refer to exemplary patents
Divergent fields of search

Search required for one group not required for
the other

###### 818 Election and Response

Extract from Rule 142. (a) If two or more inde-
pendent 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 restricted,
this official action being called a requirement for re-
striction (also known as a requirement for division).
If the distinctness and independence of the inventions
be clear, such requirement will be made before 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.

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.

### 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

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.

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 section 821.03.

### 818.02 (b) Generic Claims Only-No Election of Species

Where the originally presented claims are all
generic to the several disclosed species, no elec-
tion of a single species has been made.

### 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
or 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 accompanying
traverse of the requirement.

818.03 (a) Response Must Be Com-
plete

As shown by the first sentence of Rule 143,
the traverse to a requirement must be complete

### 818.03 (b)

as required by Rule 111 (b) which reads in part :
"In order to be entitled to reexamination or
reconsideration, the applicant must make re-
quest therefor in writing, and he must distinctly
and specifically point out the supposed errors
in the examiner's action; the applicant must
respond to every ground of objection and rejec-
tion of the prior office action.

and the applicant's action must appear through-
out to be a bona fide attempt to advance the case
to final action. The mere allegation that the
examiner has erred will not be received as a
proper reason for such reexamination or recon-
sideration."

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

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 consonant
with the requirement, see Rule 143."

The suggested concluding statement should be
reworded to fit the facts of the particular re-
quirement, e. g., as in 809.02 (a) second form
paragraph under (3) and 817 at the end of the
sample letter.

# 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 due 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 recon-
sideration of the requirement was not requested. (See
rule 181.)

Under this rule, in order to petition from the
requirement to restrict, the applicant must
traverse the requirement, and the Primary Ex-
aminer must repeat it and make it final.

# 818.03 (d) Traverse of Rejection of Linking Claims

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

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Election combined with a traverse of the re-
jection 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 allowed and improper if they are allowed.
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 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 particu-
lar 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 prod-
uct 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 per-
mit the applicant to shift to claiming another
invention after an election is once made. When
claims are presented which the Examiner holds
are drawn to an invention other than elected
he should treat the claims as outlined in 821.03.

Where the inventions ;are distinct and of
such a nature that the Office compels restriction,
an election is not waived even though the ex-
aminer 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).

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821.02

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# 819.01 Office May Waive Election and Permit Shift

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 Heritage Pat.
No. 2,375,414 decided January 26, 1944). Hav-
ing accepted a shift, 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).

Where added claims to an optionally divisible
invention (see 808.02, last paragraph) are acted
upon they should not be rejected as drawn to
a non-elected invention (Ex parte Schmidt, Pat.
No. 2,396,609).

## 820.01 Old Combination Claimed- Not an Election

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 (see 806.05 (b) ) only,
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.
Final rejection of the reasserted "old combina-
tion" claims is the action that should be taken.
The combination and subcombination as de-
fined by the claims under this special situation
are not for distinct inventions. (See
806.05 (c).)

## 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 to Non- Elected Inventions

Claims drawn to non-elected inventions, in-
cluding claims to non-elected species, are treated
as indicated in 821.01 through 821.03. How-
ever, for treatment of claims to species non-
elected without traverse in applications not
ready for issue, see 809.02 (c) through 809.02(e).

## 821.01 After Election With Traverse

Where the initial requirement is traversed,
it should be reconsidered. It may be with-
drawn, in which case action is given on the
claims. If adhered to, the claims to the non-
elected invention should be treated substan-
tially as follows:

"Claims
stand withdrawn from
further consideration by the examiner, Rule 142
(b), as being for a nonelected invention, the
requirement having been traversed 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,
the examiner should treat the case substantially
as follows:

Claims __________ stand allowed.

"This application is in condition for allow-
ance except for the presence of claims ______ to
an invention (or species) nonelected with trav-
erse in paper No. ______. Applicant is given
thirty days from the date of this letter to cancel
the noted claims or take other appropriate ac-
tion (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 except
for consideration of the above matter."

## 821.02 After Election Without Trav- erse

Where the initial requirement is not trav-
ersed, if adhered to, appropriate action should
be given on the elected claims and the claims to
the nonelected invention should be treated sub-
stantially as follows:

"Claims
stand withdrawn from
further consideration by the examiner, Rule

821.03

142 (b), as being for a nonelected invention.
Election was made without traverse in paper
No.
"

This will show that applicant has not retained
the right to petition from the requirement under
Rule 144.

. Under these circumstances, when the case is
otherwise ready for issue, the claims to the non-
elected invention, including nonelected species,
may be canceled by an Examiner's Amendment,
and the case passed for issue. The Examiner'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 non-
elected without traverse in paper No.

these claims have been canceled."

## 821.03 Claims for Different Invention Added After an Office Action

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 recon-
sideration 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 action 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.

## 822 Claims to Inventions That Are Not Distinct in Plural Applications of Same Inventor

The treatment of plural applications of the
same inventor, 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, or owned by the same party, 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 in more
than one application.

See 304 for conflicting subject matter in two
applications, same inventor, one assigned.

See 305 for conflicting subject matter, differ-
ent 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 interference.
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-
Îarly 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

Under Rule 78 (b) the practice relative to
overlapping claims in applications co-pending
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 inventor (either because they recite
the same subject matter, or because the prior art
shows that the differences do not impart a pat-
entable distinction), 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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