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OCR transcription for search; preserved printed pages are authoritative

# Chapter 800 Restriction; Double Patenting

801
Introduction

802
Basis for Practice in Statutes and Rules

802.01
Meanings of "Independent", "Distinct"

802.02
Definitions : Restriction, Double Patenting

803
Restriction-When Proper

803.01
Review by Primary Examiner

804
Double Patenting Rejection

804.01
Applicability

804.02
Submission to Supervisory Examiner

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 Combina-
tion

806.04 (d)
Definition of a Generic Claim

806.04 (e)
Claims Restricted to Species

806.04 (f)
By Mutually Exclusive Characteristics

806.04 (g)
Plural Species Claimed

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

806.04 (1)

Generic Claims Rejected When Presented
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 Subcombination
Criteria of Distinctness

806.05 (c)

806.05 (d)
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 (c)
Action Following Election

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 Requirement
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

812
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 Spe-

cies

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 (e)
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 Held to be Drawn to Non-
elected Inventions

821.01
After Election With Traverse

821.02
After Election Without Traverse

821.03
Claims for Different Invention Added After
an Office Action

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

822.01
Copending Before Examiner

## 801 Introduction

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

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 con-
sulted 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 ac-
quiesced in or without traverse or made after
final traverse on or after that date.

## 802 Basis for Practice in Statutes and Rules

The basis for restriction and double patent-
ing practice is found in the following statute
and rules:

35 U.S.C. 121. Divisional applications. If two or
more independent and distinct inventions are claimed
in one application, the Commissioner may require the
application to be restricted to one of the inventions.
If the other invention is made the subject of a divi-
sional application which complies with the require-
ments of section 120 of this title it shall be entitled to
the benefit of the filing date of the original application.
A patent issuing on an application with respect to which
a requirement for restriction under this section has
been made, or on an application filed as a result of
such a requirement, shall not be used as a reference
either in the Patent Office or in the courts against a
divisional application or against the original applica-
tion or any patent issued on either of them, if the
divisional application is filed before the issuance of
the patent on the other application. If a divisional
application is directed solely to subject matter de-
scribed and claimed in the original application as filed,
the Commissioner may dispense with signing and exe-
cution by the inventor. The validity of a patent shall
not be questioned for failure of the Commissioner to
require the application to be restricted to one invention.

Rules 141 through 146, which will be quoted
under pertinent topics, outline Office practice
on questions of restriction.

## 802.01 Meaning of "Independent", "Distinct"

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

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

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

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

The term "independent" as already pointed
out, means not dependent. A large number of
subjects between which, in the past, division
has been proper, are dependent subjects, such,
for example, as combination and a subcombina-
tion thereof; as process and apparatus used in
the practice of the process; as composition and
the process in which the composition is used;
as process and the product made by such proc-
ess, etc. If Section 121 were intended to direct
the Commissioner never to approve division
between dependent inventions, the word "inde-
pendent" would clearly have been used alone.
If the Commissioner has authority or discre-
tion to divide independent inventions only,
then division would be improper as between
dependent inventions, e.g., such as the ones
used for purpose of illustration above. Such
was clearly, however, not the intent of Con-
gress. Nothing in the language of the statute
and nothing in the hearings of the committees
indicate any intent to change the substantive
law on this subject. On the contrary, joinder
of the term "distinct" with the term "in-
pendent", indicates lack of such intent. The
law has long been established that dependent
inventions (frequently termed related inven-
tions) such as used for illustration above may

(
!

(

( )

be properly divided if they are, in fact "dis-
tinct" inventions, even though dependent.

While in ordinary parlance, two inventions
that are "independent" (i.e., not dependent)
might also be considered as accurately termed
"distinct", the converse is not true. Inventions
that may be "distinct" may be dependent, and
thus the term "independent" could not accu-
rately be used in referring to the same. For
the purpose of this Manual, these terms are
used as defined below.

The term "independent" (i.e., not depend-
ent) means that there is no disclosed relation-
ship between the two or more subjects disclosed,
i.e., they are unconnected 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 practicing 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 unpatent-
able because of the prior art). It will be noted
that in this definition the term "related" is
used as an alternative for "dependent" in re-
ferring to subjects other than independent
subjects.

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

# 802.02 Definitions; Restriction, Dou- ble Patenting

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 re-
quirement.

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 patent-
ably 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.

# 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

independent (806.04-806.04(j)) or distinct
(806.05-806.05(g)).

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, it becomes very important that
the practice under this section be carefully
administered. Notwithstanding the fact that
this section apparently protects the applicant
against the dangers that previously might have
resulted from compliance with an improper
requirement for restriction, it still remains im-
portant from the standpoint of the public
interest that no requirements be made which
might result in the issuance of two patents
for the same invention. Therefore to guard
against this possibility, the Primary Exam-
iner or the signatory to an Office action must
personally review all requirements for restric-
tion. (Basis: 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
several patents for the same invention.

# 804.01 Applicability

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

A. SITUATIONS WHERE 35 U.S.C. DOES NOT
APPLY

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

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

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

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

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

## D. EFFECT OF DISCLAIMER

Where a rejection on 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. Ex parte Williams 1917 C.D.
73, 245 O.G. 277.

The mere fiing of a terminal disclaimer does
not ipso facto overcome a rejection on the
ground of double patenting. In re Siu 1955
C.D. 176, 696 O.G. 421.

# 804.02 Submission to Supervisory Examiner

In order to promote uniform practice, every
action containing a rejection on the ground of
double patenting of either a parent or a divi-
sional case (where the divisional case was filed
because of a requirement to restrict, including
a requirement to elect species, made by the
Office) must be submitted to the Supervisory
Examiner for approval prior to mailing.
When the rejection on the ground of double
patenting is disapproved, it shall not be mailed
but other appropriate action shall be taken.
(Basis: Notice of November 1, 1950.)

# 805 Effect of Improper Joinder in Patent

35 U.S.C. (1952) 121, last sentence provides :
"The validity of a patent shall not be ques-

tioned for failure of the Commissioner to re-
quire the application to be restricted to one
invention." In other words, under this stat-
ute, 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), restriction,
to one thereof is ordinarily proper, 806.04-
806.04(j), though up to 5 species may be
claimed when there is an allowed claim generic
thereto, Rule 141, 809.02-809.02(e).

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

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

# 806.01 Compare Claimed Subject Mat- ter

In passing upon questions of double patent-
ing and restriction, it is the claimed subject
matter that is considered and such claimed
subject matter must be compared in order to
determine the question of distinctness or inde-
pendence.

# 806.02 Patentability 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 over the prior art.

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

# 806.03 Single Embodiment, Claims Defining Same Essential Fea- tures

Where the claims of an application define
the same essential characteristics of a single
disclosed embodiment of an invention, restric-

tion therebetween should never be required.
This is because the claims are but different
definitions of the same disclosed subject mat-
ter, varying in breadth or scope of definition.

Where such claims appear in different appli-
cations optionally filed by the same inventor,
disclosing the same embodiments, only one
application 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 allow-
able 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
inventions 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. Where

subjects, as disclosed and claimed, are simul-
taneously (a) species under a claimed genus
and (b) dependent or related inventions, then
the question of joinder must be determined by
both the practice applicable to species and the
practice applicable to the particular types of
dependent or related inventions, and if restric-
tion is improper under either practice, restric-
tion should not be required.

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
combination claim was presented and the prac-
tice 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-subcombina-
tion" 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, hav-
ing a subcombination common to each. It is
frequently puzzling to determine whether a
claim readable on two different combinations
is generic thereto, or is restricted to the com-
mon 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.

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

# 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 organiza-
tion covered in each of the species.

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

Once a claim that is determined to be generic
is allowed, the claims restricted to species in
addition to one but not to exceed four addi-
tional species, provided they comply with the
requirements, will ordinarily be obviously al-
lowable in view of the allowance of the generic
claim, since the additional species will depend
thereon or otherwise include all of the limita-
tions 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.
species, and thus be designated a specific spe-
cies claim), or may include two or more of the
disclosed embodiments within the breadth of
scope of definition (and thus be designated
a generic or genus claim).

Species are always the specifically different
embodiments.

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 de-
fined, does not affect the independence of the
embodiments, where the case under considera-
tion contains 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 dis-
closed only for the second species and not the
first. This is frequently expressed by saying
that claims to be restricted to different species,
must recite the mutually exclusive characteris-
tics of such species.

## 806.04(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 exam-
iner unless other reasons compel their refusal.
(Basis: Notice of No. 4, 1949.)

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

Where an applicant files a divisional appli-
cation claiming a species previously claimed
in the parent case, pursuant to and consonant
with a requirement to restrict, there should be
no determination of whether or not the species
claimed in the divisional application is pat-
entable over the species retained in the parent
case.

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

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

(
)

Where generic claims are allowed, applicant
may claim in the same application 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
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 dou-
ble 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 ap-

plications were filed consonant with a require-
ment to restrict.

The various pairs of related inventions are
noted in the following sections. The distinc-
tion between them shown as a basis for re-
quiring restriction, 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
combination is alleged, the claim thereto must
be assumed to be allowable as pointed out in
806.02, in the absence of a holding by the Ex-
aminer to the contrary. When a claim is
found in a patent, it has already been found
by the Office to be for a combination and not
an aggregation and must be treated on that
basis.

## 806.05(b) 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

598382 0-61 ----- 9

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

## 806.05(g) Apparatus and Product Made

The criteria are the same as in 806.05 (f) sub-
stituting 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 as-
pects, (1) the reasons (as distinguished from
the mere statement of conclusion) why the in-
ventions as claimed are either independent or
distinct, and (2) the reasons for insisting upon
restriction therebetween.

### 808.01 Independent Inventions

Where the inventions claimed are independ-
ent, i.e., where they are not connected in de-

sign, operation or effect under the disclosure of
the particular application under consideration
(806.04), the facts relied upon for this con-
clusion are in essence the reasons for insisting
upon restriction. [This situation, except for
species (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 applicant disagrees with
the Examiner. Where the Examiner decides
that there is a patentable distinction between
the species as claimed, see 806.04(h). Thus
the reasons for insisting upon election of one
species, are the facts relied upon for the con-
clusion that there are claims restricted respec-
tively to two or more different species that are
disclosed in the application, and it is not nec-
essary to show a separate status in the art or
separate classification.

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

Even though the examiner rejects the generic
claims, and even though the applicant cancels
the same and thus admits that the genus is un-
patentable, where there is a relationship dis-
closed between species such disclosed relation
must be discussed and reasons advanced leading
to the conclusion that the disclosed relation
does not prevent restriction, in order to estab-
lish the propriety of restriction.

#### 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 sepa-

rate 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
separate 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
classified together. The art cited to show a
separate field of search must in fact be perti-
nent 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 classifi-
cation 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
divided inventions must be permitted.

Since a rejection of linking claims is a pre-
requisite to a requirement to restrict, a com-
plete 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 re-
jection of aggregative 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 Ex-
aminer may require restriction of the claims
so that not more than five species are separately
claimed, is permissive. It may be used in ag-
gravated cases of a multiplicity of species,
without acting on generic claims, to narrow
the issues down to five species. But see
806.04 (h).

# 809.02(a) Election Required-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-

809.02 (b)

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
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 addi-
tion to the single elected species, provided all
the claims to each additional species are writ-
ten in dependent form or otherwise include all
the limitations of an allowed generic claim as
provided by Rule 141."

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

# . How EXPRESSED

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

"Applicant is required (1) to elect a single
disclosed species even though this requirement
be traversed and (2) to list all claims readable
thereon, including any claims subsequently
added. Section 809.02(a) Manual of Patent
Examining Procedure."

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

It is still necessary to (1) reject the generic
claims, if any, or state that none are present,
and (2) to clearly identify each species in-
volved. (Basis: Notice of January 24, 1956.)

Where the search develops prior art which
meets all the claims, action on merits of all
claims should be given. Election may also be
required.

# 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 spe-
cies, 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.
directed to species
The holding should be worded somewhat as fol-
lows: "Claims
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." When
the case is otherwise ready for issue, an addi-
tion worded somewhat as follows should be
added to the holding: "This application is in
condition for allowance except for the presence

)

of such claims. Applicant is given thirty days
from the date of this letter to amend the claims
in conformance to Rule 141 or take other ac-
tion (Rule 144). Failure to take action dur-
ing this period will be treated as authorization
to cancel claims to the nonelected species by
Examiner's Amendment and pass the case to
issue. The prosecution of this case is closed
except for consideration of the above matter."

Claims directed to species not embraced by
an allowed generic claim should be treated as
follows: Claims
are for species not
embraced by allowed generic claims .

as required by Rule 141 and are withdrawn
from further consideration in this case, Rule
142(b).

## 809.02(d) No Species Claims

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

## 809.02(e) Generic Claims Allowable in Substance

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

The treatment of the case should be as indi-
cated in sections 809.02(b), (e) 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
need be given.

The practice parallels the practice for spe-
cies when generic claims are rejected.

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 requir-
ing restriction between two inventions coupled
with a rejection of claims which were found to
link those two inventions. The particular hold-
ing is quoted : "The practice of rejecting claims
of the linking type at the time of making a
requirement of division is considered to be not
only proper but necessary in order to avoid
compelling the examiner to consider the merits
of independent inventions and thus unduly bur-
den 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
which, if allowed, may prevent restriction be-
tween two related inventions that can other-
wise 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, ap-
plicant may petition from the requirement un-
der Rule 144 without waiting for a final action
on the merits of the linking claims; or he may

defer his petition until the linking claims have
been finally rejected, but not later than appeal,
Rule 144, 818.03 (c).

# 810 Action on Novelty

In general, except for linking claims (809)
when a requirement to restrict is made, no ac-
tion 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 Gives on Elected Invention When Requirement Is Made Final

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

## 811 Time for Making Requirement

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

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

# 811.01 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 com-
plied (Ex parte Benke, 1904 C.D. 63; 108 O.G.
1588).

# 811.03 Repeating After Withdrawal- Proper

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

# 811.04 Proper Even Though Grouped Together in Parent Case

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

# 812 Who Should Make the Require- ment

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
transferred 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

(

817

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 per-
tinent art found should be cited that shows
separate 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 applica-
tion 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. 541; 119 O.G. 2335, the particular limi-
tations in the claims and the reasons why such
limitations are considered to restrict the claims
to a particular disclosed species should be men-
tioned if necessary to make the requirement
clear.

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

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

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 exam-
iner 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
subcombination to have utility by itself or in
other combinations, and why he considers that
the combination as claimed does not rely upon
the subcombination as its essential distinguish-
ing part.

Each other relationship of claimed invention
should be similarly treated and the reasons for
the 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)

POL-90

ADDRESS ONLY
THE COMMISSIONER OF PATENTS
WASHINGTON 25, D. C.

U. S. DEPARTMENT OF COMMERCE
PATENT OFFICE
WASHINGTON

All communications respecting
this application should ging tha
serial number, dato of filing.
and name of the applicant.

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

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

PAPER No. 3

Applicant: James A. Black et al.

Ser. No. 733,946

Mallof JUL16,1954 PAT 28 ลาบ

Filed January 3, 1954

For

INTERNAL COMBUSTION ENGINE

## Commissioner of Patents.

This application has been examined.

Reference applied:

Kettering

1,399,000

July

4, 1921

123-148

Patents cited to show classification:

Smith

2,145,789

Dec.

25, 1939

123-78

Jones et al.

2,467,899

Jan.

11, 1949

123-78

II:

Roe

1,799,999

June

13, 1929

261-116

Doe

2,567,890

Mar.

23, 1951

261-116

III.

Brown

1,724,234

Sept.

23, 1929

313-118

White

1,825,780

Apr.

21, 1931

313-118

1\.
Restriction to one of the following inventions is required:

I.
Claims 1 to 6 drawn to a variable clearance-space
internal combustion engine, classified with the
Smith and Jones et al. patents.

II. Claims 7 to 12, drawn to a carburetor subcombina-
tion, classified with the Roe and Doe patents.

III. Claims 13 to 18 drawn to a spark plug subcombina-
tion classified with the Brown and White patents.

2\.
Claim 19 is not grouped because it includes details of both the car-
buretor and the spark plug and hence is not distinct from either Group II or
III. For the purpose of examination, if one of these groups is elected, this
claim will be retained with the elected group. Claim 19 is distinct from the
claims in Group I because it does not include any of the variable clearance-
space features of that group nor do those claims recite the details of the
carburetor or spark plug.

3\.
Claim 19 is rejected as unpatentable over the combination of ignition
and charge-forming devices disclosed in Kettering. (Give statement of reasons)

-2-

4\.
Claim 20 is not grouped and is rejected because it does not partic-
ularly point out and distinctly claim the invention as required in 35 U.S.C.
112.

5\.
The several inventions as grouped above are distinct, each from the
others, because (1) the engine combination as defined in the claims of Group I
does not 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
each 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 combin-
ation defined by the claims of Group I. The carburetor and spark plug as
defined respectively in Groups II and III could equally well be used in a
furnace combination.

6\.
These distinct inventions have acquired a separate status in the art
and have different fields of search as shown by the different classifications
of the above cited exemplary patents.

7\.
Restriction for examination purposes as indicated is proper since the
inventions as grouped are distinct and have both separate status in the art and
divergent fields of search.

8\.
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 requirement. An argument
that a linking claim such as 19 is allowable, unless accompanied by reasons why
the claims to the subcombinations of II and III are considered indivisible in
the absence of such linking claim, will not be considered such a traverse as to
preserve applicants' right of petition (Rules 143 and 144).

9\.
Restriction as between Groups II and III is contingent upon the non-
allowance of claim 19. Should a claim of the character of claim 19 subsequently
be found allowable the question of restriction as between Group II and Group III
will again be considered.

ABC
ABClark/nes

Examiner
RHBrauner

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

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

Point out critical claims of different
scope

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

Classify each group and refer to corre-
sponding patent for evidence.

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

Linking claims
Reject

Make complete rejection, giving rea-
sons therefor

Statement on groups to which linking
claims may be assigned for examina-
tion
Other ungrouped claims
Indicate disposition

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

D. Allegation of distinctness

Point out facts which show distinctness

Treat the inventions as claimed, don't
merely state your conclusion that in-
ventions in fact are distinct

(1) Subcombination - Subcombination
(disclosed) as usable together)
Each usable alone or in other identified
combination
Demonstrate by cited patent
Demonstrate by Examiner's sugges-
tion

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

AND

Subcombination usable alone or in other
combination
Demonstrate by cited patent
Demonstrate by Examiner's sugges-
tion
(3) Process-Apparatus

Process can be carried out by hand or
by other apparatus
Demonstrate by cited patent
Demonstrate by Examiner's sugges-
tion

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 appara-
tus)
By cited patent
By Examiner's suggestion

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

E. Allegation of reasons for insisting upon re-
striction

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 re-
quired for the other

F. Summary statement

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

Include paragraph advising as to response
required.

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

### 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 143. 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 accompany-
ing traverse of the requirement.

## 818.03 (a) Response Must Be Complete

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

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

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

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

# 818.03 (b) Must Elect, Even When Requirements 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
requirement, 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 reconsid-
eration of the requirement was not requested. (See
rule 181.)

# 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

restrict, it is a traverse of a holding of non-
patentability.

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 al-
lowed. If the Office allows such a claim it is
bound to withdraw the requirement and to act
on all linked inventions. But once all linking
claims are canceled Rule 144 would not apply,
since the record would be one of agreement as
to the propriety of restriction.

Where, however, there is a traverse on the
ground that there is some relationship (other
than and in addition to the linking type claim)
that also prevents restriction, the merits of the
requirement are contested and not admitted.
Assume a particular situation of process and
product made where the claim held linking is
a claim to product limited by the process of
making it. The traverse may set forth partic-
ular reasons justifying the conclusion that re-
striction is improper since the process neces-
sarily makes the product and that there is no
other present known process by which the
product can be made. If restriction is made
final in spite of such traverse, the right to
petition is preserved even though all linking
claims are canceled.

# 818.03(e) Applicant Must Make His Own Election

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

# 819 Office Generally Does Not Permit Shift

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

Where the inventions are distinct and of
such a nature that the Office compels restric-
tion, an election is not waived even though the
examiner gives action upon the patentability
of the claims to the non-elected invention, Ex
parte Loewenbach 1904 C.D. 170, 110 O.G. 857,
and In re Waugh 1943 C.D. 411; 553 O.G. 3.
(CCPA).

# 819.01 Office May Waive Election and Permit Shift

While applicant, as a matter of right, may
not shift from claiming one invention to claim-
ing another, the Office is not precluded from
permitting a shift. It may do so where the
shift results in no additional work or expense,
and particularly where the shift reduces work
as by simplifying the issues (Ex parte Heri-
tage Pat. No. 2,375,414 decided January 26,
1944). Having 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).

## 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-

821.03

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

## 821 Treatment of Claims Held to be Drawn to Non-Elected Inventions

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

The propriety of a requirement to restrict, if
traversed, is reviewable by petition under Rule
144.

All claims that the Examiner holds are not
directed to the elected subject matter should be
withdrawn from further consideration by the
Examiner as set forth in section 809.02(c) and
821.01 through 821.03. As to one or more of
such claims the applicant may traverse the Ex-
aminer's holding that they are not directed to
the elected subject matter. The propriety of
this holding, if traversed, is appealable. Thus,
if the Examiner adheres to his position after
such traverse, he should reject the claims to
which the traverse applies on the ground that
they are not directed to the elected subject
matter. Claims for which no traverse is pre-
sented should be withdrawn under Rule 142(b)
as indicated in the other, above noted, section.

## 821.01 After Election With Traverse

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

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

"Claims
stand withdrawn from
further consideration by the examiner, Rule
142(b), as being for a nonelected invention (or
species), the requirement having been 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 can-
cel the noted claims or take other appropriate
action (Rule 144). Failure to take action dur-
ing this period will be treated as authorization
to cancel the nonelected claims by Examiner's
Amendment and pass the case for issue.

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

## 821.02 After Election Without Trav- erse

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

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

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

Under these circumstances, when the case is
otherwise ready for issue, the claims to the
nonelected invention, including nonelected spe-
cies, may be canceled by an Examiner's
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 (or
species) nonelected 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 reconsideration
and review as provided in rules 143 and 144.

The action should take substantially the fol-
lowing form :

"I. Claims ________ are directed to

(identify the invention) elected by
(indicate how the invention was elected, as by
original presentation of claims, election with
(or without) traverse in paper No.
etc.)
and applicant has received an 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-
larly true, where the two or more applications
are due to, and consonant with, a requirement
to restrict which the examiner now considers
to be improper.

### 822.01 Co-pending Before the Exam- iner

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

Where claims in one application are unpat-
entable over claims of another application of
the same inventor (either because they recite
the same subject matter, or because the prior
art shows that the differences do not impart a
patentable distinction), a complete examina-
tion should be made of the claims of one appli-
cation. The claims of the other application
may be rejected on the claims of the one exam-
ined, 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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