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OCR transcription for search; preserved printed pages are authoritative

# Chapter 800 Division; Double Patenting

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

802
Basis for Practice in Statutes and Rules

803

Arbitrary Rules Compelling Division are Void

804
Discretion of Office in Requirements to Divide

804.01
Related Inventions, Do Not Divide if Re-
sult Might be Double Patenting

804.02
Double Patenting When Office Requires Di-
vision

804.03
Related Inventions May be Claimed in One
Patent or Application

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)

806.04 (c)

Species May be Related Inventions
Subcombination Not Generic to Com-
bination

806.04 (đ)

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 (1)

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 Sub-
combination

806.05

(b)
Old Combination-Novel Subcombina-
tion

806.05 (c)
Criteria of Distinctness

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
Division Practice

808
Reasons for Insisting Upon Division

808.01
Independent Invention

808.01 (a) Species

808.02
Related Inventions

809
Divisible Inventions Except for Linking Claims

809.01
Practice First Stated

809.02
Species, Generic Claim Rejected

809.02

(a)
Form of Requirement

809.02 (b)
Allowance or Rejection of Generic
Claim

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 after Final Re-
quirement Prior to Appeal

811
Time for making Division 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
Divided

815
Make Requirement Complete

816
Give Reasons for Holding of Independence or
Distinctness

817
Outline of Division Requirement and Sample
Letter

818
Election and Response

818.01
Response Must Be Complete

818.02
Election Fixed by Action on Claims

818.03
Old Combination Claimed-Not an Election

818.04
Applicant Must Make His Own Election

818.05
Election by Originally Presented Claims

818.05

(a)
Generic Claims Only-No Election of
Species

818.06
Election by Optional Cancelation of Claims

818.07
Election and Traverse in Response to Re-
quirement

818.07 (a)
Must Elect, Even When Requirement is
Traversed

818.07 (b)
Must Traverse to Preserve Right of
Appeal

818.07 (e)
Traverse of Rejection of Linking
Claims

818.07 (d)
Interference Issues Not an Election

818.07 (e)
Office May Waive Election and Permit
Shift

818.07 (f)
Generally Does Not Permit Shift

819
Authority of Primary Examiner in Requirements
to Divide

820
Review by an Examiner of Classification

820.01
Species, With or Without Genus

820.02
Linking Claims Other Than Genus

820.03
Mode of Submission

820.04
Decision Rendered

821
Treatment of Claims to Non-elected Inventions

821.01
After Election With Traverse of Requirement
for Division

821.02
After Election Without Traverse of Require-
ment for Division

821.02
a) Case Otherwise Ready for Issue
821.08
Added Claims to Non-elected Inventions

821.03
(a)
Subsequent Rejections

822
Claims to Inventions That are Not Distinct in

Plural Applications of Same Inventor

822.01
Copending Before Examiner

822.02
Rejection of One Affirmed on Appeal

822.08
One in Issue or in Interference

## 801 Definitions : Division, Double Pat- enting, "Independent", "Distinct"

A requirement to divide is a ruling that two
or more inventions are claimed in a single ap-
plication, which inventions must be presented,
if all are to be claimed, in separate applica-
tions. In other words, it is a requirement to
limit the claims of the application under con-
sideration to one of the plurality of claimed
inventions (Rule 142). Such requirement is, in
effect, a rejection on the ground of misjoinder
of claimed inventions, and may be variously
expressed (809.02 (a), 817, 821.03).

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 through 822.03.

Rule 141 draws a distinction between the two
terms "independent" and "distinct" by setting
forth (1) that independent inventions can not,
but (2) that distinct, dependent inventions
may, be claimed in one application.

As used in this rule the term "independent"
means that there is no disclosed relationship
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 contrasting term "distinct" means that
two or more subjects as disclosed are connected
in design, operation or effect, i. e. they are re-
lated, for example as combination and part
(subcombination) thereof, process and appara-
tus 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).

## 802 Basis for Practice in Statutes and Rules

The basis of division and double patenting
practice is found in the following statutes and
rules :

R. S. 4886; 35 U. S. C. 31: Any person who has in-
vented or discovered any new and useful art, machine,
manufacture or composition of matter may
obtain a patent therefor.

R. S. 4888; 35 U. S. C. 33 : Before any inventor or dis-
coverer shall receive a patent for his invention or dis-
covery ______ he shall particularly point out and dis-
tinctly claim the part, improvement or combination
which he claims as his invention or discovery.

The above statutes are worded in the singu-
Zar; namely, that an inventor may be granted
a patent for his invention. This has frequently
been held to be the basis for the practice of
requiring division, since the statutes author-
ize the issue of a patent for a single invention
and not plural inventions. Conversely, the
statutes authorize issue of but one patent, and
not two or more patents, to an inventor for
one invention, thus establishing the basis for
rejections for double patenting.

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

Under the statutes and rules, the primary
question relative to division and double patent-
ing is, what constitutes a single invention ?

## 803 Arbitrary Rules Compelling Divi- sion Are Void

A Patent Office rule once made it mandatory
to divide between inventions related as a ma-
chine and the process in the performance of
which the machine is used. This rule was held
to be void by Steinmetz v. Allen 1904 C. D.
703; 109 O. G. 549; 192 U. S. 543, since it ar-
bitrarily compelled division between related
inventions without consideration as to whether
or not the claimed inventions were distinct.
The decision points out in great detail wherein
a process and apparatus for its practice may be
so closely related as to be in effect merely two
different ways of stating a single invention.

## 804 Discretion of Office in Require- ments to Divide, and Holding of Double Patenting

Where inventions are so closely related as
not to be distinct one from the other (Sec.
806.03, 806.04 (b), 806.05-806.05 (g) ) the Office
has no discretion, but must permit their joinder
in a single application. Conversely, where in-
ventions that are not distinct are presented by
the same inventor in plural applications, all
except one must be refused.

Only where the inventions as claimed are dis-
tinct (Sec. 806.05-806.05 (g)), or independent
(Sec. 806.04-806.04 (j)), may the Office prop-
erly require division or properly issue plural
patents (Rule 141).

### 804.01 Related Inventions, Do Not Divide If Result Might Be Dou- ble Patenting

The Office policy is not to divide between
related inventions if the result might be a hold-
ing of double patenting (806.05).

But when inventions are independent, i. e.
unrelated, division is proper, even though, as
in the case of independent species, double pat-
enting may result (808.01 (a)).

### 804.02 Double Patenting When Office Requires Division

Where a double patenting situation results
from an erroneous requirement to divide be-
tween related inventions, double patenting
must be held and is not excused because of the
fault of the Office. Thus the Office must be
careful not to be at fault in this respect.

Similarly, where a double patenting situa-
tion results from a requirement to divide be-
tween species (see 806.04 (h) and 808.01 (a))
double patenting must be held.

Where the Office requires division and thereafter
rejects either the parent or the divisional applica-
tion upon the one which has been allowed, that is,
rejects one of the cases on the ground of double
patenting, the applicant quite properly feels that he
has been unjustly treated. The number of instances
in which this has occurred appears to be unduly
large. After the Office has required division, such
rejection should not be made unless it is clearly
justified.

In order to promote uniform practice in this
respect, every action containing a rejection on the
ground of double patenting of either a parent or a
divisional case where division has resulted because
of a requirement to divide (or requirement to elect
species) made by the Office, must be submitted to the
Supervisory Examiner of Classification 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.
(Notice of Nov. 1, 1950.)

## 804.03 Related Inventions May Be Claimed in One Patent or Ap- plication

Rule 141 provides that related inventions
may be claimed in one application by stating
"where several distinct inventions are depend-
ent upon each other and mutually contribute to
produce a single result they may be claimed in
one application."

## 805 Effect of Improper Joinder in Patent

No decision is known in which a patent has
been found void for improper joinder.

In one decision, Sessions v. Romadka et al.
21 F 124, the C. C. E. D. Wisc. on July 26, 1884,
held that a claim to a spring catch to hold a
trunk lid shut was valid and infringed. The
court held that it was extremely doubtful. if
the patentee could rightfully claim the several
other and different parts of the trunk in a
single patent, and ruled that the patentee must
disclaim other claims to the other parts of the
trunk as a condition for grant of relief. The
patentee disclaimed. When the case reached
the U. S. Supreme Court, 1892 C. D. 382; 59
O. G. 939, 145 U. S. 29, the question of mis-
joinder of inventions in a single patent was not
before the Court, the Court ruling "Whether
these different devices were properly embodied
in the same patent or not, we think this was a
proper case for a disclaimer under Sec-
tion 4917."

A comparison of the above case with the two
Hogg et al. v. Emerson cases, 47 U. S. 437 and
52 U. S. 587 makes it extremely doubtful that
the Supreme Court would have held misjoinder
under the Sessions v. Romadka facts.

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

The general principles relating to distinct-
ness or independence are elementary, as shown
by Rule 141 which states: "Two or more
independent inventions can not be claimed in
one application; but (a) where several dis-
tinct inventions are dependent upon each
other and mutually contribute to produce a
single result they may be claimed in one appli-
cation, -", and may be summarized as follows :

(1) Where inventions are independent (i. e.
no disclosed relation therebetween), division

is compulsory. They can not be claimed in
one application. The special considerations
relative to this situation are treated in 806.04
through 806.04 (j). Division is mandatory,
they "can not" be claimed in one application
even though double patenting would be held.
(See 806.04 (h).)

(2) Where inventions are related as disclosed
but are distinct as claimed, double patenting
will not be held, and division may be proper.

(3) Where inventions are related as disclosed
but are not distinct as claimed, division is never
proper and double patenting would invariably
be held if divided.

### 806.01 Compare Claimed Subject Matter

In passing upon questions of double patent-
ing and division, it is the claimed subject mat-
ter that is considered and such claimed sub-
ject matter must be compared in order to
determine the question of distinctness or
independence.

### 806.02 Patentability Not Considered

For the purpose of a decision on the question
of division, 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 division 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, they should
never be divided since there would result a
holding of double patenting. 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 of the same inventor, disclosing the same
embodiments only one application can be
allowed.

### 806.04 Independent Embodiments

Rule 141 contains the provision "Two or
more independent inventions can not be
claimed in one application; * * * "

This rule is mandatory. If it can be shown
that the two or more inventions are in fact
independent applicant must restrict the claims

presented 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 can not 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 practice of treating species as independ-
ent inventions stems from Ex parte Eagle, 1870

C. D. 137 which held that an applicant was en-
titled to illustrate plural different forms of a
generic invention but could claim specifically
but one with which he could present his generic
claims.

#### 806.04 (b) Species-Genus, Species May Be Related Inven- tions

Species 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.

Note 806.04 (d) for definition of generic
claim.

## 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 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. It should be noted that even under the
old rule relating to the three species, the Com-
missioner and the Board of Appeals had held
that when a generic claim is allowed, claims
restricted respectively to the second and third
species must contain every limitation of the
generic claim, although these rulings had not
been uniformly followed. The Notice of April
6, 1948, on this matter is no longer in effect.

Once a claim that is determined to be generic
is allowed, the claims restricted to species above
one but not to exceed five species, provided they
comply with the requirements, will ordinarily
be obviously allowable in view of the allowance
of the generic claim.

When all or some of the claims directed to
one of the species over 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.

## 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) ) and come under the
first provision of Rule 141 since there is usually
no disclosure of relationship therebetween. The
fact that a genus for two different embodiments
is capable of being conceived and defined, does
not affect the independence of the embodiments,
where the case under consideration contains no
disclosure of any community of operation, func-
tion 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 Claims

Prior to June 1, 1930, claims specific to only
one species could be obtained in an application.
On June 1, 1930, old rule 41 was amended to
provide that "more than one species of an inven-
tion, not to exceed three, may be claimed in one
application if that application also includes an
allowable claim generic to all the claimed spe-
cies." This amendment to the rule constitutes
an exception to the first proviso of the rule that
independent inventions can not be claimed in
one application. This provision was repeated
in new rule 141 with clarifying change in
language.

In October 1949, the rule was amended to
permit the claiming of up to five species; the
amended rule is quoted in section 809.02.

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

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

It was early held (when the practice was to
permit the claiming of but a single species)
that an application could claim one species and
such generic claims as might be allowable, but
that no claims restricted to the other species
could be allowed in the same application (Ex
parte Cowper, 1879 C. D. 194; 16 O. G. 499).
If the additional species were patentably dis-
tinct they could be claimed in separate
applications.

The above practice is still in force, as modi-
fied by the changes in the rule permitting the
claiming of first three and now up to five species.

Now, where generic claims are allowed, ap-
plicant may claim in the same application
species not to exceed five, as provided by Rule
141 as amended. 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.

Other applications presented claiming addi-
tional species under the genus claimed in the
first are closely investigated to determine if the
differences are in fact patentable. (See 804.02.)

Where the genus has been allowed and pat-
ented, species claims in another application
(even though copending with the application
that resulted in the patent containing generic
claims) are properly rejected on the generic
claims when not patentably distinct therefrom.

## 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
divide or a rejection on the ground of double
patenting is whether or not the inventions as
claimed are distinct. If they are not distinct,
division is never proper, and if claimed in sepa-
rate applications or patents, double patenting
must be held.

The various pairs of related inventions are
noted in following sections. The distinction be-
tween them shown as a basis for requiring di-
vision, 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 ele-
ment) is a part.

The distinction between combination and ag-
gregation is not material to questions of divi-
sion or to questions of double patenting. Rela-
tive to questions of division where a combina-
tion is alleged, the claim thereto must be as-
sumed 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

Division is never proper between a combina-
tion (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 818.03.)

## 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 can be practiced by another ma-

terially different apparatus or by hand, or (2)
that the apparatus can be used to practice an-
other and materially different 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 claimed is not the necessary or an
obvious process of making the product and the
process can be used to make other and different
products, or (2) that the product 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 Division Practice

Patentability report practice (705), has no
effect upon, and does not modify in any way, the
practice of division, being designed merely to
facilitate the handling of cases in which divi-
sion can not properly be required.

#### 808 Reasons for Insisting Upon Divi- sion

Every requirement to divide has two aspects,
(1) the reasons (as distinguished from the mere
statement of conclusion) why the inventions as
claimed are either independent or distinct, and
(2) the reasons for insisting upon division
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, the
facts relied upon for this conclusion are in es-
sence the reasons for insisting upon division,
since under Rule 141 division is mandatory.
[This situation, except for species (treated in
the following section) is but rarely presented,
since few persons will file an application con-
taining disclosures of independent things.]
Division between independent inventions being
mandatory, (806) it is not necessary that a sepa-
rate status in the art or separate classification
be shown.

## 808.01 (a) Species

Where there is no disclosure of relationship
between species, (see 806.04 (b) ), they are inde-
pendent inventions and division therebetween is
mandatory (806.04) even though there is no
patentable distinction between the species as
claimed. Thus the reasons for insisting upon
division between species, are the facts relied
upon for the conclusion that there are claims
restricted respectively to two or more different
species that are disclosed in the application,
and it is not necessary to show a separate status
in the art or separate classification.

An exception was made by the amendment to
the rules permitting the claiming of three spe-
cies when a claim generic thereto is allowed
and now the claiming of up to five species
(806.04 (g)). The mandatory requirement to
divide applies to all claims restricted to species
in excess of five included within an allowed
genus or to those species over one the claims to
which do not include all the limitations of the
generic claim or in excess of one when there is no
allowed genus, even though these additional
species are not allowable over either the other
species or the allowed genus.

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 division, in order to establish the
propriety of division.

## 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, division is never proper (804,
806.05). If the Office requires division, or if
applicant optionally divides, double patenting
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
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 perti-
nent 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
classification 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 re-
sultant product are classified together, e. g.
Carbon Compounds Class 260. Under these
circumstances, applicant may optionally divide
since double patenting will not be held, but it
is Office policy not to require division.

### 809 Divisible Inventions Except for Linking Claims

There are a number of situations which arise
in which an application has claims to two or
more properly divisible inventions, but pre-
sented in the same case are one or more claims
(generally called "linking" claims) indivisible
therefrom and thus linking together the inven-
tions otherwise divisible.

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 division required among the
several different inventions claimed.

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 divide 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 re-

jection of aggregative claims which operated
to defeat division between two inventions
(which were divisible in the absence of such
aggregated claims) was approved. This was
a Commissioner's decision, in which he said
that to do otherwise would "amount to piece-
meal consideration of the merits of the
application."

#### 809.02 Species-Generic Claim Re- jected

Extract from Rule 141. (b) more than one species
of an invention, not to exceed five, may be specifically
claimed in different claims in one application, provided
the application also includes an allowable claim generic
to all the claimed species and all the claims to each
species in excess of one are written in dependent form
or otherwise include all the limitations of the generic
claim.

[Old rule 41].

The practice is stated in greater detail 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 re-
quire the applicant 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 exam-
iner may require restriction of the claims to not
more than five species before taking any further action
in the case.

[Old Rule 41]

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 ag-
gravated cases of a multiplicity of species, with-
out acting on generic claims, to narrow the
issues down to five species. When a claim
which is generic to more than one of the disclosed
species is allowed, and more than five species
are separately claimed, restriction to not more
than five species should be required.

This rule requires that species be elected, one
when no generic claim is allowed, and up to five
if a generic claim is allowed, in accordance with
whether the allowed genus embraces within its
scope up to five of the disclosed species. Where
the genus embraces within its scope more than
five of the disclosed species, rule 141 restricts
the number that may be specifically claimed to
no more than five.

☒

Rules 141 and 146 require that election must
be one of or not to exceed five of the disclosed
species, not of claims, and the elected species
must be clearly identified.

## 809.02 (a) Form of Requirement

In requiring election of species the Examiner will
note that the application contains claims restricted
to more than one, or more than five disclosed spe-
cies, which he must clearly identify, as for example,
the species of Figs. 1, 2 and 3 or the species of ex-
amples I, II and III respectively. Or, in the absence
of distinct Figures or examples to identify the sev-
eral species, the mechanical means, or the particular
substance, or other distinguishing characteristic of
the species should be stated for each species noted.
Grouping of claims for the respective species should
not be made unless the species cannot be otherwise
identified. The requirement in each case should be
for applicant to elect a particular disclosed species.

Applicant should be 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 list-
ing of all claims readable thereon. An argument
that the generic claims are allowable, or that all
claims are generic or amended to be generic, un-
less accompanied by an election, is non-responsive.

An Examiner's action subsequent to an election
of species should include a complete action on the
merits of all claims that are readable on the elected
species. All other claims should be rejected as not
readable on the elected species. (Notice of Oct. 29,
1940, Revised.)

Where generic claims are rejected and election
of species required, the Examiner's viewpoint
as to the generic nature of the rejected claims
should be clearly stated.

At the time of making a requirement for an
election of species, if it appears that the species
claims are not all in the form prescribed by rule
141, the examiner should state in his action that
upon the allowance of a generic claim applicant
will be entitled to consideration of claims to
not more than four species in addition to the
elected species, provided all the claims to each
additional species are written in dependent
form or otherwise include all the limitations of
the generic claim as provided by rule 141.

When a claim determined to be generic is
allowable, whether on the first or any subsequent
action, and the number of species claimed does
not exceed five, action will be given thereon.

When, after a generic claim is found to be
allowable, any claim directed to one of said
additional species embraced by said generic
claim is not in the required form, all claims to
that species should be rejected. The rejection
should be worded somewhat as follows : Claims

directed to the species _____ , are re-
jected as not being properly claimable in the
same case with other species since all the claims
to this species do not include all the limitations
of the generic claim as required by Rule 141 (as
amended November 1, 1949). Claims to species
not embraced by the generic claim should be
treated as in the third paragraph of this section.

Where only generic claims are first presented and
prosecuted in an application and claims to more
than one species are later presented, applicant must
indicate an election of a single species at the time
of presentation of the species claims, if no generic
claim has been found allowable. If a generic claim
has been found allowable, and claims to not more
than five species are presented, applicant need not
indicate an election of a single species. However,
if claims to more than five species are presented,
applicant must indicate an election of not more
than five species at the time of presentation.
(Notice of April 11, 1951, Revised.)

## 809.02 (b) Allowance or Rejection of Generic Claims

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.)

If more than five species within such genus
are claimed, applicant must be required to elect
the five on which action will be given. Since
rejection of the generic claims is a prerequisite
to the requirement to elect (except where ge-
neric claims are allowed and more than five
species are separately claimed) the rejection
should be on the best art to anticipate the ge-
nerie claims that a complete search makes avail-
able, and for the best reasons that the examiner
can present.

## 809.03 Related Inventions, Linking Claims Rejected

There are other situations where claims serve
to link related inventions in the manner that spe-
cies are linked by a generic claim. Whenever
two related inventions are distinct from each
other as claimed, but there is a claim to inven-
tion from which neither is distinct, the claimed
"linking" invention must be rejected as a pre-
requisite to dividing. 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
division 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 species),
reasons for insisting upon division between re-
lated inventions that are distinct as claimed
must be shown (as in 808.02) whereas the mere
showing of claim restriction to separate dis-
closed species and lack of disclosed relation
therebetween is adequate (808.01(a)).

### 809.03 (a) Types of Linking Claims

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

Aggregation or combination linking two sub-
combinations.

Claim to a product defined by process of mak-
ing 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 division is required 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 to divide is contin-
gent on the non-allowability of the linking
claims, applicant may appeal immediately to
the Board of Appeals as to the division require-

ment under Rule 144 without waiting for a final
action on the merits of the linking claims; or
he may defer his appeal until the linking claims
have been finally rejected. If the latter pro-
cedure is adopted, and the Board allows the re-
jected linking claims, the requirement of divi-
sion falls, and the Examiner must act on the
claims to the non-elected linked inventions.

#### 810 Action on Novelty

In general, except for linking claims (809)
when a requirement to divide 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 to divide,
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 to
divide 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 After Final Requirement Prior to Appeal

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 after a final re-
quirement and prior to appeal. Rule 144 pro-
vides for either immediate appeal on the re-
quirement to divide, or for deferring appeal
until final rejection or allowance of the claims
to the elected invention.

###### 811 Time for Making Division Re- quirement

Rule 142, 2nd sentence: "If the divisibility
of the inventions be clear, such requirement (i. e.
election of the invention to be claimed as re-
quired by 1st sentence) will be made before any
other action upon the merits; otherwise it may
be made at any time before final action in the
case, at the discretion of the examiner."

This means, make a requirement to divide 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

The rule makes it clear that division 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 division is proper
at any stage of prosecution up to final action,
a second requirement may be made when it be-
comes 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 divide is made and
withdrawn or disapproved by an Examiner of
Classification because improper, when it be-
comes proper at a later stage in the prosecution,
division may again be required.

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

Even though inventions are grouped together
in a requirement to divide in a parent case,
division 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
divisible inventions.

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

###### 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 sep-
arate 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 Divided

A. Species. The mode of indicating how to
divide between species is set forth in Sec-
tion 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 indicate clearly the line
of division.

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 divided. It consists in identifying
each separate subject amongst which division
is required, and grouping the claims restricted
thereto 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 to divide, every
effort should be made to have the requirement
to divide complete. If some of the claimed in-
ventions are classifiable in another division
and the examiner has any doubt as to the proper
line for division 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 In- dependence 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, in holding that plural species
are claimed, the particular limitations recited
which are readable upon one disclosed species
should be referred to and the reason why under
the disclosure, the other species are excluded.

Relative to combination and a subcombina-
tion thereof, the examiner should point out the
reasons why he considers the subcombination
to have utility by itself or in other combina-
tions, and why he considers that the combina-
tion 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 Division Requirement and Sample Letter

The statement in 809.02 (a) is adequate in-
dication 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
divide and sample letter is intended to cover
every type of original division requirement be-
tween related inventions including those hav-
ing linking claims, but not rejections on the
ground of prior election of claims reinserted
after election, without traverse (821.02) ; or re-
tained in the case after traverse (821.01), or
added for a different invention after election
(821.03 and 821.03 (a)).

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, subcombina-
tion, 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
eg : previously non-elected, non statutory,
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 useable 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
subcombination

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

☒

E
Allegation of distinctness-Continued
(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

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

F
Allegation of reasons for insisting upon division
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

###### G Sample Letter

I Smith

3,986, 547
Dec

25, 2000
123-31

Jones ___ 3, 698, 521 Nov 27, 1966 123-31

3, 210, 456 July

4, 1976
261-39

II Doe
Roe _____ 3, 336, 660 Oct 12, 1992 261-39

III X

3, 456, 789 Feb

29, 1999
123-69

Y _______ 3, 000, 001 May 30, 1966 123-69
Division is required as follows :

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

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

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

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

Claim 20 is rejected as indefinite and not in com-
pliance with Revised Statutes 4888; 35 U. S. C. 33, and
accordingly is not assigned to any group.

Claim 21 drawn to a bearing structure, is rejected as
being for a previously non-elected invention.

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 subcombi-
nation as defined in the claims of Group II, or the
specific spark plug subcombinations 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 carbu-
retor of Doe and the spark plug of X 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 sepa-
rate status in the art as shown by the different classi-
fications of the above cited exemplary art, and since the
fields of search for the respective inventions are not
coextensive, division is proper, and all claims are re-
jected on the ground of misjoinder.

Applicant is advised that his response to be com-
plete must include an election of one of the above
inventions identified as I, II and III, see Rule 143.
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 indi-
visible in the absence of such claims, will not be con-
sidered a traverse.

###### 818 Election and Response

Eøtract from Rule 142. (a) If two or more in-
ventions are claimed in a single application, and they
are of such a nature that a single patent may not be
issued to cover them the applicant will be required to
limit the claims to whichever invention he may elect,
this official action being called a requirement for
division.

###### [Old Rule 42]

This portion of the rule authorizes the ex-
aminer to make any requirement to divide that
he concludes is appropriate and informs the
applicant that where he has been compelled to
divide he must claim the so divided inventions,
if at all, in separate applications.

The expression "limit the claims" does not
mean that all reference to the non-elected in-
ventions must be eliminated from the applica-
tion but means that applicant must elect, thus
limiting the application.

Election is the designation of the particular
one of divisible inventions that will be prose-
cuted in the application. Election may be
made in other ways than expressly in response
to the requirement. (See 818.05 and 818.06.)

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 divide is a
statement of the reasons upon which the appli-
cant relies for his conclusion that the require-
ment is in error.

###### 818.01 Response Must Be Complete

Rule 143 provides "If the applicant dis-
agrees with the requirement for division, he
may request reconsideration, giving his rea-
sons therefor (see Rule 111)."

The response to a requirement to divide must
be complete as required by Rule 111 which
reads in part: "In order to be entitled to re-
examination or reconsideration, the applicant
must make request 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 ob-
jection and rejection of the prior office action
and the applicant's ac-
tion must appear throughout 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 reconsideration."

Under this rule, the applicant is required to
specifically point out the reasons on which he
bases his conclusion that a requirement to di-
vide is in error. A mere broad allegation that
the requirement is an error is not responsive,
and if the period for response has expired, the
application is abandoned.

#### 818.02 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.

#### 818.03 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 combina-
tion, 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 defined
by the claims under this special situation are not
for distinct inventions. (See 806.05 (c).)

#### 818.04 Applicant Must Make His Own Election

Applicant must make his own election when
division is required. The examiner will not
make the election for him, Rule 142.

#### 818.05 Election by Originally Pre- sented 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 a divisible in-
vention should be rejected as being for an
invention other than that elected. See 821.03
and 821.03 (a).

## 818.05 (a) 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.

## 818.06 Election by Optional Cancella- tion 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.

## 818.07 Election and Traverse in Re- sponse to Requirement

Election in response to a requirement to divide
may be made either with or without an ac-
companying traverse of the requirement.

## 818.07 (a) Must Elect, Even When Re- quirement Is Traversed

Rule 143 provides "If the applicant disagrees
with the requirement for division, he may re-
quest reconsideration, giving the reasons there-
for (see Rule 111). In requesting reconsidera-
tion the applicant must indicate a provisional
election of one invention for prosecution, which
invention shall be the one elected in the event the
requirement becomes final."

Under former practice, some requirements to
divide required an election even though accom-
panied with a traverse, others did not. This
rule makes the practice uniform. A provisional
election must be made in accordance with the
requirement even though accompanied by a
traverse of the requirement.

All requirements to divide should have as a

(
1

(

concluding paragraph a sentence stating in sub-
stance :

"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 para-
graph and 817 at the end of the sample letter.

## 818.07 (b) Must Traverse To Preserve Right of Appeal

Rule 143 provides "The requirement for di-
vision will be reconsidered on such request, but
will not be repeated and made final without the
written approval of an Examiner of Classifica-
tion."

Rule 144 provides "After a final requirement
for division the applicant - may appeal from
the requirement. - Appeal may not be taken
if reconsideration of the requirement was not
requested."

Under these rules, in order to appeal the re-
quirement to divide, the applicant must traverse
the requirement, an Examiner of Classification
must approve the requirement and the Primary
Examiner must repeat it and make it final.

As first stated in ex parte Higinbotham 1922
C. D. 29; 304 O. G. 231, an election following
a requirement to divide, which election is made
without traverse of the requirement results in
loss of right to appeal from the requirement.
This results from the fact that applicant has
acquiesced in the accuracy of the holding so
that the question is not twice acted upon and
appealable questions must be twice acted upon
to give the Board its jurisdiction.

## 818.07 (c) Must Traverse To Preserve Right of Appeal, Traverse of Rejection of Linking Claims

A traverse of the rejection of the linking
claims is not a traverse of the requirement to
divide, 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
division 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 the Higinbotham doctrine would
apply, since the record would be one of agree-
ment as to the propriety of division.

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 division, the merits of the re-
quirement 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 for the conclusion that division is
improper since the process necessarily makes
the product and that there is no other present
known process by which the product can be
made. If division is approved and made final
in spite of such traverse, the right to appeal is
preserved even though all linking claims are
canceled.

## 818.07 (d) 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 appli-
cant may, after the termination of the inter-
ference, elect any one of the inventions that he
claimed.

## 818.07 (e) Office May Waive Election and Permit Shift

Note 818.03 for "old combination" and novel
subcombinations.

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. While
applicant, as a matter of right, may not shift
from claiming one invention to claiming an-
other, the Office is not precluded from permit-
ting a shift. It may do so where the shift re-
sults in no additional work or expense, and par-
ticularly where the shift reduces work as by
simplifying the issues (Ex parte Heritage Pat.
No. 2,375,414 decided January 26, 1944).

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).

Having accepted a shift, case is not abandoned
(Meden v. Curtis, 1905 C. D. 272; 117 O. G.
1795).

Division required, 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 any two
additional species thereunder, this not constitut-
ing a shift (Ex parte Sharp et al., Patent No.
2,232,739).

## 818.07 (f)

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).

## 818.07 (f) Office May Waive Election, Generally Does Not Permit Shift

While in a few instances it is Office policy to
permit shift, the general policy is not to permit
shift. . When claims are presented which the.
Examiner holds are drawn to an invention other
than elected he should reject the claims on that
ground, as outlined in 821.03 and 821.03 (a).

Where the inventions are distinct and of such
a nature that the Office compels division, 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 Authority of Primary Examiner in Requirement To Divide

The requirement to divide is an act by the
Primary Examiner. He cannot make the re-
quirement final when it is traversed without the
approval of an Examiner of Classification.
However, after he has made it final, or before,
he may withdraw it, if he is persuaded that the
withdrawal is proper. After it has been made
final he need not re-submit the same question to
an Examiner of Classification even though the
applicant requests such second consideration
of the same question of division. After a
requirement to divide is made final, the appli-
cant has the right to appeal to the Board of
Appeals if he thinks that further consideration
should be given to the question; ex parte At-
kins, 1940 C. D. 2, 513 O. G. 497.

### 820 Review by an Examiner of Classi- fication

Rule 143 after treating a traverse of a re-
quirement to divide, provides "The requirement
for division will be reconsidered on such re-
quest, but will not be repeated and made final
without the written approval of an Examiner
of Classification, a copy of which approval
shall be supplied to the applicant."

The traverse may persuade the Primary Ex-
aminer that the requirement should be with-
drawn (819). If it does not, he must submit
the requirement to an Examiner of Classi-
fication.

## 820.01 Species, Genus

WHEN NOT SUBMITTED FOR REVIEW

Where generic claims are rejected and elec-
tion of species required, a traverse of the re-
jection is not a traverse of the requirement for
election of species and presents no question for
review by an Examiner of Classification. The
rejection of generic claims is reviewable only
by way of appeal to the Board of Appeals. See
1205 and Ex parte Doane, 1931 C. D. 5; 410
O. G. 275.

Where there is no difference of opinion be-
tween the Examiner and applicant as to the
mutually exclusive character of the species
identified by the Examiner in requiring elec-
tion, there is nothing to be reviewed by an Ex-
aminer of Classification. Thus, where the sole
issue is the question of readability of claims on
the disclosed species (i. e., whether or not
claims are restricted to particular species or
are generic to more than one), there is no re-
view by an Examiner of Classification, the only
review of this question being by way of appeal
(Ex parte Wilcox, 1933 C. D. 1; 427 O. G. 3).

### WHEN SUBMITTED FOR REVIEW

Even though the claimed subjects are species,
and even though the generic claim is rejected,
when the traverse is on the ground that there
is some relation other than or in addition to the
fact that plural species are claimed, the case
is submitted for review.

For example :

Where the Examiner holds claims to be
generic and rejects same, and applicant trav-
erses on the ground that the claims are not
generic but are for a subcombination common
to the inventions claimed, the case should be
submitted for review.

Where the traverse is on the ground that the
species are disclosed as used in a single com-
bination and are indivisible for that reason
even though the generic claims are rejected
(806.04 (b)) the case should be submitted.

## 820.02 Linking Claims Other Than Genus

(

A traverse of the rejection of linking claims
only is not a traverse of the requirement, and
is not reviewed by an Examiner of Classi-
fication.

When there is an additional traverse (other
than the traverse of such rejection) that sets
forth reasons why division among the inven-
tions is improper, it must be submitted to an
Examiner of Classification before being made
final.

(
/

### 820.03 Mode of Submission

Where an examiner makes a complete re-
quirement to divide, fully stating his reasons
as to why the inventions as claimed are con-
sidered to be either independent or distinct and
fully giving his reasons for compelling division,
there is ordinarily no reason for the examiner
in submitting the case for review to write a
memorandum. His reasons are already on rec-
ord, to accompany the traverse of the applicant.

However, where claims are added, a memo-
randum should be submitted to point out how
the added claims should be disposed of in the
light of the requirement to divide.

Also, where the claims are amended in sub-
stance, the examiner may submit a memoran-
dum, if such changes affect the requirement to
divide.

Finally, where some of the arguments in the
traverse have not been anticipated, the exam-
iner may submit a memorandum answering the
same.

### 820.04 Decision Rendered

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

Where a requirement to divide is entirely disap-
proved, the decision of the Classification Examiner
ordinarily should not be entered in the file. When
not entered, the next Office action should either
withdraw the requirement, hold it in abeyance, or
modify it, as the facts warrant. However, where it
is determined upon concurrence of the Supervisory
Examiner of Classification and the Patent Super-
visory Examiner involved that a decision disapprov-
ing the requirement should become a part of the
record, the Primary Examiner will be so notified and
said decision shall be entered and treated in the
manner provided for approvals in whole or in part.
(Notice of Apr. 6, 1948, as amended June 15, 1951.)

### 821 Treatment of Claims to Non- Elected Inventions

For rejection of claims to non-elected species,
see 809.02 (a). Sections 821.01 to 821.03 (a)

deal with the treatment of claims to non-elected
inventions under various election situations.

## 821.01 After Election With Traverse of Requirement for Division

If applicant traverses the requirement for
division and the requirement is approved by
an Examiner of Classification (820 through
820.04), the claims to the non-elected inventions
should, in the subsequent Office action, be finally
rejected on the ground of misjoinder of inven-
tion. The requirement for division is, in ef-
fect, a rejection on the ground of misjoinder
of inventions, and thus lays the ground for the
subsequent final rejection for misjoinder. The
final rejection on the ground of "misjoinder"
indicates that the applicant has retained the
right of appeal on the question of division, and
should be used only when such right of appeal
has been preserved. See 818.07 (b).

In subsequent office actions the claims to the
non-elected inventions, if retained, should be
noted as "standing finally rejected on the
ground of misjoinder."

### 821.02 After Election Without Trav- erse of Requirement for Divi- sion

If the applicant elects without traversing the
requirement for division, the claims to the non-
elected inventions, if retained in the case, are
rejected on the ground that applicant, having
elected without traversing the requirement for
division, has waived the right to further prose-
cute these claims in this application; Ex parte
Higinbotham, 304 O. G. 231; 1922 C. D.29. This
rejection should be repeated in each action so
long as any of these claims is retained and
should be made final when action on the re-
maining claims in the case is made final. The
rejection in this form indicates that the appli-
cant does not have the right to appeal on the
question of division. See 818.07 (b).

The use of the term "estoppel" in this type of
rejection should be avoided.

### 821.02 (a) Case Otherwise Ready for Issue

If during the prosecution of the application
the Examiner believes the case to be in condi-
tion for issue except for the presence of the non-
elected claims retained under the Higinbotham
doctrine, such claims may be cancelled by an
Examiner's Amendment and the case passed for
issue. The Examiner's Amendment should
embody a statement such as follows :

In view of the fact that this application is
in condition for allowance except for the pres-

821.03

ence of non-elected claims -, these claims
have been cancelled.

Under Rule 144 applicant's election of the
subject matter of the allowed claims without
a traverse of the requirement for division con-
stitutes a waiver of the right of appeal from
such requirement and is accordingly treated
as a withdrawal of the non-elected claims.

## 821.03 Added Claims to Non-Elected Inventions

Rule 145 Subsequent presentation of claims for
different invention. If, after an Office action on an
application, the applicant presents claims directed to
an invention divisible from the invention previously
claimed, such claims, if the amendment is entered, will
be rejected and the applicant will be required to limit
the claims to the invention previously claimed. Such
rejection and requirement will not be repeated and
made final without the written approval of an exam-
iner of classification.

Claims to an invention other than that
elected, added after an election has been made,
and including retained claims to a non-elected
invention that are amended, should be rejected
on the ground that the added claims are drawn
to an invention other than that elected, except
where there is a permissible shift. See 818.07
(e). This should be the form of the rejection
regardless of how the election was made,
whether deliberately made with or without
traverse in response to a requirement for
division, 818.07 through 818.07 (c) or whether
made constructively, as by original presentation
(818.05) or by optional cancelation (818.06).
The Examiner should explain, in making the
rejection, in what manner the election was
made.

The rejection above noted is, in effect, a re-
quirement to divide without a right to elect,
since an election already has been made (Ex
parte Pearson, 1918 C. D. 36; 253 O. G. 259).
Accordingly the Examiner should state the
reasons why the subject matter of the rejected
claims is considered divisible from the elected
invention. If there has been a previous re-
quirement for division and it is believed that
the added claims should be divided for the :
same reasons as were given in the previous re -.
quirement, a mere statement to that effect may
be sufficient. If the original reasons require
modification with respect to the new claims, the
modification of these reasons should be stated.
If the reasons stated in the original require-
ment for division (either as such or in slightly
modified form) are not applicable to the newly
added claims (e. g. because they are for subject
matter not before claimed), or if there has been
no previous requirement for division, the

reasons for division as to the added claims
should be stated in a manner similar to an
original requirement (808.01, 808.02, 809.02 (a)
and 817).

## 821.03 (a) Subsequent Rejections of Added Claims

### A. APPLICANT TRAVERSES

If applicant responds to the rejection of the
subsequently presented or amended claims as
drawn to an invention other than that elected
with a proper traverse (818.07 (b) ), he retains a
right of appeal from this rejection of the new
claims. This is true even where the rejected
claims are held by the Examiner to be for the
same subject matter as claims non-elected with-
out traverse in response to a previous division
requirement. (Ex parte Mckillop, 1919 C. D.
125; 269 O. G. 703), and the right to appeal as
to the original non-traversed requirement is
lost (818.07 (b)).

Accordingly, upon traverse of the rejection,
and if the Examiner still believes the rejection
to be proper (819), the question is submitted to
an Examiner of Classification (Rule 145), in
the manner described in 820.03, and if written
approval is obtained (see 820.04), the rejection
of the added claims may be repeated and made
final. The wording of this rejection is "finally
rejected on the ground of misjoinder", thus indi-
cating the preservation of the right of appeal.
The rejection is repeated in subsequent actions
as "stand finally rejected on the ground of mis-
joinder".

It may be noted here that a traverse may,
without denying the divisibility of previously
considered groups of claims, challenge the as-
signment of the new claims to a non-elected
group; but a traverse may not properly be
based upon a mere change of purpose.

### B. APPLICANT DOES NOT TRAVERSE

If the applicant admits the propriety of the
rejection of the added claims as drawn to an in-
vention other than that elected, subsequent re-
jections of these claims, if retained, are on the
ground that applicant, having failed to tra-
verse such rejection, has waived the right to
further prosecute these claims in this applica-
tion; Ex parte Higinbotham, 1922 C. D. 29; 304
O. G. 23. Such rejection indicates the loss of
the right of appeal on the question of division
as to these claims. If the application should
be placed in condition for issue except for the
presence of claims rejected in the manner above
described, these may be cancelled by Examiner's
Amendment. (See 821.02 (a) for form of
amendment).

(

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

It has been pointed out that where the sub-
ject matter claimed in an application is for an
invention not distinct from the subject matter
claimed in a patent issued to the same inventor,
the application claims should be rejected on the
claimed subject matter of the patent, on the
ground of double patenting.

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.

[Old Rule 94]

The following three sections cover unassigned
applications of the same inventor.

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

### 822.01 Co-pending Before the Ex- aminer

Under Rule 78 (b) the practice relative to
overlapping claims in applications co-pending
before the examiner, 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.

### 822.02 Rejection of One Affirmed on Appeal

Where two applications claim inventions that
are not patentably distinct and the examiner's
rejection of one has been affirmed on appeal, the
other may be rejected on the one appealed, on
the ground of res judicata; In re Edison, 1908
C. D. 327; 133 O. G. 1190; 30 App. D. C. 321.
See 706.03 (w).

### 822.03 One in Issue or in Interference

Where one application is already in issue, or
is in interference, the claims in a second appli-
cation by the same inventor that are for either
the same invention or an invention not patent-
ably distinct from the invention allowed or
forming the interference issues should be
rejected. See 709.01.

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