Restriction Practice May 2019 Topics When

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Description

Restriction Practice May 2019 Topics When restriction is proper: independent or distinct inventions and serious burden Restriction and double patenting Breadth vs. patentable distinction Determining distinctness between related inventions

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Presentation Transcript

Restriction Practice May 2019

Topics When restriction is proper: independent or distinct inventions and serious burden
Restriction and double patenting
Breadth vs. patentable distinction
Determining distinctness between related inventions
Election of species
Linking claims
Formulating a restriction requirement and responding to applicant’s election
Rejoinder and withdrawal of restriction requirement. May 2019 Restriction Practice 2

When restriction is proper

Authority for restriction The authority for requiring a restriction between inventions is based in 35 U.S.C. 121 divisional applications, which reads in part:
If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions.

Restriction is the practice of requiring an applicant to elect a single, claimed invention for examination when two or more independent inventions and/or two or more distinct inventions are claimed in the application.
The terms “independent” (i.e., unrelated) and “distinct” (i.e., related but patentably distinct) have mutually exclusive meanings and thus are interpreted as alternative requirements. Only one of these requirements must be met in order to support a restriction.

MPEP 802, 802.02 May 2019 Restriction Practice 4

When restriction is proper For a proper requirement for restriction between patentably distinct inventions, there are two criteria:
(i) Showing the inventions are independent or distinct as claimed
AND
(ii) Showing that there would be a serious search and examination burden on the examiner if restriction is not required.

A restriction requirement is made at the discretion of the examiner.
Restriction is NOT a tool for reducing the number of claims for mere convenience.

MPEP 803(I) May 2019 Restriction Practice 5

Independent inventions Inventions, as claimed, are independent (i.e., unrelated) if there is no disclosed relationship between the inventions. That is, they are unconnected in design, operation, and effect.
For example:

MPEP 802.01 I, 806.06 versus May 2019 Restriction Practice 6

Independent inventions (cont.) Restriction to one independent invention can be required when:
It can be shown that two or more inventions are independent, and
There would be a serious burden on the examiner if restriction is not required.
Examples include:
Two different combinations, not disclosed as capable of use together, having different modes of operation, different functions, and different effects:
An article of apparel and a locomotive; a process of painting a house and a process of boring a well.
Where the two inventions are process and product, and the product cannot be used in, or made by, the process:
A specific process of molding is independent from a molding apparatus that cannot be used to practice the specific process.
Use FP 8.20.02 to restrict between independent, unrelated inventions and FP 8.20.03 to restrict between an unrelated product and process.

MPEP 806.06 May 2019 Restriction Practice 7

Related but distinct inventions These cash registers are related, but may be considered distinct if found to be not connected in at least one of design, operation, or effect.

MPEP 802.01 II, 803 versus May 2019 Restriction Practice 8

Related but distinct inventions (cont.) Two or more inventions are related (i.e., not independent) if they are disclosed as connected in at least one of design (e.g., structure or method of manufacture), operation (e.g., function or method of use), or effect.
Related inventions are distinct if the inventions as claimed are not connected in at least one of design, operation, or effect (e.g., can be made by, or used in, a materially different process) and wherein at least one invention is PATENTABLE (novel and nonobvious) OVER THE OTHER (though they may each be unpatentable over the prior art).
Restriction can be required when related inventions can be shown to be distinct and there would be a serious burden on the examiner if restriction is not required.
MPEP 802.01 II and 806.05 May 2019 Restriction Practice 9

Showing serious burden Reasons must be provided as to why a serious search and examination burden would exist if restriction was not required.
Serious burden can be shown if the inventions have one or more of the following:
Separate classification.
- To show that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search (patents need not be cited).
Separate status in the art when they are classifiable together.
- To show a recognition of separate inventive effort by inventors, may be shown by citing patents which are evidence of such separate status, and also of a separate field of search.
A different field of search.
To show it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different main groups/sub-groups or electronic resources, or employing different search queries), even though the inventions are classified together (patents need not be cited).
MPEP 803 II, 803.02, 806.05, 808.02; FP 8.21 May 2019 Restriction Practice 10

When restriction is not appropriate Restriction cannot be required when one or more of the following are true:
No serious burden exists in searching and examining the claims, even if the claims are drawn to independent or distinct inventions;
Inventions are not distinct as claimed;
There is an express admission that the claimed inventions would have been obvious over each other within the meaning of 35 U.S.C. 103; or
Claims define the same essential characteristics of a single disclosed embodiment.

MPEP 803, 806.03 May 2019 Restriction Practice 11

Restriction and non-statutory double patenting

Restriction and non-statutory double patenting If the examiner indicates, via restriction, that inventions A and B are independent or patentably distinct, this would prohibit any later assertion that A and B are patentably indistinct under non-statutory double patenting, except as noted below (and in MPEP 804.01).
A nonstatutory double patenting rejection between separate applications to A and B could be properly made if the restriction requirement was withdrawn before the rejection.
A nonstatutory double patenting rejection between separate applications to A and B could be properly made if the examiner later determines that the inventions are patentably indistinct and the later application is not a divisional application that has consonance with the restriction requirement.
Consonance means maintaining the line of demarcation between the independent and distinct inventions identified in the restriction requirement. MPEP 804.01B

MPEP 804.01A-H May 2019 Restriction Practice 13

Restriction and non-statutory double patenting (cont.) When restriction is required, the examiner is prohibited from making a non-statutory double patenting rejection against any claim in a subsequent divisional application that is directed only to any of the originally non-elected inventions under 35 U.S.C. 121, unless the restriction requirement was withdrawn.
Improperly applying restriction to patentably indistinct sets of claims can result in the possibility of multiple patents being awarded for patentably indistinct variations of the same invention, since non-statutory double patenting against the divisional applications is prohibited.
Multiple patents for the same invention could lead to multiple lawsuits against an accused infringer by different assignees of patents to the indistinct claims.

MPEP 804.01 May 2019 Restriction Practice 14

Restriction and non-statutory double patenting (cont.) If it is unclear whether restriction should be applied, an examiner should ask whether they would be inclined to apply a nonstatutory double patenting rejection if the claims were presented in different applications:
If yes, then restriction should not be required.
If no, then restriction may be appropriate, but remember that requiring restriction is at the examiner’s discretion and requires a showing of serious search and examination burden. May 2019 Restriction Practice 15

Breadth vs. patentable distinction

Breadth vs. patentable distinction Do not mistake variations in breadth for patentable distinctness. Claims should not be restricted if they define the same essential characteristics of a single disclosed embodiment of an invention.
Claims define the same essential characteristics when the claims:
Provide different definitions of the same invention, or vary only in breadth or scope of the invention.

MPEP 806.03 May 2019 Restriction Practice 17

Breadth vs. patentable distinction (cont.) Claim 1. An ice cube tray for freezing liquids comprising: a frame and multiple compartments within the frame.
Claim 2. The ice cube tray of claim 1, wherein the multiple compartments are star-shaped.
Claim 3. An ice cube tray for freezing liquids comprising: a frame and multiple compartments within the frame, wherein the compartments are polygonal.

Claim 1 is broad while claims 2 and 3 are more narrow. The claims are not restrictable because claim 1 defines the same invention of a structure for making ice cubes, albeit in a broader way. All limitations of claim 1 are anticipated by the limitations of claims 2 or 3 and could serve as the basis for non-statutory double patenting if presented in separate applications. Accordingly, restriction would not be proper. May 2019 Restriction Practice 18

Determining distinctness between related inventions

Types of related inventions Combination - subcombination
Subcombinations usable together
Process and apparatus for its practice
Process of making and product made
Apparatus and product made
Product and process of using
Product, process of making, and process of using
Related products/processes

MPEP 806.05(c)-(j) May 2019 Restriction Practice 20

Combination-subcombination A combination contains two or more subcombinations or elements claimed together.
Combination-subcombination can appear in various forms, as seen below. This list is not exhaustive.
Where A, B, and C represent claim elements, “sp” indicates an element claimed specifically, and “br” indicates an element claimed broadly:
ABsp – Bsp
ABbr – Bsp
ABCsp- Bsp - Csp
ABspCsp- Bsp - Csp
Illustrative examples of these types will follow.

MPEP 806.05(c), 806.05(d) May 2019 Restriction Practice 21

Combination - subcombination (cont.) To support a restriction between a combination and a subcombination a two-way test for distinctness and reasons for insisting on restriction are necessary.
Distinctness can be shown when:
(i) The combination as claimed does not require the particulars of the subcombination as claimed for patentability (i.e., to show novelty and non-obviousness of the combination), AND
(ii) The subcombination has utility either by itself or in another materially different combination.
When these factors cannot be shown, the inventions are not distinct.

MPEP 806.05(c); FP 8.15 May 2019 Restriction Practice 22

Knowledge check 1 Claim 1. A wound dressing comprising:
an adhesive bandage; and
an antibiotic ointment of neomycin and a petrolatum base disposed on a surface of the bandage.

Claim 2. An antibiotic ointment for a wound dressing comprising:
neomycin; and
a petrolatum base. May 2019 Restriction Practice 23

Knowledge check 1 (cont.) We can reasonably ascertain that the inventions are not independent but are related as combination–subcombination.
Which A-B pairing applies (multiple choice)?
ABsp – Bsp
ABbr – Bsp
ABsp – Bbr
Does the combination (adhesive bandage and neomycin petrolatum ointment) not require the particulars of the subcombination (neomycin petrolatum ointment) for patentability (Yes/No)?
No. The combination requires neomycin petrolatum ointment.
Does the subcombination (neomycin petrolatum ointment) have separate utility in another type of dressing or utility on its own (Yes/No)?
Yes. It may have separate utility in another type of dressing such as in a compression or other non-adhesive bandage.
Is this enough to establish distinctness between the combination and subcombination (Yes/No)?
No, because both requirements of the two-way test must be met. May 2019 Restriction Practice 24

Summary: Knowledge check 1 ABsp – Bsp

The combination (wound dressing of claim 1) requires the particulars of the subcombination (ointment of claim 2) for patentability, even though the subcombination has utility either by itself or in another materially different combination, so this claim group pair does not meet the first part of the two-way combination-subcombination test.
While the ointment may have separate utility in another type of dressing, or utility on its own (i.e., it meets part ii of the test), a restriction cannot be made because the two-way test requires meeting both requirements (i) and (ii).
No distinctness - restriction would not be proper. May 2019 Restriction Practice 25

Knowledge check 2 Claim 3. A wound dressing comprising:
an adhesive bandage; and
an antibiotic ointment disposed on a surface of the bandage.

Claim 4. An antibiotic ointment comprising:
neomycin; and
a petrolatum base. May 2019 Restriction Practice 26

Knowledge check 2 (cont.) We can reasonably ascertain that the inventions are not independent but are related as combination – subcombination.
Which A-B pairing applies (multiple choice)?
ABsp – Bsp
ABbr – Bsp
ABsp – Bbr
Does the combination (adhesive bandage and antibiotic ointment) not require the particulars of the subcombination (neomycin petrolatum ointment) for patentability (Yes/No)?
Yes. The combination requires an antibiotic ointment but does not specifically require the type of antibiotic to be neomycin as claimed in the subcombination.
Does the subcombination (neomycin petrolatum ointment) have separate utility in another type of dressing or utility on its own (Yes/No)?
Yes. It may have separate utility in another type of dressing such as in a compression or other non-adhesive bandage.
Can you restrict the combination from the subcombination (multiple choice)?
No, because distinctiveness has not been shown
Yes, because distinctiveness has been shown
Yes, provided that serious burden can be shown May 2019 Restriction Practice 27

Summary: Knowledge check 2 ABbr – Bsp

The combination (wound dressing of claim 3) does not require the particulars of the subcombination (ointment of claim 4) for patentability AND the subcombination of claim 4 can be used by itself or in another materially different combination.

Distinct – restriction would be proper if a serious burden is shown. May 2019 Restriction Practice 28

Subcombinations usable together Two or more claimed subcombinations, disclosed as usable together in a single combination, are usually restrictable when:
At least one subcombination as claimed can be shown to be separately usable or has utility other than in the disclosed combination, AND
The subcombinations as claimed do not overlap in scope*, AND
The subcombinations as claimed are not obvious variants of one another.

*Not overlapping in scope means that the inventions have mutually exclusive limitations or the limitations of one claimed invention would not read on the limitations of the other claimed invention (and vice versa).
Example: a robotic eye has limitations that would not be included in a robotic hand and vice versa, so they do not overlap in scope.
Serious burden must also be shown to support a restriction between subcombinations.

MPEP 806.05(d), FP 8.16 May 2019 Restriction Practice 29

Subcombinations usable together (cont.) When the claim set includes plural subcombinations usable together in a single combination and claims a combination that requires the particulars of at least one of the subcombinations, two-way distinctness and serious burden must be shown.

Each subcombination is distinct from the combination as claimed if:
(A) The combination does not require the particulars of the subcombination as claimed for patentability, and
(B) The subcombination can be shown to have utility either by itself or in another materially different combination. May 2019 Restriction Practice 30

Knowledge check 3 Claim 3. A wound dressing comprising:
an adhesive bandage;
a gauze element secured
to the adhesive bandage;
and
an antibiotic ointment
disposed on a surface of the
gauze element, the
ointment comprising
neomycin and a petrolatum
base. May 2019 Restriction Practice 31

Knowledge check 3 (cont.) Which A-B pairing applies (multiple choice)?
ABspCbr - Bsp - Csp
ABspCsp - Bsp - Csp
ABbrCsp – Bsp - Cbr

Can it be shown that the subcombination claims are separately usable, do not overlap in scope, and are not obvious variants (Yes/No)?
Yes. Subcombination B (claim 4, neomycin ointment) can be used with a plastic bandage and subcombination C (claim 5, woven adhesive bandage) can be used without any ointment. Additionally, subcombination B and subcombination C do not overlap in scope and are not obvious variants.

Is this sufficient to establish that each subcombination is distinct from the combination (Yes/No)?
No. Both two-way distinctness (combination-subcombination) and serious burden must be shown. Sub B does not meet the two-way (combination/subcombination) test since the combination requires all of the particulars of the subcombination. However, Sub C may pass the test for reasons similar to Example 2, so the restriction requirement will result in two distinct groups: Group I: combination (claim 3) + Sub B (claim 4); Group II: Sub C (claim 5). May 2019 Restriction Practice 32

Summary: Knowledge check 3 ABspCbr- Bsp - Csp

If it can be shown that the combination (wound dressing of claim 3) does not require the particulars of either subcombination (ointment of SUB B/claim 4 or bandage of SUB C/claim 5) for patentability, and the subcombinations (ointment of claim 4 and the bandage of claim 5) have utility by themselves or in another materially different combination, two-way distinctness is present between the combination and each SUB. A separate analysis between SUB B and SUB C is required using the one-way test for subcombinations useable together in order to determine if SUB B can be restricted from SUB C.

Distinctness will turn on the analysis. Serious burden must also be shown.

MPEP 806.05(d)) May 2019 Restriction Practice 33

Knowledge check 4 Claim 6. A wound
dressing comprising:
an adhesive bandage formed as a woven strip;
a gauze element formed as a circular pad secured to one side of the bandage; and
antibiotic ointment disposed on the gauze element. May 2019 Restriction Practice 34

Knowledge check 4 (cont.) Which A-B pairing applies (multiple choice)?
ABspCbr - Bsp - Csp
ABspCsp - Bsp - Csp
ABbrCsp - Bbr - Cbr

Can it be shown that the subcombination claims are separately usable, do not overlap in scope, and are not obvious variants (Yes/No)?
Yes. Subcombination B (claim 7, circular gauze pad) can be used without an adhesive woven bandage strip and subcombination C (claim 8, adhesive woven bandage strip) can be used without a circular gauze pad. Additionally, subcombination B and subcombination C do not overlap in scope and are not obvious variants.

Is this sufficient to establish that each subcombination is distinct from the combination (Yes/No)?
No. Both two-way distinctness (combination-subcombination) and serious burden must be shown. Sub B does not meet the two-way (combination/subcombination) test since the combination requires all of the particulars of the subcombination. Additionally, Sub C does not meet the two-way (combination/subcombination) test since the combination requires all of the particulars of the subcombination. Therefore, the restriction requirement will result in two distinct groups: Group I: combination (claim 6) + Sub B (claim 7); Group II: combination (claim 6) + Sub C (claim 8). May 2019 Restriction Practice 35

Summary: Knowledge check 4 ABspCsp- Bsp - Csp

The presence of the first subcombination (the gauze element of claim 7) is evidence that the details of the second subcombination (the adhesive bandage of claim 8) are not required for patentability of the combination (the wound dressing of claim 6) and vice versa.

Distinct - a restriction between the subcombinations would be proper upon a showing of serious search and examination burden.

MPEP 806.05(d)) May 2019 Restriction Practice 36

Process and apparatus for its practice Restriction between a process and an apparatus for its practice is based on a one-way test for distinctness:
(i) The process as claimed can be practiced by another materially different apparatus or by hand; OR
(ii) The apparatus as claimed can be used to practice another materially different process.

MPEP 806.05(e); FP 8.17 May 2019 Restriction Practice 37

Knowledge check 5 Claim 1. A process of painting a wall comprising:
depositing primer on the wall with a tool; and
depositing a pigmented latex paint on the wall
with the tool.

Claim 2. An brush tool comprising:
a handle; and
a plurality of bristles attached to a first
end of the handle. May 2019 Restriction Practice 38

Knowledge check 5 (cont.) Are the process (painting a wall with a tool) and the apparatus (brush tool) distinct?
Select all that could apply:
Yes, the apparatus (brush tool) can be used to practice another materially different process such as sweeping a floor.
Yes, the process (painting a wall with a tool) can be practiced with a materially different apparatus such as painting a wall with a roller.
No, the process (painting a wall with a tool) can only be practiced with the apparatus (brush tool).
No, the apparatus (brush tool) can only be used to practice the process (painting a wall with a tool). May 2019 Restriction Practice 39

Summary: Knowledge check 5 The apparatus of claim 2 (brush) can be used to practice another, materially different process than claim 1 (painting a wall), such as sweeping a floor. Alternatively, the process of claim 1 (painting a wall) can be practiced with a materially different apparatus than the apparatus of claim 2 (brush), such as a roller.

Distinct – restriction would be proper if serious burden is shown. May 2019 Restriction Practice 40

Process of making and product made Restriction between a process of making and a product made is based on a one-way test for distinctness:
(i) The process as claimed is not an obvious process of making the product, and the process as claimed can be used to make another materially different product, OR
(ii) The product as claimed can be made by another materially different process.

MPEP 806.05(f); FP 8.18 May 2019 Restriction Practice 41

Knowledge check 6 Claim 1. A process of making strips of material comprising:
weaving cotton fibers together to form a fabric sheet; and
cutting the fabric sheet into a plurality of strips.

Claim 2. A bandage comprising:
a strip of material having an adhesive layer. May 2019 Restriction Practice 42

Knowledge check 6 (cont.) Are the process (making strips of woven material) and the product (material strip with adhesive) distinct?
Select all that could apply:
Yes, the product (material strip with adhesive) can be made by another materially different process such as cutting a plastic sheet.
No, the process (making strips of woven material) can only be used to make the product (material strip with adhesive).
Yes, the process (making strips of woven material) can be used to make a materially different product such as a towel.
No, the product (material strip with adhesive) can only be made by the process (making strips of woven material). May 2019 Restriction Practice 43

Claim 1. A process of making a strip material
comprising:
weaving cotton fibers together to form a
fabric sheet; and
cutting the fabric sheet into a plurality of
strips.

Claim 2. A bandage comprising:
a strip of material having an adhesive layer.

The product of claim 2 (bandage) can be made by a materially different process than claim 1 (weaving), such as cutting a plastic sheet. Alternatively, the process of claim 1 (weaving) can be use to make a materially different product than claim 2 (bandage), such as a towel.
Distinct - restriction would be proper if serious burden is shown. May 2019 Restriction Practice 44 Summary: Knowledge check 6

Apparatus and product made Restriction between an apparatus and a product made by the apparatus is based on a one-way test for distinctness:
(i) The apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make another materially different product, OR
(ii) The product as claimed can be made by another materially different apparatus.

MPEP 806.05(g); FP 8.19 May 2019 Restriction Practice 45

Knowledge check 7 Claim 1. An apparatus for doping a material
comprising:
a mixing chamber;
a heater; and
an ion implanter.

Claim 2. An N-type doped semiconductor
device comprising:
a silicon base; and
a phosphorous dopant in the base. May 2019 Restriction Practice 46

Knowledge check 7 (cont.) Are the apparatus and product made distinct?
Select all that could apply:
Yes, the apparatus (doping apparatus) can make a materially different product such as a P-type doped semiconductor.
No, the product (N-type doped semiconductor) can only be made by the apparatus (doping apparatus).
No, the apparatus (doping apparatus) can only make the product (N-type doped semiconductor).
Yes, product (N-type doped semiconductor) can be made by a materially different apparatus such as a diffusion-type doping apparatus. May 2019 Restriction Practice 47

Summary: Knowledge check 7 Claim 1. An apparatus for doping a material
comprising:
a mixing chamber;
a heater; and
an ion implanter.
Claim 2. An N-type doped semiconductor
device comprising:
a silicon base; and
a phosphorous dopant in the base.

The product of claim 2 (semiconductor) can be made by a materially different apparatus than claim 1 (doping apparatus), such as a diffusion-type doping apparatus. Alternatively, the apparatus of claim 1 (doping apparatus) can make another materially different product than claim 2 (N-type doped semiconductor), such as a P-type doped semiconductor.
Distinct – restriction would be proper if serious burden is shown. May 2019 Restriction Practice 48

Product and process of using a product Restriction between a product and process of using a product is based on a one-way test for distinctness:
(i) The process of using as claimed can be practiced with another, materially different product, OR
(ii) The product as claimed can be used in a materially different process.

MPEP 806.05(h); FP 8.20 May 2019 Restriction Practice 49

Knowledge check 8 Claim 1. A process of painting a wall comprising:
depositing primer on the wall with a tool; and
depositing a pigmented latex paint on the wall with the tool.

Claim 2. A brush tool comprising:
a handle; and
a plurality of bristles attached to a first end of the handle. May 2019 Restriction Practice 50

Knowledge check 8 (cont.) Are the process (painting a wall with a tool) and the product (brush tool) distinct?
Select all that could apply:
No, the process (painting a wall with a tool) can only be practiced with the product (brush tool).
No, the product (brush tool) can only be used to practice the process (painting a wall with a tool).
Yes, the product (brush tool) can be used to practice another materially different process such as sweeping a floor.
Yes, the process (painting a wall with a tool) can be practiced with a materially different product such as painting a wall with a roller. May 2019 Restriction Practice 51

Summary: Knowledge check 8 Claim 1. A process of painting a wall comprising:
depositing primer on the wall with a tool; and
depositing a pigmented latex paint on the wall
with the tool.
Claim 2. A brush tool comprising:
a handle; and
a plurality of bristles attached to a first end of
the handle.

The product of claim 2 (brush) can be used in a materially different process than claim 1 (painting a wall), such as cleaning. Alternatively, the process of claim 1 (painting a wall) can be practiced with a materially different product than claim 2 (brush), such as a roller.
Distinct – restriction would be proper if a serious burden is shown.
Note this scenario is very similar to the process and apparatus for its practice. There may be more than one way to analyze and show distinctness between claim groupings. May 2019 Restriction Practice 52

Establishing distinctness between product, process of making, and process of using Where claims to all three categories -- product, process of making, and process of using -- are present, a three-way requirement for restriction can only be made when:
(i) The process of making the product as claimed is distinct from the product, AND
(ii) The process of using the product as claimed is distinct from the product, AND
(iii) The process of making the product as claimed is distinct from the process of using the product.
If a showing of distinctness cannot be made between the process of making and the product, the process of using may be joined with process of making and the product.

MPEP 806.05(i) May 2019 Restriction Practice 53

Knowledge check 9 Claim 1. A process of making strips of material comprising:
weaving cotton fibers together to form a fabric sheet; and
cutting the fabric sheet into a plurality of strips.

Claim 2. A bandage comprising:
a strip of material having an adhesive layer.

Claim 3. A method of treating a burn, comprising
applying a strip shaped bandage with burn salve to a patient. May 2019 Restriction Practice 54

Knowledge check 9 Are the process of making (making woven strips), the product (bandage), and the process of using (treating a burn) distinct?

Assuming serious burden can be shown, select the appropriate grouping:
Group 1 (Claim 1); Group 2 (Claims 2 & 3)
Group 1 (Claims 1&2); Group 2 (Claim 3)
Group 1 (Claims 1&3); Group 2 (Claim 2)
Group 1 (Claims 1&2); Group 2 (Claims 2&3)
Group 1 (Claim 1); Group 2 (Claim 2); Group 3 (Claim 3)
Group 1 (Claims 1&3); Group 2 (Claims 2&3)
Restriction is not proper since the process of making the product, the product, and the process of using the product are not distinct May 2019 Restriction Practice 55

Summary: Knowledge check 9 Claim 1. A process of making strips of material comprising:
weaving cotton fibers together to form a fabric sheet; and
cutting the fabric sheet into a plurality of strips.
Claim 2. A bandage comprising:
a strip of material having an adhesive layer.
Claim 3. A method of treating a burn, comprising:
applying a strip shaped bandage with burn salve
to a patient.

The product of claim 2 (bandage) can be made by a materially different process than claim 1 (weaving), such as cutting a plastic sheet. The product of claim 2 (bandage) can be used in a materially different process than claim 3 (treating a burn), such as holding an incision together. The process of making of claim 1 (weaving) does not overlap in scope, is not an obvious variant, and has a materially different mode of operation or effect, with the process of using of claim 3 (treating a burn).
Distinct – restriction can be made between all three if a serious burden is shown. May 2019 Restriction Practice 56

Related products or related processes Restriction between related products or related processes is based on a two-way test for distinctness, which means both (or all, if more than two) claim groups in question must meet these criteria:
(i) The inventions as claimed do not overlap in scope, AND
(ii) The inventions as claimed are not obvious variants, AND
(iii) The inventions as claimed are not capable of use together or can have a materially different design, mode of operation, function, or effect.

MPEP 806.05(j) May 2019 Restriction Practice 57

Election of species

Election of species An election of species is a type of restriction requirement.
An election of species may be required when there are multiple patentably distinct embodiments of an invention claimed, and where there is a serious burden to the examiner to examine all of them.
In election of species situations, generic claims may or may not be present.
Distinct species are identified by figures or distinguishing characteristics.
Claims can be used for grouping when figures and description are not convenient.

MPEP 808.01(a) May 2019 Restriction Practice 59

Election of species (cont.) Two-prong test for distinctness:
(i) Each species, as claimed, requires a mutually exclusive limitation, AND
(ii) The species, as claimed, are not obvious variants of each other.

MPEP 806.04(f) May 2019 Restriction Practice 60

Election of species (cont.) Election of species cannot be required:
When the species are obvious variants of each other,
OR
Where the examining the species together would not present a serious burden,
OR
When the claims are only directed to a single species, with no generic claim.

MPEP 803, 806.04, 809.02(a), 808.01(a), FP 8.01 May 2019 Restriction Practice 61

Knowledge check 10 Claim 1.
A smartphone comprising:
an aluminum casing;
a processor; and
a planar display.

Claim 2. The smartphone of claim 1,
wherein the planar display is a liquid
crystal display (LCD) comprising a
backlight.

Claim 3. The smartphone of claim 1,
wherein the planar display is a fluorescing
organic LED (OLED) display. Fig. 1: Backlight LCD display Fig. 2: OLED display May 2019 Restriction Practice 62

Knowledge check 10 (cont.) Which statement must be true for an election of species to be required?
The LCD and OLED display embodiments of Figs 1 & 2 are not disclosed to be obvious variants and would not have been considered so by one of ordinary skill in the art, AND serious burden can be shown.
The LCD and OLED display embodiments of Figs 1 & 2 are not disclosed to be obvious variants, but one of ordinary skill in the art would have considered them to have been obvious variants, AND serious burden can be shown.
The LCD and OLED display embodiments of Figs 1 & 2 are disclosed to be obvious variants and would have been considered so by one of ordinary skill in the art, AND serious burden can be shown.
The LCD and OLED display embodiments of Figs 1 & 2 are not disclosed to be obvious variants and would not have been considered so by one of ordinary skill in the art, but serious burden cannot be shown. May 2019 Restriction Practice 63

Summary: Knowledge check 10 An election of species requirement can be made if:
The LCD and OLED display embodiments of Figs 1 & 2 are not disclosed to be obvious variants and would not have been considered so by one of ordinary skill in the art.
It can shown that it would be a serious burden to examine the embodiments together.
Make the election requirement by identifying the species indicating the figures and identifying claim 1 as generic.
In the absence of illustrated or disclosed distinguishing characteristics, claims should be used for grouping.
Applicant must respond by electing an embodiment and indicating which claims correspond to the elected species.
The claims corresponding to the elected species will be examined along with generic claim 1. May 2019 Restriction Practice 64

Election of species – Markush groupings A Markush group is a closed list of alternatives recited in a single claim (e.g., “selected from the group consisting of amino, halogen, nitro, chloro, and alkyl”).
This specific wording is not required for Markush treatment.
Election of species may only be required between patentably distinct alternatives in a proper Markush claim.
Patentably indistinct alternatives should be grouped together.
When an elected species in a proper Markush claim is found to be allowable, another species must be examined, until one species is found in the prior art, or until the entire Markush group is found to be allowable over the prior art.

MPEP 803.02 III (A); 2117 May 2019 Restriction Practice 65

Linking claims

What is a linking claim? A linking claim is a claim which, if allowable, links together claimed inventions that would otherwise be properly divisible (restrictable).
When a linking claim is found to be allowable, any restriction between linked claims must be withdrawn and the claims rejoined.
In this case, the record should be made clear that the restriction has been withdrawn, and identify which claims are being rejoined, as appropriate.

MPEP 809 May 2019 Restriction Practice 67

Linked inventions and common claim types linking them Linking claims and linked inventions are usually either product claims linking properly divisible product inventions, or process claims linking properly divisible process inventions.
The most common types of linking claims are:
Genus claims linking species claims.
Subcombination claims linking plural combinations.
Restriction can be required between claims to distinct (but linked) inventions.
If a linked invention is elected, the linking claims are examined with the elected invention.
MPEP 809.03 May 2019 Restriction Practice 68

Knowledge check 11 Claim 1 (subcombination A). A heat exchanger having a series of tubes connected to plenums at each end of said series of tubes.
Claim 2 (combination AB). A heating system comprising a heating element and a heat exchanger having a series of tubes connected to plenums at each end of said series of tubes.
Claim 3 (combination AC). A refrigerator comprising a housing with at least one door, an ice maker, and a heat exchanger having a series of tubes connected to plenums at each end of said series of tubes. 1. Which claim is a linking claim?
Claim 1
Claim 2
Claim 3
2. Assuming serious burden can be shown, are there inventions that can be restricted from one another? If so, identify the appropriate groups.
Group 1 (Claim 1); Group 2 (claims 2, 3)
Group 1 (Claim 1); Group 2 (Claim 2); Group 3 (Claim 3)
Group 1 (Claims 1, 2); Group 2 (Claims 1, 3)
No restriction possible May 2019 Restriction Practice 69

Summary: Knowledge check 11 Claim 1 is a linking claim because it links claims 2 and 3.
Claim 1 cannot be properly restricted from claims 2 and 3. However, claims 2 and 3 can be restricted from each other.
Any restriction requirement would require election between claims 2 and 3 where either election would include claim 1 (the linking claim). May 2019 Restriction Practice 70

Formulating a restriction requirement

Basic steps for restriction among claim groups Determine if two or more independent or distinct inventions are claimed (combination-subcombination, product and process for using, etc.).
For each claim, identify the group to which it belongs.
Determine CPC classification for each group.
- If any groups are classified outside your art area, confirm classification with the other art unit(s) (MPEP 812.01).
Explain how each group is independent or distinct from each other group.
Request oral election.
- No telephone communication is required when the requirement for restriction is complex, the applicant is a pro se, or the examiner knows from past experience that an election will not be made by telephone. (See MPEP 812.01)
If no oral election is made, proceed to written requirement. May 2019 Restriction Practice 72

Written record of restriction requirement among claim groups Group claims from which election is to be made.
Use FPs 8.08-8.11. (Many of the following items will be set forth in the form paragraphs.)
Identify each group by Roman numeral.
List claims in each group. (Check accuracy of numbering of the claims; look for same claims in two groups; and look for omitted claims.)
Give short description of total extent of the subject matter claimed in each group, pointing out critical claims of different scope and identifying whether the claims are directed to a combination, subcombination, process, apparatus, or product, as appropriate.
Classify each group. May 2019 Restriction Practice 73

Written record of restriction requirement among claim groups (cont.) Provide reasons for distinctness.
Use FP 8.13 followed by FPS 8.14-8.20.03, as appropriate.
Explain how each group is independent or distinct from each other group.
Establish burden, require election, and explain means for traversal.
Use FP 8.21.
Provide further information, where:
There are linked inventions (FP 8.12).
Oral election was requested (FP 8.23 or 8.23.01).
There are joint inventors (FP 8.23.02).
There are claims to a product and a process of making or using the product (FP 8.21.04). May 2019 Restriction Practice 74

Written record of restriction requirement among claim groups (cont.) Set shortened statutory period for reply.
TWO months if requirement for restriction/election of species only (no action on the merits).
THREE months if requirement for restriction/election of species is part of an action on the merits.
For more information, see MPEP 817. May 2019 Restriction Practice 75

Formulating an election of species requirement

Formulating an election of species requirement Identify any generic claims.
Identify the patentably distinct species, preferably by figures or distinguishing characteristics.
If species cannot be conveniently identified by figures or characteristics, claims may be used for grouping.
Explain how each group is independent or distinct from each other group.
Follow the same general procedures for restriction (attempt to obtain oral election, etc.)
Applicant is required to elect a single disclosed species (or group of patentably indistinct species) and should identify the claims that correspond to the elected embodiment.
MPEP 809.02(a) May 2019 Restriction Practice 77

Written record of election requirement Clearly identify the patentably distinct species or groups of species from which an election is to be made.
Use form paragraphs 8.01 and 8.02. (Many of the following items will be set forth in the form paragraphs.)
Explain reasons for distinctness and how each group is independent or distinct from each other group.
Establish burden.
Require election and explain means for traversal.
Explain procedure upon allowance of a generic claim. May 2019 Restriction Practice 78

Written record of election requirement (cont.) Provide further information where:
There are joint inventors (FP 8.23.02).
Oral election was requested (FP 8.23 or 8.23.01).
Set shortened statutory period for reply:
TWO months if requirement for restriction/election of species only (no action on the merits.)
THREE months if requirement for restriction/election of species is part of action on the merits. May 2019 Restriction Practice 79

Responding to applicant’s election

Oral elections When an oral election is made, the next office action must include a written record of the restriction requirement and a complete action on the merits of the elected invention.
The write-up should clearly explain the claim groupings and/or species and the grounds upon which they are found to be independent or distinct.

When applicant declines to make an oral election, the next office action should be a written restriction requirement; NO action on the merits is made.
Form paragraph 8.23.01 should be used.
All automated steps in OC form paragraphs for making a restriction requirement must be followed and information filled in.
MPEP 812.01 May 2019 Restriction Practice 81

Election with/without traverse Examiner’s response to an election should indicate whether the election was made with or without traverse.
If applicant does not distinctly and specifically point out the supposed errors in the restriction requirement, examiner should treat the election as made without traverse and should make that of record in the next office action.

MPEP 818.01 May 2019 Restriction Practice 82

Election with/without traverse (cont.) Upon consideration of applicant’s election with traverse, the examiner may maintain the restriction requirement; and, if unchanged, should make the requirement final.
Additional explanation should specifically respond to all of applicant’s traversal arguments.
Applicant may petition a traversed, final restriction under 37 C.F.R. 1.144 at any time before appeal.
If a petition is granted or granted-in-part, examiner must examine the claims that are no longer subject to restriction as set forth in the petition decision in the next office action.

MPEP 818.01(d) for additional details regarding traversal of a restriction requirement with linking claims. May 2019 Restriction Practice 83

Timing of a restriction requirement 37 C.F.R. 1.142(a) Requirement for restriction states:
…Such requirement will normally be made before any action on the merits; however, it may be made at any time before final action.
Restrictions after first office action should be rare. Due to the requirement that a serious burden on the examiner exists, restriction is not normally appropriate if the invention has been searched and the claims have been examined.

MPEP 811 and 818.02(b) provide guidance in making later restrictions between species/linked claims, where only generic claims were first presented and prosecuted. May 2019 Restriction Practice 84

Election by original presentation

Election by original presentation Election by original presentation limits the subsequent prosecution to the initially-examined (acted upon) invention in a single application.
Applicants are generally not permitted to switch inventions after an election is made in response to a restriction requirement, and there has been an office action on the merits of the elected invention.
Requests for continued examination (RCEs) may not be used as a matter of right to shift inventions.

MPEP 706.06(h)VI(B), 818.02(a), 819, 821.03 May 2019 Restriction Practice 86

Election by original presentation (cont.) If applicant later presents claims directed to an invention that is independent or distinct from claims previously examined on the merits, such claims may be withdrawn from consideration as being directed to a non-elected invention.
Use FP 8.04 to notify the applicant that those claims will not be examined due to election by original presentation.
An amendment cancelling all claims drawn to the elected invention and presenting only claims drawn to the non-elected invention should not be entered. Such an amendment is non-responsive. Applicant should be notified using FP 8.26.

MPEP 821.03 May 2019 Restriction Practice 87

Election by original presentation (cont.) Originally presented claims may be considered constructively elected regardless of whether a restriction requirement was previously issued by the examiner (e.g., where original claims were directed to only one invention, but after an action on the merits, applicant introduced claims to a second, patentably distinct invention).

When applying election by original presentation, the next office action should include a full explanation of why the new invention(s) is/are independent or distinct from the originally presented invention, using the same reasoning and relationships discussed for restriction.
The office action should also include the election by original presentation form paragraph (FP 8.04).

MPEP 821.03 May 2019 Restriction Practice 88

Limits on election by original presentation Election by original presentation is NOT applicable when:
A provisional election of a single species was made in accordance with MPEP 803.02 in a Markush claim and applicant amends the claims such that the elected species is cancelled.
Applicant presents claims that could not have been restricted from the claims drawn to the elected invention had they been presented earlier. May 2019 Restriction Practice 89

Knowledge check 12 Original application includes the following claims:

Claim 1. A toolkit comprising a socket wrench, a hammer, and a screwdriver.

Claim 2. The toolkit of Claim 1, wherein the hammer is a ball peen hammer.

Examiner completes a non-final office action examining claims 1 and 2.

Applicant responds with the addition of the following new claim:

Claim 3. A method of making a hammer comprising a step of casting. May 2019 Restriction Practice 90

Knowledge check 12 (cont.) Which of the following actions can be taken by the examiner after the applicant has added claim 3 (multiple choice)?
Providing an office action on the merits examining claims 1 and 2 and withdrawing claim 3 with no explanation as to why it has been withdrawn.
Providing an office action on the merits examining claims 1 and 2 and withdrawing claim 3 with an explanation as to why the invention of claim 3 is independent or distinct from the originally presented claim set and why serious burden on the examiner exists.
Providing an office action on the merits examining claims 1 and 2 and withdrawing claim 3 with the explanation that claim 3 is drawn to a different statutory category than claims 1 and 2.
Sending out a Notice of Non-Compliant Amendment. May 2019 Restriction Practice 91

Summary: Knowledge check 12 Claim 1. A toolkit comprising a socket wrench, a hammer, and a screwdriver.
Claim 2. The toolkit of Claim 1, wherein the hammer is a ball peen hammer.
Claim 3. A method of making a hammer comprising a step of casting.

Claim 3 can be withdrawn according to election by original presentation with an explanation as to why the invention of claim 3 is independent or distinct from the originally presented claims. For example, the hammer of the claimed toolkit can be made by the materially different process of stamping. May 2019 Restriction Practice 92

Rejoinder/withdrawal of restriction requirement

Rejoinder Rejoinder involves withdrawal of a restriction requirement between an allowable elected invention and a non-elected invention and examination of the formerly non-elected invention on the merits.
In order to be eligible for rejoinder, a claim to a non-elected invention must depend from or otherwise require all the limitations of an allowable claim.
Rejoined claims must be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103, and 112.
Any rejoinder must be clearly explained on the record.

MPEP 821.04 May 2019 Restriction Practice 94

Rejoinder (cont.) As a best practice, examiners should check whether rejoinder is appropriate after each amendment, and each time an office action is sent.
If all claims elected with traverse are ready for allowance and rejoinder is NOT appropriate, examiner must request permission from applicant to cancel non-elected claims.
If an election was made without traverse, claims directed to non-elected species and non-elected inventions that are eligible should be rejoined; if not rejoined, such claims may only be cancelled by examiner’s amendment when expressly authorized by applicant.

MPEP 821.01, 821.02, and 821.04 May 2019 Restriction Practice 95

Rejoinder of allowable linking claims When a linking claim is allowable, any restriction requirement between the inventions it links cannot be maintained.
The record must clearly state that the restriction requirement has been withdrawn, even if claims to non-elected linked inventions have been canceled.
Any pending claim(s) depending from or otherwise requiring all the limitations of the allowable linking claim(s) will be rejoined and fully examined for patentability.
When a restriction requirement is withdrawn, the examiner should notify the applicant that any canceled subject matter directed to the non-elected groups may be re-introduced via amendment.
The applicant need not request rejoinder.

MPEP 809, FP 8.01, FP 8.02, FP 8.12 May 2019 Restriction Practice 96

Rejoinder relating to combinations Upon determining that all claims directed to an elected combination invention are allowable, the examiner must reconsider the propriety of any restriction requirement between the combination and any subcombination(s).
If allowable in view of patentability of at least one subcombination, withdraw restriction between elected combination and patentable subcombination.
Rejoin any subcombinations that were searched and found allowable.
Rejoin any non-elected claims that require all the limitations of the allowable claim.

MPEP 806.05(d) May 2019 Restriction Practice 97

Rejoinder of process requiring an allowable product If elected product claim(s) are subsequently found allowable, consider withdrawn process claims which depend from or otherwise require all the limitations of an allowable product claim for rejoinder.
All claims directed to a non-elected process invention must depend from or otherwise require all the limitations of an allowable product claim to be rejoined.
Upon rejoinder of claims directed to a previously non-elected process invention, the restriction requirement is withdrawn.
If applicant cancels all the claims directed to a non-elected process invention before rejoinder occurs, the examiner should not withdraw the restriction requirement.
This will preserve applicant’s rights under 35 U.S.C. 121.

MPEP 821.04(b) May 2019 Restriction Practice 98

Knowledge check 13 Claim 1 (original). A mobile inventory drive unit comprising a front end sensor.
Claim 2 (original). The mobile inventory drive unit of Claim 1, wherein the front end sensor is a proximity sensor.
Claim 3 (original). The mobile inventory drive unit of Claim 1, wherein the front end sensor is a thermal sensor.
In this art, the proximity sensor and thermal sensor are patentably distinct.
The examiner requires an election of species between the proximity sensor and the thermal sensor.
Applicant elects the proximity sensor embodiment (claim 2) without traverse.
Claims 1 is a linking claim and is examined with claim 2 on the merits. May 2019 Restriction Practice 99

100

Knowledge check 13 (cont.) Claim 1 (amended). A mobile inventory drive unit comprising a front end sensor and an XYZ processor.
Claim 2 (original). The mobile inventory drive unit of Claim 1, wherein the front end sensor is a proximity sensor.
Claim 3 (original). The mobile inventory drive unit of Claim 1, wherein the front end sensor is a thermal sensor.

Applicant later amends claim 1 to include a novel XYZ processor, which renders claim 1 allowable. May 2019 Restriction Practice 100

101

Knowledge check 13 (cont.) What would be the appropriate course of action (multiple choice)?
Maintain the election of species.
Call applicant for approval to cancel the non-elected species by examiner’s amendment.
Withdraw the restriction requirement, rejoin the non-elected species because it requires all the limitations of allowable genus claim 1, and examine claim 3 for compliance with the statutes. May 2019 Restriction Practice 101

102

Knowledge check 13 (cont.) Additional note:
If claim 3 had been canceled, the restriction requirement would still be withdrawn, and applicant would be notified that the subject matter of claim 3 could be reintroduced via amendment. May 2019 Restriction Practice 102

103

Summary Restriction is the requirement to elect one of two or more patentably distinct inventions for examination.
Restriction is only proper when there would be a serious search and examination burden on the examiner if not required, and the inventions are independent or distinct.
Restriction can prohibit a nonstatutory double patenting rejection when later divisional applications are filed, assuming the restriction requirement is maintained.
Examiners are required to provide a proper basis of restriction and a clear record of withdrawal when appropriate. May 2019 Restriction Practice 103

104

Restriction POCs May 2019 Restriction Practice 104

105

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