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¶ 8.01 Election of Species; Species Claim(s) Present

This application contains claims directed to the following patentably distinct species [1]. The species are independent or distinct because [2].

Applicant is required under 35 U.S.C. 121 to elect a single disclosed species for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, [3] generic.

There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: [4].

Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143 ) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.

The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.

Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.

Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.

Examiner Note:

1. In bracket 1, identify the species and/or grouping(s) of patentably indistinct species from which an election is to be made. The species may be identified as the species of figures 1, 2, and 3, for example, or the species of examples I, II, and III, respectively. Where the election requirement identifies a grouping of patentably indistinct species, applicant should not be required to elect a specific species within that grouping.

2. In bracket 2 insert the reason(s) why the species or grouping(s) of species are independent or distinct. See MPEP § 806.04(b), § 806.04(f) and § 806.04(h). For example, insert --the claims to the different species recite the mutually exclusive characteristics of such species--, and provide a description of the mutually exclusive characteristics of each species or grouping of species.

3. In bracket 3 insert the appropriate generic claim information.

4. In bracket 4 insert the applicable reason(s) why there is a search and/or examination burden:

--the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification

--the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter

--the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).

5. This form paragraph does not need to be followed by form paragraph 8.21.

¶ 8.02 Requiring an Election of Species; No Species Claim Present

Claim(s) [1] is/are generic to the following disclosed patentably distinct species: [2]. The species are independent or distinct because [3]. In addition, these species are not obvious variants of each other based on the current record.

Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.

There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: [4]

Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or a grouping of patentably indistinct species to be examined even though the requirement may be traversed (37 CFR 1.143 ) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.

Examiner Note:

1. This form paragraph should be used for the election of species requirement described in MPEP § 803.02 (Markush group) and MPEP § 808.01(a) where only generic claims are presented.

2. In bracket 1, insert the claim number(s).

3. In bracket 2, clearly identify the species and/or grouping(s) of patentably indistinct species from which an election is to be made. The species may be identified as the species of figures 1, 2, and 3, for example, or the species of examples I, II, and III, respectively. Where the election requirement identifies a grouping of patentably indistinct species, applicant should not be required to elect a specific species within that grouping.

4. In bracket 3 insert the reason(s) why the species or groupings of species as disclosed are independent or distinct. See MPEP § 806.04(b), § 806.04(f) and MPEP § 806.04(h). For example, insert --as disclosed the different species have mutually exclusive characteristics for each identified species--, and provide a description of the mutually exclusive characteristics of each species or grouping of species.

5. In bracket 4 insert the applicable reason(s) why there is a search and/or examination burden:

--the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification

--the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter

6. This form paragraph does not need to be followed by form paragraph 8.21.

¶ 8.03 In Condition for Allowance, Non-elected Claims Withdrawn with Traverse

This application is in condition for allowance except for the presence of claim [1] directed to an invention non-elected with traverse in the reply filed on [2]. Applicant is given TWO MONTHS from the date of this letter to cancel the noted claims or take other appropriate action (37 CFR 1.144 ). Failure to take action during this period will be treated as authorization to cancel the noted claims by Examiner’s Amendment and pass the case to issue. Extensions of time under 37 CFR 1.136(a) will not be permitted since this application will be passed to issue.

The prosecution of this case is closed except for consideration of the above matter.

¶ 8.04 Election by Original Presentation

Newly submitted claim [1] directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: [2]

Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim [3] withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.

¶ 8.05 Claims Stand Withdrawn With Traverse

Claim [1] withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected [2], there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on [3].

Examiner Note:

In bracket 2, insert --invention-- or --species--.

¶ 8.06 Claims Stand Withdrawn Without Traverse

Claim [1] withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected [2], there being no allowable generic or linking claim. Election was made without traverse in the reply filed on [3].

Examiner Note:

In bracket 2, insert --invention--, or --species--.

¶ 8.07 Ready for Allowance, Non-elected Claims Withdrawn Without Traverse

This application is in condition for allowance except for the presence of claim [1] directed to [2] nonelected without traverse. Accordingly, claim [3] been canceled.

Examiner Note:

In bracket 2, insert --an invention--, --inventions--, --a species--, or --species--.

¶ 8.08 Restriction, Two Groupings

Restriction to one of the following inventions is required under 35 U.S.C. 121:

I. Claim [1], drawn to [2], classified in [3].

II. Claim [4], drawn to [5], classified [6].

Examiner Note:

In brackets 3 and 6, insert USPC class and subclass if classified in the United States Patent Classification or CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification. For example, if examined in USPC, enter USPC Class xxx, subclass yyy.

¶ 8.09 Restriction, 3rd Grouping

III. Claim [1], drawn to [2], classified in [3].

Examiner Note:

In bracket 3, insert USPC class and subclass if classified in the United States Patent Classification or CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification. For example, if examined in USPC, enter USPC Class xxx, subclass yyy.

¶ 8.10 Restriction, 4th Grouping

IV. Claim [1], drawn to [2], classified in [3].

Examiner Note:

¶ 8.11 Restriction, Additional Groupings

[1]. Claim [2], drawn to [3], classified in [4].

Examiner Note:

1. In bracket 1, insert the appropriate roman numeral, e.g., --V--, --VI--, etc.

2. In bracket 4, insert USPC class and subclass if classified in the United States Patent Classification or CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification. For example, if examined in USPC, enter USPC Class xxx, subclass yyy.

¶ 8.12 Restriction, Linking Claims

Claim [1] link(s) inventions [2] and [3]. The restriction requirement [4] the linked inventions is subject to the nonallowance of the linking claim(s), claim [5]. Upon the indication of allowability of the linking claim(s), the restriction requirement as to the linked inventions shall be withdrawn and any claim(s) depending from or otherwise requiring all the limitations of the allowable linking claim(s) will be rejoined and fully examined for patentability in accordance with 37 CFR 1.104. Claims that require all the limitations of an allowable linking claim will be entered as a matter of right if the amendment is presented prior to final rejection or allowance, whichever is earlier. Amendments submitted after final rejection are governed by 37 CFR 1.116; amendments submitted after allowance are governed by 37 CFR 1.312.

Applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, the allowable linking claim, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Where a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.

Examiner Note:

1. This form paragraph must be included in any restriction requirement with at least one linking claim present.

2. In bracket 4, insert either --between-- or --among--.

3. In bracket 5, insert the claim number(s) of the linking claims.

4. See related form paragraphs 8.45, 8.46 and 8.47.

¶ 8.13 Distinctness (Heading)

The inventions are independent or distinct, each from the other because:

Examiner Note:

This form paragraph should be followed by one of form paragraphs 8.14-8.20.02 to show independence or distinctness.

¶ 8.14 Intermediate-Final Product

Inventions [1] and [2] are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as [3] and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.

Examiner Note:

1. This form paragraph is to be used when claims are presented to both an intermediate and final product (MPEP § 806.05(j)).

2. Conclude restriction requirement with form paragraph 8.21.

¶ 8.14.01 Distinct Products or Distinct Processes

Inventions [1] and [2] are directed to related [3]. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed [4]. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.

Examiner Note:

1. This form paragraph may be used when claims are presented to two or more related product inventions, or two or more related process inventions, wherein the inventions as claimed are mutually exclusive, i.e., there is no product (or process) that would infringe both of the identified inventions. Use form paragraph 8.15 to restrict between combination(s) and subcombination(s).

2. If a generic claim or claim linking multiple product inventions or multiple process inventions is present, see MPEP § 809 - § 809.03.

3. In bracket 3, insert --products -- or --processes--.

4. In bracket 4, explain why the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect.

5. Conclude restriction requirement with form paragraph 8.21.

¶ 8.15 Combination-Subcombination

Inventions [1] and [2] are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because [3]. The subcombination has separate utility such as [4].

The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Examiner Note:

1. This form paragraph is to be used when claims are presented to both combination(s) and subcombination(s) (MPEP § 806.05(c)).

2. In bracket 3, specify the limitations of the claimed subcombination that are not required by the claimed combination, or the evidence that supports the conclusion that the combination does not rely upon the specific details of the subcombination for patentability. See MPEP § 806.05(c), subsection II and § 806.05(d).

3. In bracket 4, suggest utility other than used in the combination.

4. Conclude restriction requirement with form paragraph 8.21.

¶ 8.16 Subcombinations, Usable Together

Inventions [1] and [2] are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case subcombination [3] has separate utility such as [4]. See MPEP § 806.05(d).

The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Examiner Note:

1. This form paragraph is to be used when claims are presented to subcombinations usable together (MPEP § 806.05(d)).

2. In bracket 3, insert the appropriate group number or identify the subcombination.

3. In bracket 4, suggest utility other than with the other subcombination.

4. Conclude restriction requirement with form paragraph 8.21.

¶ 8.17 Process and Apparatus

Inventions [1] and [2] are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another materially different process. (MPEP § 806.05(e)). In this case [3].

Examiner Note:

1. This form paragraph is to be used when claims are presented to both a process and apparatus for its practice (MPEP § 806.05(e)).

2. In bracket 3, use one or more of the following reasons:

(a) --the process as claimed can be practiced by another materially different apparatus such as......--,

(b) --the process as claimed can be practiced by hand--,

3. A process can be practiced by hand if it can be performed without using any apparatus.

4. Conclude restriction requirement with form paragraph 8.21.

5. All restriction requirements between a process and an apparatus (or product) for practicing the process should be followed by form paragraph 8.21.04 to notify the applicant that if an apparatus claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable apparatus may be rejoined.

¶ 8.18 Product and Process of Making

Inventions [1] and [2] are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another materially different product or (2) that the product as claimed can be made by another materially different process (MPEP § 806.05(f)). In the instant case [3].

Examiner Note:

1. This form paragraph is to be used when claims are presented to both a product and the process of making the product (MPEP § 806.05(f)).

2. In bracket 3, use one or more of the following reasons:

(a) --the process as claimed can be used to make a materially different product such as......--,

(b) --the product as claimed can be made by a materially different process such as......--.

3. Conclude the basis for the restriction requirement with form paragraph 8.21.

4. All restriction requirements between a product and a process of making the product should be followed by form paragraph 8.21.04 to notify the applicant that if a product claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable product may be rejoined.

¶ 8.19 Apparatus and Product Made

Inventions [1] and [2] are related as apparatus and product made. The inventions in this relationship are distinct if either or both of the following can be shown: (1) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus can be used for making a materially different product or (2) that the product as claimed can be made by another materially different apparatus (MPEP § 806.05(g)). In this case [3].

Examiner Note:

1. This form paragraph is to be used when claims are presented to both the apparatus and product made (MPEP § 806.05(g)).

2. In bracket 3, use one or more of the following reasons:

(a) --the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make a different product such as......--,

(b) --the product can be made by a materially different apparatus such as......--.

3. Conclude restriction requirement with form paragraph 8.21.

¶ 8.20 Product and Process of Using

Inventions [1] and [2] are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case [3].

Examiner Note:

1. This form paragraph is to be used when claims are presented to both the product and process of using the product (MPEP § 806.05(h). If claims to a process specially adapted for (i.e., not patentably distinct from) making the product are also presented such process of making claims should be grouped with the product invention. See MPEP § 806.05(i).

2. In bracket 3, use one or more of the following reasons:

(a) --the process as claimed can be practiced with another materially different product such as......--,

(b) --the product as claimed can be used in a materially different process such as......--.

3. Conclude the basis for the restriction requirement with form paragraph 8.21.

4. All restriction requirements between a product and a process of using the product should be followed by form paragraph 8.21.04 to notify the applicant that if a product claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable product may be rejoined.

¶ 8.20.02 Unrelated Inventions

Inventions [1] and [2] are unrelated. Inventions are unrelated if it can be shown that they are not disclosed as capable of use together, and they have different designs, modes of operation, and effects. (MPEP § 802.01 and MPEP § 806.06). In the instant case, the different inventions [3] .

Examiner Note:

1. This form paragraph is to be used only when claims are presented to unrelated inventions, e. g., a necktie and a locomotive bearing not disclosed as capable of use together.

2. In bracket 3, insert reasons for concluding that the inventions are unrelated.

3. This form paragraph must be followed by form paragraph 8.21.

¶ 8.20.03 Unrelated Product and Process Inventions

Inventions [1] and [2] are directed to an unrelated product and process. Product and process inventions are unrelated if it can be shown that the product cannot be used in, or made by, the process. See MPEP § 802.01 and § 806.06. In the instant case, [3] .

Examiner Note:

1. In bracket 3, insert reasons for concluding that the inventions are unrelated.

2. This form paragraph must be followed by form paragraph 8.21.

¶ 8.21 To Establish Burden AND Requirement for Election and Means for Traversal for all Restrictions, other than an Election of Species

Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:

[1].

Applicant is advised that the reply to this requirement to be complete must include (i) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143 ) and (ii) identification of the claims encompassing the elected invention.

The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.

Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.

Examiner Note:

1. THIS FORM PARAGRAPH MUST BE ADDED TO ALL RESTRICTION REQUIREMENTS other than those containing only election of species, with or without an action on the merits. This form paragraph only needs to be used once, after all restriction requirements are set out.

2. In bracket 1 insert the applicable reason(s) why there is a search and/or examination burden:

--the inventions have acquired a separate status in the art in view of their different classification

--the inventions have acquired a separate status in the art due to their recognized divergent subject matter

--the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).

¶ 8.21.04 Notice of Potential Rejoinder of Process Claims

The examiner has required restriction between product and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.

In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will 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. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.

Examiner Note:

This form paragraph should appear at the end of any requirement for restriction between a process and a product/apparatus for practicing the process (see form paragraph 8.17), a product/apparatus and a process of making the product/apparatus (see form paragraph 8.18) or between a product/apparatus and a process of using the product/apparatus (see form paragraph 8.20). See MPEP § 821.04 for rejoinder practice.

¶ 8.23 Requirement, When Elected by Telephone

During a telephone conversation with [1] on [2] a provisional election was made [3] traverse to prosecute the invention of [4], claim [5]. Affirmation of this election must be made by applicant in replying to this Office action. Claim [6] withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.

Examiner Note:

1. In bracket 3, insert --with-- or --without--, whichever is applicable.

2. In bracket 4, insert either the elected group or species.

3. An action on the merits of the claims to the elected invention should follow.

¶ 8.23.01 Requirement, No Election by Telephone

A telephone call was made to [1] on [2] to request an oral election to the above restriction requirement, but did not result in an election being made.

Examiner Note:

1. In bracket 1, insert the name of the applicant or attorney or agent contacted.

2. In bracket 2, insert the date(s) of the telephone contact(s).

3. This form paragraph should be used in all instances where a telephone election was attempted and the applicant’s representative did not or would not make an election.

4. This form paragraph should not be used if no contact was made with applicant or applicant’s representative.

¶ 8.23.02 Joint Inventors, Correction of Inventorship

Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).

Examiner Note:

This form paragraph must be included in all restriction requirements for applications having joint inventors.

¶ 8.25 Answer to Arguments With Traverse

Applicant’s election with traverse of [1] in the reply filed on [2] is acknowledged. The traversal is on the ground(s) that [3]. This is not found persuasive because [4].

The requirement is still deemed proper and is therefore made FINAL.

Examiner Note:

1. In bracket 1, insert the invention elected.

2. In bracket 3, insert in summary form, the ground(s) on which traversal is based.

3. In bracket 4, insert the reasons why the traversal was not found to be persuasive.

¶ 8.25.01 Election Without Traverse

Applicant’s election without traverse of [1] in the reply filed on [2] is acknowledged.

¶ 8.25.02 Election Without Traverse Based on Incomplete Reply

Applicant’s election of [1] in the reply filed on [2] is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).

¶ 8.26 Canceled Elected Claims, Non-Responsive

The amendment filed on [1] canceling all claims drawn to the elected invention and presenting only claims drawn to a non-elected invention is non-responsive (MPEP § 821.03) and has not been entered. The remaining claims are not readable on the elected invention because [2].

Since the above-mentioned amendment appears to be a bona fide attempt to reply, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD UNDER 37 CFR 1.136(a) ARE AVAILABLE but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).

Examiner Note:

This form paragraph should not be used for an application filed on or after August 25, 2006 that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102(c)(2) or (d). Form paragraph 8.26.AE should be used instead. See MPEP § 708.02, subsection IX.

¶ 8.26.AE Canceled Elected Claims, Non-Responsive – Application Under Accelerated Examination

Since the above-mentioned amendment appears to be a bona fide attempt to reply, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of time under 37 CFR 1.136(a) are available. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).

The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.

Examiner Note:

1. This form paragraph should only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).

2. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.

¶ 8.27.aia Different Inventors, Common Assignee, Same Invention, Examined under First Inventor To File (FITF) Provisions of the AIA

Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. Under 35 U.S.C. 101, more than one patent may not be issued on the same invention.

The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). The applicant should amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention.

Examiner Note:

1. Form paragraph 7.03.aia must be included in any Office action that contains this paragraph.

2. In bracket 3, insert the U.S. patent number or the copending application number.

3. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of the other, do not use this form paragraph; see form paragraph 8.28.aia.

4. A provisional or actual statutory double patenting rejection should also be made using form paragraph 8.31 or 8.32.

5. If the commonly assigned application or patent has an earlier effective filing date in accordance with 35 U.S.C. 100(i), a rejection under 35 U.S.C. 102(a)(2) may also be made using form paragraph 7.15.01.aia or 7.15.02.aia.

¶ 8.27.fti Different Inventors, Common Assignee, Same Invention, Examined Under Pre-AIA (First to Invent) Provisions

Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. The issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) of this single invention must be resolved.

The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application having common ownership (see MPEP Chapter 2300). Either the applicant must amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention, or the assignee must state which entity is the prior inventor of the commonly claimed subject matter. A terminal disclaimer has no effect in this situation since the basis for refusing more than one patent is priority of invention under pre-AIA 35 U.S.C. 102(f) or (g) and not an extension of monopoly.

Failure to comply with this requirement will result in a holding of abandonment of this application.

Examiner Note:

1. Form paragraph 7.03.fti must be included in any Office action that contains this paragraph.

2. In bracket 3, insert the U.S. patent number or the copending application number.

4. A provisional or actual statutory double patenting rejection should also be made using form paragraph 8.31 or 8.32.

5. If the commonly assigned application or patent has an earlier U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e) may also be made using form paragraph 7.15.01.fti or 7.15.02.fti.

¶ 8.28.aia Different Inventors, Common Assignee, Inventions Not Patentably Distinct, No Evidence of Common Ownership as of the Effective Filing Date of the Claimed Invention, Examined Under First Inventor to File (FITF) Provisions of the AIA

Claim [1] directed to an invention not patentably distinct from claim [2] of commonly assigned [3]. Specifically, [4].

Examiner Note:

1. This form paragraph should be used when the application being examined is commonly assigned with an application or patent that includes claims patentably indistinct from those in the present application, but it has not been established that they were commonly owned or deemed to have been commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention. See 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c).

2. A rejection under 35 U.S.C. 102(a)(2) /103 using form paragraph 7.21.aia, 7.21.01.aia or 7.21.02.aia also should be made, as appropriate.

3. In bracket 3, insert the number of the patent or application that includes claims patentably indistinct from those in the present application.

4. A nonstatutory double patenting rejection should also be included in the action using one of form paragraphs 8.34 to 8.37.

5. In bracket 4, explain why the claims in the present application and the reference patent or application are patentably indistinct.

6. Form paragraph 8.28.01.aia MUST follow this paragraph.

¶ 8.28.fti Different Inventors, Common Assignee, Inventions Not Patentably Distinct, No Evidence of Common Ownership at Time of Invention, Examined Under Pre-AIA (First To Invent) Provisions

Claim [1] directed to an invention not patentably distinct from claim [2] of commonly assigned [3]. Specifically, [4].

Examiner Note:

2. A rejection under pre-AIA 35 U.S.C. 102(e) /103(a) using form paragraph 7.21.fti, 7.21.01.fti or 7.21.02.fti also should be made, as appropriate. Rejections under pre-AIA 35 U.S.C. 102(e) /103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

3. In bracket 3, insert the number of the reference patent or application.

4. A nonstatutory double patenting rejection should also be included in the action using one of form paragraphs 8.34 to 8.37.

5. In bracket 4, explain why the claims in the present application and the reference patent or application are patentably indistinct.

6. Form paragraph 8.28.01.fti MUST follow this paragraph.

¶ 8.28.01.aia Advisory Information Relating to Form Paragraph 8.28.aia

The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). Commonly assigned [1], discussed above, would be prior art to the noted claims under 35 U.S.C. 102(a)(2) if the patentably indistinct inventions were not commonly owned or deemed to be commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention.

In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.

A showing that the inventions were commonly owned or deemed to be commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.

Examiner Note:

This form paragraph should follow form paragraph 8.28.aia and should only be used ONCE in an Office action.

¶ 8.28.01.fti Advisory Information Relating to Form Paragraph 8.28.fti

The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of common ownership (see MPEP Chapter 2300). Commonly assigned [1], discussed above, may form the basis for a rejection of the noted claims under pre-AIA 35 U.S.C. 102 or 103(a) if the commonly assigned case qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f) or (g) and the patentably indistinct inventions were not commonly owned at the time the claimed invention in this application was made. In order for the examiner to resolve this issue the assignee can, under pre-AIA 35 U.S.C. 103(c) and 37 CFR 1.78(g), either show that the patentably indistinct inventions were commonly owned at the time the claimed invention in this application was made, or name the prior inventor of the subject matter at issue.

A showing that the inventions were commonly owned at the time the claimed invention in this application was made will preclude a rejection under pre-AIA 35 U.S.C. 103(a) based upon the commonly assigned application that qualifies as a reference under pre-AIA 35 U.S.C. 102(e), (f) or (g). Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.

Examiner Note:

This form paragraph should follow form paragraph 8.28.fti and should only be used ONCE in an Office action.

¶ 8.29 Patentably Indistinct Claims, Copending Applications

Claim [1] of this application is patentably indistinct from claim [2] of Application No. [3]. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.

¶ 8.30 35 U.S.C. 101, Statutory Basis for Double Patenting "Heading" Only

A rejection based on double patenting of the "same invention" type finds its support in the language of 35 U.S.C. 101 which states that "whoever invents or discovers any new and useful process... may obtain a patent therefor..." (Emphasis added). Thus, the term "same invention," in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).

A statutory type (35 U.S.C. 101 ) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.

Examiner Note:

The above form paragraph must be used as a heading for all subsequent double patenting rejections of the statutory (same invention) type using either of form paragraphs 8.31 or 8.32.

¶ 8.31 Rejection, 35 U.S.C. 101, Double Patenting

Claim [1] is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim [2] of prior U.S. Patent No. [3]. This is a statutory double patenting rejection.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 8.30 and is used only for double patenting rejections of the same invention claimed in an earlier patent; that is, the "scope" of the inventions claimed is identical.

2. If the claims directed to the same invention are in another copending application, do not use this form paragraph. A provisional double patenting rejection should be made using form paragraph 8.32.

3. Do not use this form paragraph for nonstatutory-type double patenting rejections. If nonstatutory type, use appropriate form paragraphs 8.33 to 8.39.

4. This form paragraph may be used where the patent and the application under examination:

a. name the same inventive entity, or

b. name different inventive entities but are commonly assigned, or

c. are not commonly assigned but name at least one joint inventor in common, or

d. are filed by a common applicant (35 U.S.C. 118 ), or

e. claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c) for applications examined under pre-AIA (first to invent) law, or

f. claim patentably indistinct inventions and the claimed invention and the patent were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.

5. In bracket 3, insert the number of the patent.

6. For applications being examined under pre-AIA (first to invent) law: If the patent is to a different inventive entity and is commonly assigned with the application, form paragraph 8.27.fti should additionally be used to require the assignee to name the first inventor.

7. If evidence is of record to indicate that the patent is prior art under either pre-AIA 35 U.S.C. 102(f) or (g), a rejection should also be made using form paragraphs 7.15.fti and/or 7.19.fti, if applicable, in addition to this double patenting rejection.

8. For applications being examined under pre-AIA (first to invent) law: If the patent is to a different inventive entity from the application and the effective U.S. filing date of the patent antedates the effective filing date of the application, a rejection under pre-AIA 35 U.S.C. 102(e) should additionally be made using form paragraph 7.15.02.fti.

9. For applications being examined under the first inventor to file (FITF) provisions of the AIA: If the patent is to a different inventive entity and is commonly assigned with the application, form paragraph 8.27.aia should additionally be used to request that the applicant take action to amend or cancel claims such that the application no longer contains claims directed to the same invention. A rejection under 35 U.S.C. 102(a)(2) should also be made if appropriate.

¶ 8.32 Provisional Rejection, 35 U.S.C. 101, Double Patenting

Claim [1] provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim [2] of copending Application No. [3] (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 8.30 and is used only for double patenting rejections of the same invention claimed in another copending application; that is, the scope of the claimed inventions is identical.

2. If the claims directed to the same invention are in an issued patent, do not use this paragraph. See form paragraph 8.31.

3. Do not use this paragraph for nonstatutory-type double patenting rejections. See form paragraphs 8.33 to 8.39.

4. This form paragraph may be used where the reference application and the application under examination:

a. name the same inventive entity, or

b. name different inventive entities but are commonly assigned, or

c. are not commonly assigned but name at least one joint inventor in common, or

d. are filed by a common applicant (35 U.S.C. 118 ), or

e. claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c), for applications examined under pre-AIA (first to invent) law, or

f. claim patentably indistinct inventions and the claimed invention and the reference application were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.

5. Form paragraph 8.28.fti or 8.28.aia, as appropriate, should also be used.

6. In bracket 3, insert the number of the reference application.

7. A provisional double patenting rejection should also be made in the reference application.

8. For applications being examined under pre-AIA (first to invent) law: If the reference application is by a different inventive entity and is commonly assigned, form paragraph 8.27.fti should additionally be used to require the assignee to name the first inventor.

9. If evidence is also of record to show that either application is prior art unto the other under pre-AIA 35 U.S.C. 102(f) or (g), a rejection should also be made in the reference application using form paragraphs 7.15.fti and/or 7.19.fti, if applicable, in addition to this provisional double patenting rejection.

10. For applications being examined under pre-AIA (first to invent) law: If the applications do not have the same inventive entity and effective U.S. filing date, a provisional pre-AIA 35 U.S.C. 102(e) rejection should additionally be made in the later-filed application using form paragraph 7.15.01.fti. If the earlier-filed application has been published, use form paragraph 7.15.02.fti instead.

11. For applications being examined under first inventor to file (FITF) provisions of the AIA: If the reference application is to a different inventive entity and is commonly assigned with the instant application, form paragraph 8.27.aia should additionally be used to request that the applicant take action to amend or cancel claims such that the applications no longer contain claims directed to the same invention. A rejection under 35 U.S.C. 102(a)(2) should also be made if appropriate.

¶ 8.33 Basis for Nonstatutory Double Patenting, "Heading" Only

The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).

A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).

The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/ patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/ patents/process/file/efs/guidance/ eTD-info-I.jsp.

Examiner Note:

This form paragraph is to be used as a heading before a nonstatutory double patenting rejection using any of form paragraphs 8.34 - 8.39. Although nonstatutory double patenting is sometimes called obviousness-type double patenting ("ODP"), an obviousness analysis is required only if the examined application claim(s) is not anticipated by the reference claim(s).

¶ 8.34 Rejection, Nonstatutory Double Patenting - No Secondary Reference(s)

Claim [1] rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of U.S. Patent No. [3]. Although the claims at issue are not identical, they are not patentably distinct from each other because [4].

Examiner Note:

1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.

2. This form paragraph is used for nonstatutory double patenting rejections based upon a patent.

3. If the nonstatutory double patenting rejection is based upon another application, do not use this form paragraph. A provisional double patenting rejection should be made using form paragraph 8.33 and either form paragraph 8.35 or 8.37.

4. This form paragraph may be used where the patent and the application under examination:

a. name the same inventive entity, or

b. name different inventive entities but are commonly assigned, or

c. are not commonly assigned but name at least one joint inventor in common, or

d. are filed by a common applicant (35 U.S.C. 118 ), or

e. claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103, for applications examined under pre-AIA (first to invent) law, or

5. In bracket 3, insert the number of the patent.

6. In bracket 4, provide appropriate explanation for anticipation or rationale for obviousness of the claims being rejected over the claims of the cited patent.

7. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:

a. evidence indicates that the patent is prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and

b. the patent has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).

8. For applications being examined under pre-AIA (first to invent) law: If the patent is to a different inventive entity and has an earlier effective U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e) /103(a) may be made using form paragraph 7.21.02.fti. Rejections under pre-AIA 35 U.S.C. 102(e) /103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

9. For applications being examined under the first inventor to file (FITF) provisions of the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

¶ 8.35 Provisional Rejection, Nonstatutory Double Patenting - No Secondary Reference(s)

Claim [1] provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of copending Application No. [3] (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because [4].

This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.

Examiner Note:

1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.

2. This form paragraph should be used when the patentably indistinct claims are in another copending application.

3. If the patentably indistinct claims are in a patent, do not use this form paragraph. Use form paragraphs 8.33 and 8.34.

4. This form paragraph may be used where the reference application and the application under examination:

a. name the same inventive entity, or

b. name different inventive entities but are commonly assigned, or

c. are not commonly assigned but name at least one joint inventor in common, or

d. are filed by a common applicant (35 U.S.C. 118 ), or

5. If the reference application is currently commonly assigned but the file does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph to resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g).

6. In bracket 3, insert the number of the reference application.

7. A provisional nonstatutory double patenting rejection should also be made in the reference application.

8. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:

a. evidence indicates that the reference application is prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and

b. the reference application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).

9. For applications being examined under pre-AIA (first to invent) law: If the applications have different inventive entities and different U.S. filing dates, and the disclosure of the earlier-filed application may be used to support a rejection of the later-filed application, use form paragraph 7.21.01.fti to additionally make a rejection under pre-AIA 35 U.S.C. 102(e) /103(a) in the later-filed application. Rejections under pre-AIA 35 U.S.C. 102(e) /103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

10. See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.

11. For applications being examined under the first inventor to file (FITF) provisions of the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

12. In bracket 4, provide appropriate explanation for anticipation or rationale for obviousness of the claims being rejected over the claims of the cited application.

¶ 8.36 Rejection, Nonstatutory Double Patenting - With Secondary Reference(s)

Claim [1] rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim [2] of U.S. Patent No. [3] in view of [4]. [5]

Examiner Note:

1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.

2. This form paragraph is used for nonstatutory double patenting rejections where the primary reference is a patent that includes claims patentably indistinct from those in the application under examination.

3. If the nonstatutory double patenting rejection is based on another application, do not use this form paragraph. A provisional nonstatutory double patenting rejection should be made using form paragraphs 8.33 and either 8.35 or 8.37.

4. This form paragraph may be used where the patentably indistinct invention is claimed in a patent where the patent and the application under examination:

a. name the same inventive entity, or

b. name different inventive entities but are commonly assigned, or

c. are not commonly assigned but have at least one joint inventor in common, or

d. are filed by a common applicant (35 U.S.C. 118 ), or

5. In bracket 3, insert the number of the primary reference patent.

6. In bracket 4, insert the secondary reference.

7. In bracket 5, insert an explanation of the obviousness analysis.

8. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:

a. evidence indicates that the primary reference patent is prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and

b. the primary reference patent has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).

9. For applications being examined under pre-AIA (first to invent) law: If the primary reference patent issued to a different inventive entity and has an earlier effective U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e) /103(a) may be made using form paragraph 7.21.02.fti. Rejections under pre-AIA 35 U.S.C. 102(e) /103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

10. For applications being examined under first inventor to file (FITF) provisions of the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

¶ 8.37 Provisional Rejection, Nonstatutory Double Patenting - With Secondary Reference(s)

Claim [1] provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of copending Application No. [3] in view of [4]. [5]

This is a provisional nonstatutory double patenting rejection.

Examiner Note:

1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.

2. This form paragraph is used for nonstatutory double patenting rejections requiring an obviousness analysis where the primary reference is a copending application.

3. If the patentably indistinct claims are in a patent, do not use this form paragraph, use form paragraph 8.36.

4. This form paragraph may be used where the patentably indistinct claims are in a copending application where the copending application and the application under examination:

a. name the same inventive entity, or

b. name different inventive entities but are commonly assigned, or

c. are not commonly assigned but name at least one joint inventor in common, or

d. are filed by a common applicant (35 U.S.C. 118 ), or

f. claim patentably indistinct inventions and the claimed invention and the primary reference application were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.

5. If the application under examination and primary reference application are currently commonly assigned but the application under examination does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph to also resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g).

6. For applications being examined under first inventor to file (FITF) provisions of the AIA: If the primary reference application is to a different inventive entity and is commonly assigned with the application under examination, form paragraph 8.28.aia should additionally be used if there is no evidence of common ownership as of the effective filing date of the invention claimed in the examined application. A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

7. In bracket 3, insert the number of the primary reference application.

8. In bracket 4, insert the secondary reference.

9. In bracket 5, insert an explanation of the obviousness analysis.

10. A provisional nonstatutory double patenting rejection should also be made in the primary reference application.

11. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:

a. evidence indicates that the primary reference application is prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and

b. the primary reference application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).

12. For applications being examined under pre-AIA (first to invent) law: If the disclosure of one application may be used to support a rejection of the other and the applications have different inventive entities and different U.S. filing dates, use form paragraph 7.21.01.fti to additionally make a rejection under pre-AIA 35 U.S.C. 102(e) /103(a) in the application with the later effective U.S. filing date. Rejections under pre-AIA 35 U.S.C. 102(e) /103(a) should not be made or maintained if the primary reference application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

13. See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.

¶ 8.38 Double Patenting - Nonstatutory (Based Solely on Improper Timewise Extension of Patent Rights) With a Patent

Claim [1] rejected on the ground of nonstatutory double patenting over claim [2] of U.S. Patent No. [3] since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.

The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: [4]

Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.

Examiner Note:

1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.

2. This form paragraph should only be used where approval from the TC Director to make a nonstatutory double patenting rejection based on In re Schneller has been obtained.

3. Use this form paragraph only when the subject matter of the claim(s) is fully disclosed in, and covered by at least one claim of, an issued U.S. Patent which is commonly owned or where there is at least one joint inventor in common or a common applicant (35 U.S.C. 118 ).

4. In bracket 3, insert the number of the patent.

5. In bracket 4, insert a description of the subject matter being claimed which is covered in the patent.

6. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:

a. evidence indicates that the patent is also prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and

b. the patent has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).

7. For applications being examined under pre-AIA (first to invent) law: If the patent is to another inventive entity and has an earlier U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e) /103(a) may be made using form paragraph 7.21.02.fti. Rejections under pre-AIA 35 U.S.C. 102(e) /103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

8. For applications being examined under first inventor to file (FITF) provisions of the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

¶ 8.39 Double Patenting - Nonstatutory (Based Solely on Improper Timewise Extension of Patent Rights) With Another Application

Claim [1] provisionally rejected on the ground of nonstatutory double patenting over claim [2] of copending Application No. [3]. This is a provisional double patenting rejection because the patentably indistinct claims have not in fact been patented.

The subject matter claimed in the instant application is fully disclosed in the referenced copending application and would be covered by any patent granted on that copending application since the referenced copending application and the instant application are claiming common subject matter, as follows: [4]

Furthermore, there is no apparent reason why applicant would be prevented from presenting claims corresponding to those of the instant application in the other copending application. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.

Examiner Note:

1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.

2. This form paragraph should only be used where approval from the TC Director to make a nonstatutory double patenting rejection based on In re Schneller has been obtained.

3. Use this form paragraph only when the subject matter of the claim(s) is fully disclosed in, and covered by at least one claim of, another copending application (reference application) which is commonly owned, or where there is at least one joint inventor in common or a common applicant (35 U.S.C. 118 ).

4. In bracket 3, insert the number of the reference application.

5. In bracket 4, insert a description of the subject matter being claimed which is covered in the reference application.

6. If the reference application is currently commonly assigned but the prosecution file of the application under examination does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph to resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g).

7. For applications being examined under first inventor to file (FITF) provisions of the AIA: If the reference application is to a different inventive entity and is commonly assigned with the application under examination, form paragraph 8.28.aia should additionally be used if there is no evidence of common ownership as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention. A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

8. A provisional double patenting rejection should also be made in the reference application.

9. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:

b. the reference application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).

10. For applications being examined under pre-AIA (first to invent) law: If the disclosure of one application may be used to support a rejection of the other and the applications have different inventive entities and different U.S. filing dates, use form paragraph 7.21.01.fti to additionally make a rejection under pre-AIA 35 U.S.C. 102(e) /103(a) in the application with the later effective U.S. filing date. Rejections under pre-AIA 35 U.S.C. 102(e) /103(a) should not be made or maintained if the reference application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

11. See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.

¶ 8.40 Improper Markush Grouping Rejection

Claim [1] rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a "single structural similarity" and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a "single structural similarity" and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.

The Markush grouping of [2] is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: [3].

To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.

Examiner Note:

1. In bracket 1, insert claim number(s) and "is" or "are" as appropriate.

2. In bracket 2, insert a description of the Markush group(s) that are improper.

3. In bracket 3, explain why these alternatives do not meet the requirements for a proper Markush grouping, i.e., why the alternatives are not all members of the same recognized physical or chemical class or the same art-recognized class; and/or why the members are not considered to be functionally equivalent and have a common use; and/or why (if the Markush grouping describes alternative chemical compounds), the alternatives do not share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.

4. If an election of species requirement is appropriate, this form paragraph should only be used after applicant has made an election.

¶ 8.41 Transitional Restriction or Election of Species Requirement – pre-GATT Filing

This application is subject to the transitional restriction provisions of Public Law 103-465, which became effective on June 8, 1995, because:

1. the application was filed on or before June 8, 1995, and has an effective U.S. filing date of June 8, 1992, or earlier;
2. a requirement for restriction was not made in the present or a parent application prior to April 8, 1995; and
3. the examiner was not prevented from making a requirement for restriction in the present or a parent application prior to April 8, 1995, due to actions by the applicant.

The transitional restriction provisions permit applicant to have more than one independent and distinct invention examined in the same application by paying a fee for each invention in excess of one.

Final rules concerning the transition restriction provisions were published in the Federal Register at 60 FR 20195 (April 25, 1995) and in the Official Gazette at 1174 OG 15 (May 2, 1995). The final rules at 37 CFR 1.17(s) include the fee amount required to be paid for each additional invention as set forth in the following requirement for restriction. See the current fee schedule for the proper amount of the fee.

Applicant must either: (1) elect the invention or inventions to be searched and examined and pay the fee set forth in 37 CFR 1.17(s) for each independent and distinct invention in excess of one which applicant elects; or (2) file a petition under 37 CFR 1.129(b) traversing the requirement.

Examiner Note:

1. This form paragraph should be used in all restriction or election of species requirements made in applications subject to the transition restriction provisions set forth in 37 CFR 1.129(b). The procedure is NOT applicable to any design or reissue application.

¶ 8.42 Allowable Product, Rejoinder of at Least One Process Claim, Less Than All Claims

Claim [1] directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(b), claim [2], directed to the process of making or using the allowable product, previously withdrawn from consideration as a result of a restriction requirement, [3] hereby rejoined and fully examined for patentability under 37 CFR 1.104. Claim [4], directed to the invention(s) of [5] require all the limitations of an allowable product claim, and [6] NOT been rejoined.

Because a claimed invention previously withdrawn from consideration under 37 CFR 1.142 has been rejoined, the restriction requirement [7] groups [8] as set forth in the Office action mailed on [9] is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.

Examiner Note:

1. If ALL previously withdrawn process claims are being rejoined, then form paragraph 8.43 should be used instead of this form paragraph. All claims directed to a nonelected process invention must require all the limitations of an allowable product claim for that process invention to be rejoined. See MPEP § 821.04(b).

2. In bracket 1, insert the claim number(s) of the allowable product claims followed by either -- is-- or -- are--.

3. In bracket 2, insert the claim number(s) of ALL the rejoined process claims.

4. In bracket 3, insert either --is-- or --are--.

5. In bracket 4, insert the number(s) of the claims NOT being rejoined followed by either -- is-- or -- are--.

6. In bracket 5, insert the group(s) or subject matter of the invention(s) to which the claims NOT being rejoined are directed, followed by either --, do not all-- or --, does not--.

7. In bracket 6, insert --has-- or --have--.

8. In bracket 7, insert either -- among -- or -- between--.

9. In bracket 8, insert group numbers of the elected product and rejoined process.

¶ 8.43 Allowable Product, Rejoinder of All Previously Withdrawn Process Claims

Claim [1] directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(b), claim [2] , directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, [3] hereby rejoined and fully examined for patentability under 37 CFR 1.104.

Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on [4] is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Examiner Note:

1. If LESS THAN ALL previously withdrawn claims are being rejoined, then form paragraph 8.42 should be used instead of this form paragraph. All claims directed to a nonelected process invention must require all the limitations of an allowable product claim for that process invention to be rejoined. See MPEP § 821.04(b).

2. In bracket 1, insert the claim number(s) of the allowable product claim(s) followed by either -- is-- or -- are--.

3. In bracket 2, insert the claim number(s) of the process claim(s) previously withdrawn from consideration.

4. In bracket 3, insert either --is-- or --are--.

5. If rejoinder occurs after the first Office action on the merits and if any of the rejoined claims are unpatentable, e.g., if a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph is made, then the next Office action may be made final if proper under MPEP § 706.07(a).

¶ 8.45 Elected Invention Allowable, Rejoinder of All Previously Withdrawn Claims

Claim [1] allowable. Claim [2 ], previously withdrawn from consideration as a result of a restriction requirement, [3] all the limitations of an allowable claim. Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement [4] inventions [5], as set forth in the Office action mailed on [6], is hereby withdrawn and claim [7] hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.

Examiner Note:

1. Where the elected invention is directed to a product and previously nonelected process claims are rejoined, form paragraph 8.43 should be used instead of this paragraph.

2. This form paragraph should be used whenever ALL previously withdrawn claims depend from or otherwise require all the limitations of an allowable claim (e.g., a generic claim, linking claim, or subcombination claim) and wherein the non-elected claims have NOT been canceled. Use form paragraph 8.46, 8.47, or 8.47.01 as appropriate where the nonelected claims HAVE BEEN canceled. Use form paragraph 8.49 or 8.50 as appropriate when the elected invention is allowable and the restriction requirement is withdrawn at least in part.

3. In bracket 2, insert the number(s) of the rejoined claim(s) followed by either -- is-- or -- are--.

4. In bracket 3 insert-- requires-- or -- require--.

5. In bracket 4, insert either --between-- or --among--.

6. In bracket 5, insert the group(s), species, or subject matter of the invention(s) being rejoined.

7. In bracket 7, insert the number(s) of the rejoined claim(s) followed by either --is-- or --are--.

¶ 8.46 Elected Invention Allowable, Non-elected Claims Canceled, Other Issues Remain Outstanding

Claim [1] allowable. The restriction requirement [2] inventions [3], as set forth in the Office action mailed on [4], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [5] is [6]. Claim [7], which required all the limitations of an allowable claim, previously withdrawn from consideration as a result of the restriction requirement, [8] canceled by applicant in the reply filed on [9]. The canceled, nonelected claim(s) may be reinstated by applicant if submitted in a timely filed amendment in reply to this action. Upon entry of the amendment, such amended claim(s) will be examined for patentability under 37 CFR 1.104.

In view of the withdrawal of the restriction requirement as set forth above, applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Examiner Note:

1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions. See MPEP §§ 806.05(j) and 821.04(a).

2. This form paragraph (or form paragraph 8.47 or 8.47.01) must be used upon the allowance of a linking claim, generic claim, or subcombination claim following a restriction requirement with at least one of these claim types present and wherein the non-elected claims requiring all the limitations of an allowable claim HAVE BEEN canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled and all previously withdrawn claims are rejoined. Use form paragraph 8.49 or 8.50 as appropriate when the elected invention is allowable and the restriction requirement is withdrawn at least in part.

3. If no issues remain outstanding and application is otherwise ready for allowance, use form paragraph 8.47 or 8.47.01 instead of this form paragraph.

4. In bracket 2, insert either --between-- or --among--.

5. In bracket 3, insert the group(s), species, or subject matter of the invention(s) that were restricted.

6. In bracket 5, insert the date of the restriction requirement being fully or partially withdrawn.

7. In bracket 6, insert "withdrawn" if the restriction requirement is no longer in effect at all or "partially withdrawn" if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.

8. In bracket 7, insert the number of each claim that required all the limitations of an allowable claim but was canceled as a result of the restriction requirement.

9. In bracket 8, insert either --was-- or --were--.

¶ 8.47 Elected Invention Allowable, Non-elected Claims Canceled, Before Final Rejection, No Outstanding Issues Remaining

Claim [1] allowable. The restriction requirement [2] inventions [3], as set forth in the Office action mailed on [4], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [5] is [6]. Claim [7], which required all the limitations of an allowable claim, previously withdrawn from consideration as a result of the restriction requirement, [8] canceled by applicant in the reply filed on [9]. The canceled, nonelected claim(s) may be reinstated by applicant if submitted in an amendment, limited to the addition of such claim(s), filed within a time period of TWO MONTHS from the mailing date of this letter. Upon entry of the amendment, such amended claim(s) will be examined for patentability under 37 CFR 1.104. If NO such amendment is submitted within the set time period, the application will be passed to issue. PROSECUTION ON THE MERITS IS OTHERWISE CLOSED.

In view of the withdrawal of the restriction requirement as to the linked inventions, applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Examiner Note:

1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions and the application has not been finally rejected. See MPEP §§ 806.05(j) and 821.04(a). After final rejection, use form paragraph 8.47.01 instead of this form paragraph.

2. This form paragraph (or form paragraph 8.46 or 8.47.01) must be used upon the allowance of a linking claim, generic claim, or subcombination claim following a restriction requirement with at least one of these claim types present and wherein the non-elected claims requiring all the limitations of an allowable claim HAVE BEEN canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled and all previously withdrawn claims are rejoined. Use form paragraph 8.49 or 8.50 as appropriate when the elected invention is allowable and the restriction requirement is withdrawn at least in part.

3. This form paragraph should be used only when there are no outstanding issues remaining and is to be used with only a PTO-90C cover sheet.

4. In bracket 2, insert either --between-- or --among--.

5. In bracket 3, insert the group(s), species, or subject matter of the invention(s) that were restricted.

6. In bracket 5, insert the date of the restriction requirement being fully or partially withdrawn.

8. In bracket 7, insert the number of each claim that required all the limitations of an allowable claim but was canceled as a result of the restriction requirement.

9. In bracket 8, insert either --was-- or --were--.

¶ 8.47.01 Elected Invention Allowable, Non-elected Claims Canceled, After Final Rejection, No Outstanding Issues Remaining

Claim [1] allowable. The restriction requirement [2] inventions [3], as set forth in the Office action mailed on [4], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [5] is [6]. In view of the withdrawal of the restriction requirement as set forth above, applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Examiner Note:

1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions and the application has been finally rejected. See MPEP §§ 806.05(j) and 821.04(a). Before final rejection, use form paragraph 8.47 instead of this form paragraph.

2. This form paragraph (or form paragraph 8.46) must be used upon the allowance of a linking claim, generic claim, or subcombination claim following a restriction requirement with at least one of these claim types present and wherein the non-elected claims requiring all the limitations of an allowable claim HAVE BEEN canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled and all previously withdrawn claims are rejoined. Use form paragraph 8.49 or 8.50 as appropriate when the elected invention is allowable and the restriction requirement is withdrawn at least in part.

3. This form paragraph should be used only when there are no outstanding issues remaining and is to be used with only a PTO-90C cover sheet.

4. In bracket 2, insert either --between-- or --among--.

5. In bracket 3, insert the group(s), species, or subject matter of the invention(s) that were restricted.

6. In bracket 5, insert the date of the restriction requirement being fully or partially withdrawn.

¶ 8.49 Elected Invention Allowable, Claims Stand Withdrawn as Not In Required Form

Claim [1] allowable. The restriction requirement [2], as set forth in the Office action mailed on [3], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [4] is [5]. Claim [6], directed to [7] withdrawn from further consideration because [8] require all the limitations of an allowable generic linking claim as required by 37 CFR 1.141.

In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.

Examiner Note:

1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions. See MPEP §§ 806.05(j) and 821.04(a).

2. This form paragraph (or form paragraph 8.50) should be used upon the allowance of a linking claim, generic claim, or subcombination claim when none of the nonelected claims require all the limitations of an allowable claim.

3. In bracket 2, insert -- between-- or --among-- followed by identification of the inventions (i.e., groups or species) restricted.

4. In bracket 4, insert the date of the restriction requirement being fully or partially withdrawn.

5. In bracket 5, insert "withdrawn" if the restriction requirement is no longer in effect at all or "partially withdrawn" if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.

6. In bracket 7, insert the subject matter of the claimed invention or species not being rejoined followed by -- remains-- or --remain--.

7. In bracket 8, insert --it does not-- or --they do not all--.

¶ 8.50 Elected Invention Allowable, Some Claims No Longer Considered Withdrawn

Claim [1] allowable. The restriction requirement [2], as set forth in the Office action mailed on [3], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [4] is [5]. Claim [6], directed to [7] no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim. However, claim [8], directed to [9] withdrawn from consideration because [10] require all the limitations of an allowable claim.

Examiner Note:

1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions. See MPEP §§ 806.05(j) and 821.04(a).

2. This form paragraph should be used upon the allowance of a linking claim, generic claim, or subcombination claim when, some, but not all, of the nonelected claims require all the limitations of an allowable claim.

3. In bracket 2, insert -- between-- or --among-- followed by identification of the inventions (i.e., groups or species) restricted.

4. In bracket 4, insert the date of the restriction requirement being fully or partially withdrawn.

6. In bracket 7, insert the subject matter of the claimed invention or species being rejoined followed by either -- is-- or -- are--.

7. In bracket 9, insert the subject matter of the claimed invention or species not being rejoined followed by -- remains-- or --remain--.

8. In bracket 10, insert --it does not-- or --they do not all--.

9. If all of the claims are in proper form, i.e., they include all the limitations of an allowable claim, one of form paragraphs 8.45, 8.46 or 8.47 must be used.