¶ 15.30 Telephone Restriction Under 35 U.S.C. 121 (Segregable Parts or Combination/Subcombination)
This application discloses the following embodiments:
Embodiment 1 – Figs. [1] drawn to a [2].
Embodiment 2 – Figs. [3] drawn to a [4].
[5]
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Group I – Embodiment [6]
Group II – Embodiment [7]
[8]
The designs as grouped are distinct from each other since under the law a design patent covers only the invention disclosed as an entirety, and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts is to apply for separate patents. See Ex parte Sanford, 1914 CD 69, 204 OG 1346 (Comm’r Pat. 1914); and Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965). It is further noted that patentably distinct combination/subcombination subject matter must be supported by separate claims, whereas only a single claim is permissible in a design patent application. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
[9]
During a telephone discussion with [10] on [11], a provisional election was made [12] traverse to prosecute the invention of Group [13]. Affirmation of this election should be made by applicant in replying to this Office action.
Group [14] withdrawn from further consideration by the examiner, 37 CFR 1.142(b) as being for a nonelected invention.
Examiner Note:
1. In bracket 5, add embodiments as necessary.
2. In bracket 8, add groups as necessary.
3. In bracket 9, insert additional comments, if necessary.