¶ 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set forth in MPEP § 821.04(b), claim [2], directed to the process of making or using the allowable product, previously withdrawn from consideration as a result of a restriction requirement, [3] hereby rejoined and fully examined for patentability under 37 CFR 1.104.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Because a claimed invention previously withdrawn from consideration under 37 CFR 1.142 has been rejoined, the restriction requirement [7] groups [8] as set forth in the Office action mailed on [9] is hereby withdrawn.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Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable.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 If ALL previously withdrawn process claims are being rejoined, then form paragraph 8.43 should be used instead of this form paragraph.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.