¶ 8.43 Allowable Product, Rejoinder of All Previously Withdrawn Process Claims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set forth in MPEP § 821.04(b), claim [2] , directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, [3] hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on [4] is hereby withdrawn.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.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable.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 If LESS THAN ALL previously withdrawn claims are being rejoined, then form paragraph 8.42 should be used instead of this form paragraph.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 In bracket 2, insert the claim number(s) of the process claim(s) previously withdrawn from consideration.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).