¶ 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 The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Claim [5] , which required all the limitations of an allowable claim, previously withdrawn from consideration as a result of the restriction requirement, [6] canceled by applicant in the reply filed on [7] . 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.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable.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. 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 Use form paragraph 8.45 where the nonelected claims have NOT been canceled and all previously withdrawn claims are rejoined.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form paragraph 8.49 or 8.50 as appropriate when the elected invention is allowable and the restriction requirement is withdrawn at least in part.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 number of each claim that required all the limitations of an allowable claim but was canceled as a result of the restriction requirement.
7. In bracket 6, insert either --was-- or --were--.