Transcript Two or More 'Distinct' Inventions in a Application

USPTO Restriction Training Materials
and Chapter 800 Revisions
USPTO Restriction Training Materials and
Chapter 800 Revisions
Part I - What is this thing we call
restriction?
Kathleen Kerr
SPE Art Unit 1656
35 U.S.C. 101:
WHOEVER INVENTS
…MAY RECEIVE
A PATENT
PATENT
FOR
INVENTION
A
DOUBLE PATENTING:
 STATUTORY TYPE
 35 USC 101
 NON-STATUTORY
 Obviousness-type
Double Patenting
ONE
PATENT
FOR
ONE
INVENTION
RESTRICTION
35 U.S.C. 121
What is RESTRICTION ?
Restriction is the practice of requiring an
applicant to elect a single invention for
examination when an application
discloses and claims plural inventions.
MPEP 802.02
35 U.S.C. 101
“Whoever invents or discovers any new
and useful process, machine,
manufacture, composition of matter,
or any new and useful improvement
thereof, may obtain a patent
therefor,…”
35 U.S.C. 121
“If two or more independent and distinct
inventions are claimed in one application,
the Director may require the application to
be restricted to one of the inventions….”
Interpretation of 35 U.S.C. 121
Restriction is discretionary, not mandatory.
Historically the phrase “two or more
independent and distinct inventions” has
been interpreted to mean two or more
independent or distinct inventions.
MPEP 802.01
Correlation Between Independent
Inventions and Distinct Inventions
Independent Inventions
Unrelated in design, operation, and effect
The natural consequence of the lack of any relationship is that
each invention is patentable over the other.
Distinct Inventions
Related in at least one of design, operation, or effect,
and
Not connected in at least one of design, operation, or
effect, and
At least one invention is patentable over the other
Is Restriction Appropriate?
Is the application filed under 35 U.S.C. 111(a)?
Restriction practice may be used when plural
independent or distinct inventions are claimed in an
application filed under 35 U.S.C. 111(a). MPEP 801
The claims of an application must be compared to
determine if they describe plural independent or
distinct inventions. MPEP 806.01
Plural inventions in an application filed under 35 U.S.C.
371 are considered under PCT unity of invention
standards. See MPEP Chapter 1800 for details.
When is Restriction Not an Option?
If the search and examination of all the claims in
an application can be made without serious
burden, the examiner must examine all of the
claims on the merits, even if the claims are
drawn to independent or distinct inventions.
If there is an express admission that the claimed
inventions would have been obvious over each
other within the meaning of 35 U.S.C. 103,
restriction should not be required.
MPEP 803
When is Restriction Not
Appropriate?
If an application does not specifically claim, or
encompass within a generic claim, two or more
independent or distinct inventions, restriction cannot
be required.
If the inventions are related as disclosed but are not
distinct as claimed, restriction is never proper. MPEP
806
Do not restrict if the claims define the same essential
characteristics of a single disclosed embodiment of
an invention. MPEP 806.03
Single Disclosed Embodiment
Claims define the same essential characteristics of
a single disclosed embodiment when
the claims provide different definitions of the same
disclosed invention and/or
the claims vary only in breadth or scope of the invention.
See MPEP 806.03.
Claims that merely further define elements of a
single disclosed embodiment should not be
restricted from each other because
the claims would overlap in scope and be infringed upon
by the single disclosed embodiment and/or
the claims define products (or processes) that are related
in design, operation, and effect.
Example of Claims Defining a Single
Disclosed Embodiment of an Invention
Specification discloses a pair of chopsticks wherein
the preferred embodiment is a pair of 8 inch long
bamboo chopsticks, with wider square handles
tapering down to narrow tips.
Claim 1. A pair of bamboo chopsticks with square
handles.
Claim 2. A pair of chopsticks which are tapered from
one end to the other.
Claim 3. A pair of 8 inch long bamboo chopsticks.
Basic Restriction Guidelines
Every restriction requirement has two criteria:
The inventions, as claimed, must be independent or
distinct and
There would be serious burden on the examiner if
restriction were not required.
MPEP 803.02
Showing Serious Burden
The examiner must provide reasons to support the
conclusion that a serious burden would exist if
restriction were not required.
A serious burden may be prima facie shown if the
examiner explains why the inventions have
separate classification or separate status in the
art or a different field of search as defined in
MPEP 808.02.
The prima facie showing may be rebutted by the
applicant.
MPEP 803
Showing Serious Burden (cont.)
Serious burden may be established based on a
different field of search if it is necessary to
search for one of the inventions in a manner
not likely to result in finding art pertinent to the
other invention(s), e.g.,
- searching different classes/subclasses
- searching different electronic resources
- employing different search queries
A serious burden may be shown when the inventions are
classified together if the examiner can explain how the
searches differ.
USPTO Restriction Training Materials and
Chapter 800 Revisions
Part II - Defining an Invention
Michael Hartley
SPE Art Unit 1618
Independent Inventions
Independent inventions have no disclosed
relationship, i.e., they are unrelated.
In other words, the inventions as disclosed are not
connected in any of:
a. DESIGN
b. OPERATION and
c. EFFECT
MPEP 802.01(subsection I), 806.06, FP 8.20.02
Independent
Related Inventions
Related inventions have a disclosed relationship, i.e.,
are connected in at least one of:
a. DESIGN (structure or method of manufacturing)
b. OPERATION (function or method of use) or
c. EFFECT
MPEP 802.01(subsection II)
Related but Distinct Inventions
Related inventions are distinct if the claimed
inventions are not connected in at least one of:
a. DESIGN
b. OPERATION or
c. EFFECT
AND at least one invention is patentable over the
other.
(Note: one or both inventions may be unpatentable
over the prior art.)
MPEP 802.01(subsection II), 806.05(a, c, d, e, f, g, h, i, j)
Related - but are they distinct?
Establishing Distinctness Between Related
Product and Process Inventions
Process of using an apparatus & apparatus for
its practice – See MPEP 806.05(e)
Process of making a product & product made by
the process – See MPEP 806.05(f)
Product & process of using the product – See
MPEP 806.05(h)
Establishing Distinctness Between Related
Inventions in the Same Statutory Category
(e.g., “Products” or “Processes”)
Combination – Subcombination – See MPEP
806.05(c)
Subcombinations Usable Together – See MPEP
806.05(d)
Apparatus for making a product & product made by
the apparatus – See MPEP 806.05(g)
Related products or related processes (including
intermediate/final product) – See MPEP 806.05(j)
Concepts Relevant to
Determining Distinctness
Mutually Exclusive/Do Not Overlap in Scope
Materially Different
Not Obvious Variants
Mutually Exclusive/Do Not
Overlap in Scope
Claims to two products (or two processes) are
mutually exclusive, i.e., do not overlap in scope, if
one claim recites limitations disclosed for a first
product (or process) but not a second, while a
second claim recites limitations disclosed for a
second product (or process) but not the first.
In other words, claims to two products (or two
processes) do not overlap in scope if the first
product (or process) would not infringe the second
product (or process), and the second product (or
process) would not infringe the first.
Materially Different
Establishing distinction often requires showing
- the claimed product can be used in, or made by, a
materially different process than that claimed, or
- the claimed process can result in, or be performed with,
a materially different product than that claimed.
Two products or two processes are “materially different” when
they are independent or distinct from one another.
Burden on the examiner to provide a reasonable
example of a materially different product/process
- Example need not be documented
- If applicant convincingly traverses the restriction
requirement, a viable alternative process or product is
needed to maintain the restriction.
Not Obvious Variants
Distinctness between related inventions requires that at
least one invention would not have been obvious over the
other (i.e., that the inventions are not obvious variants).
Criterion can be met by stating, where appropriate, that
there is no indication on the record that the inventions
would have been obvious over each other within the
meaning of 35 U.S.C. 103.
Notify applicant via FP 8.22 that if applicant traverses the
restriction requirement on the grounds that the
inventions are not patentably distinct and one invention
is unpatentable over the prior art, such traversal may be
used in a rejection of the other invention under 35 U.S.C.
103(a).
Distinctness Between Related Products
or Between Related Processes
Follow this analysis when related products
or related processes are NOT related as
either
Combination/subcombination
Subcombinations usable together
Apparatus and product made
Intermediate-final product.
Distinctness Between Related Products
or Between Related Processes (cont’d)
Test:
the inventions as claimed do not overlap in scope, i.e.,
are mutually exclusive;
AND
the inventions as claimed are not obvious variants;
AND
the inventions as claimed are either not capable of
use together or can have a materially different
design, mode of operation, function, or effect.
MPEP 806.05(j); FP 8.14.01
USPTO Restriction Training Materials and
Chapter 800 Revisions
Part III - Writing a Restriction
Peter Paras
SPE Art Units 1635 and 1639
Basic Restriction Guidelines
Every restriction requirement has two criteria:
The inventions, as claimed, must be independent or
distinct and
There would be serious burden on the examiner if
restriction were not required.
MPEP 803.02
Statement of Requirement
for Restriction
Set forth the groups of inventions from which the
applicant is required to elect
Set forth the reasons for insisting upon restriction
independence/distinctness AND
burden.
Advise applicants about the reply to the requirement
and means for traversal.
FP 8.22 should be included in all restriction requirements
FP 8.21.04 should be included in any requirement for
restriction between a product and a process of making
or process of using the product.
Defining Groups of Inventions
Review the specification (including claims) to
identify the invention(s) disclosed therein.
Sort the claims into groups; each group is directed
to a single invention.
A single claim should ordinarily be placed in only one
group.
- An exception may be possible where the claim recites
inventions listed in the alternative.
Claims that appear to belong to more than one group
should be ordinarily be considered either generic
claims or linking claims and treated in accordance
with FP 8.01, 8.02, or 8.12 as appropriate.
Each claim must be accounted for, either in a group,
or as a generic or linking claim.
Practice Tips – Defining Groups
The same invention cannot be placed in two
groups.
Dependent claims cannot be grouped separate
from the group that contains their independent
or intervening claims.
Claims that refer to, but are not dependent on,
other claims may be placed in a separate
group from the referenced claims.
Review the active steps, not just the preamble,
when grouping method claims.
Product by process claims are a type of “product”
claim that should usually be grouped with the
product, not the process.
Reasons for Insisting Upon Restriction
Independence/distinctness
Provide a clear and detailed record of the
restriction requirement, explaining how
each invention is either independent or
distinct from each other invention.
Establish reasons why a serious burden on
the examiner would exist if the
restriction were not required.
Each restriction requirement must conclude
with one of form paragraphs 8.21.018.21.03.
MPEP 814, 817, and 818
Importance of a Clear Record
A clear and detailed record of the restriction
requirement provides a clear demarcation
between restricted inventions.
- Applicants have adequate notice regarding the
inventions to be elected from.
- If applicants seek relief from a restriction requirement
by petition, a clear record simplifies the petition
decision process.
- An examiner/court can determine whether inventions
claimed in a continuing application are consonant with
the restriction requirement and therefore subject to
the prohibition against double patenting rejections
under 35 U.S.C. 121.
Geneva Pharms. Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373,
1381, 68 USPQ2d 1865, 1871 (Fed. Cir. 2003).
Request for Oral Election
Examiners are encouraged to contact the attorney or
agent of record by telephone to present the restriction
requirement and request an oral election with or
without traverse.
If the restriction requirement is complex or the examiner knows
from past experience that a telephone election will not be
made, the examiner may proceed directly to a written
restriction requirement.
When an oral election is made, the next Office action will
include a written record of the restriction requirement
and a complete action on the merits of the elected
invention. MPEP 810 and 812.01
Form paragraph 8.23 should be used.
Request for Oral Election (cont’d)
When an attorney or agent of record objects to
making an oral election, the next Office action
will be a written restriction requirement; no
action on the merits is made.
Form paragraph 8.23.01 should be used.
Written restriction requirements made without
an action on the merits are given a 1-month
(not less than 30 days) shortened statutory
period for response. MPEP 812.01
Timing of Restriction Requirements
37 C.F.R. 1.142(a) Requirement for
restriction states:
“…Such requirement will normally be made
before any action on the merits; however, it
may be made at any time before final
action.”
Before final rejection, a second restriction
requirement may be made even if there
was a prior requirement with which
applicant complied. MPEP 811.02
Applicant’s Response
Applicant must elect in response to the restriction
even if the restriction is traversed. MPEP
818.03(b)
If applicant does not distinctly and specifically
point out supposed errors in the restriction, the
election should be treated as an election
without traverse. MPEP 818.03(a) and (c)
If applicant’s response states that the different
grouped inventions are not patentably distinct,
the restriction requirement should be
withdrawn.
Applicant’s Response –
Election with Traverse
Applicant must distinctly and specifically point out
the supposed errors in the restriction requirement.
Reconsider the restriction requirement.
If proper and the claims are not allowable, respond to the
points raised in the traversal, repeat the restriction
requirement and make the requirement final in the next
Office action. See FP 8.25.
- Although the requirement for restriction is being made final, if the
action is a non-final action it may be signed by someone with at
least temporary partial signatory authority. MPEP 803.01
- Applicant has the right to petition a final restriction requirement.
If improper, clearly state on the record that the
requirement is withdrawn and examine all claims.
Applicant’s Response –
Election with Traverse (cont’d)
Reconsider the restriction requirement (cont’d).
If proper when made, and the application is in condition
for allowance except for the presence of claims to the
non-elected invention, determine whether rejoinder
pursuant to MPEP 821.04 is appropriate.
If so, rejoin nonelected invention, withdraw the restriction
requirement, and examine the rejoined claims on the merits.
If not, contact the applicant for permission to cancel the
claims. Use FP 8.03 to set a response period of one month
or 30 days. If applicant does not respond within the time
period, cancel the claims to the non-elected invention by
Examiner’s Amendment.
MPEP 821.01
Applicant’s Response –
Election without Traverse
Applicant cannot petition the restriction requirement
under 37 CFR 1.144.
If all claims to elected invention are allowable, claims to
non-elected inventions (including non-elected species)
may be cancelled by Examiner’s Amendment unless all
claims to the non-elected inventions depend from or
otherwise include all the limitations of an allowable
claim (see MPEP 821.04 for rejoinder).
See MPEP 821.02 and FP 8.25.01 (without traverse) or
8.25.02 (without traverse based on incomplete reply).
Switching Inventions after Election
Applicant is generally not permitted to switch
to claiming a different invention after a
first action on the merits.
Cancellation of all claims drawn to an elected
invention and presentation of claims drawn to
a non-elected invention is non-responsive.
An RCE may not be used as a matter of right to
switch to an invention which is independent or
distinct from the invention examined
previously.
MPEP 819 and 821.03
Limits on Constructive Election
Claims added after an Office action should be withdrawn as
non-elected by original presentation ONLY IF those claims
are drawn to an invention that is independent or distinct
from the invention examined on the merits.
Where applicant presents claims that could not have been restricted
from the claims drawn to other elected invention had they been
presented earlier, the newly added claims (if entered) must be
examined on the merits.
It is improper to hold claims constructively nonelected
where a provisional election of a single species was made
in accordance with MPEP § 803.02 and applicant
amends the claims such that the elected species is
cancelled.
USPTO Restriction Training Materials and
Chapter 800 Revisions
Part IV - Linking Claims, Double
Patenting, and Rejoinder
Deborah Reynolds
tQAS 1600
37 C.F.R. 1.141(a)
“Two or more independent and distinct inventions
may not be claimed in one national application,
except that
more than one species of an invention,
not to exceed a reasonable number,
may be specifically claimed in different claims in
one national application,
provided the application also includes an
allowable claim generic to all the claimed species
and all the claims to species in excess of one are
written in dependent form (§ 1.75) or otherwise
include all the limitations of the generic claim.”
Linking Claims
Definition: A linking claim is a claim which, if
allowable, would prevent restriction between two
or more otherwise properly divisible (restrictable)
inventions. MPEP 809 and 809.03.
Linking claims and linked inventions are usually either a
product claim linking properly divisible product
inventions, or a process claim linking properly divisible
process inventions.
- Genus claims linking species claims
- Subcombination claim linking plural combinations that
require the subcombination.
If a linked invention is elected, the linking claims are
examined with the elected invention.
Allowable Linking Claims
When a linking claim is allowable, a restriction
requirement between the inventions it links
cannot be maintained.
The record must clearly state that the restriction
requirement has been withdrawn, even if claims to
non-elected linked inventions have been canceled.
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
The Office must provide Applicant with an opportunity
to reinstate canceled claims when a restriction
requirement is withdrawn based on the allowability
of the linking claim.
Practical Tips on Linking Claims
When requiring a restriction involving linking
claims per MPEP 809.03, the linking claims
should not appear in the list of claims for any
particular group. The linking claims appear
only in FP 8.12.
When requiring a provisional election of species
involving genus-type linking claims per MPEP
809.02, the species are listed and the linking
claims appear as the generic claims in FP 8.01.
Ramifications of Improper
Restriction Requirements
Inventions that were subject to a restriction
requirement and thus held to be patentably
distinct can not later be rejected under double
patenting over one another unless the
restriction requirement is withdrawn.
Patent rights may be unjustly extended.
MPEP 804.01
Ramifications of Improper
Restriction Requirements (cont’d)
Obviousness-type double patenting rejections
may be overcome by filing a terminal
disclaimer tying together ownership of
inventions that are not patentably distinct.
An improper restriction requirement may bar a
double patenting rejection in a divisional or
continuation application.
This could result in a situation where two patentably
indistinct inventions are owned by different parties.
Ramifications of Improper
Restriction Requirements (cont’d)
A final restriction requirement may be petitioned if the
applicant requested reconsideration of the
requirement.
The petition may be filed after final action or allowance of
claims to the elected invention, but must be filed not later
than appeal.
If the examiner is reversed in the petition decision, the
examiner must examine an invention(s) previously
withdrawn from consideration. This creates
additional work for the examiner and may delay the
patent and increase the cost of prosecution for
applicants.
Relationship of Restriction to
Double Patenting Rejections
Generally, a double patenting rejection is not permitted where
the claimed subject matter is presented in a divisional
application as a result of a restriction requirement made in
a parent application under 35 U.S.C. 121.
TC Director approval is needed for double patenting rejections between
a parent application and a divisional or continuation application filed
because of a requirement to restrict (including election of species).
MPEP 804.04
When examining a divisional or continuation application filed because
of a restriction requirement, the examiner should determine whether
the claims of the different applications or patents are consonant
(consistent) with the restriction requirement made in the parent
application.
If the claimed invention is not the same as the invention which was
held to be patentably distinct when the restriction requirement was
made, a double patenting rejection may be appropriate.
Relationship of Restriction to
Double Patenting Rejections (cont’d)
When a restriction requirement is withdrawn, 35
USC 121 no longer shields claims from double
patenting considerations.
Double patenting situations may arise where a
restriction requirement was made subject to the
non-allowance of linking claims, the linking
claims were subsequently allowed and the
restriction requirement was withdrawn.
Rejoinder
When all claims directed to the elected invention are
in condition for allowance, the nonelected
invention(s) should be considered for rejoinder.
Rejoinder is the process of withdrawing a restriction
requirement between an allowable elected
invention and a nonelected invention and examining
the formerly nonelected invention on the merits.
In order to be eligible for rejoinder, a claim to a
nonelected invention must depend from or
otherwise require all the limitations of an allowable
claim.
A claim that has been withdrawn from consideration and that
does not require all the limitations of an allowable claim will not
be rejoined.
Rejoinder (cont’d)
Rejoinder between independent and distinct products, or
independent and distinct processes, is appropriate when
a generic claim, linking claim or subcombination claim is
allowable and any previously withdrawn claim depends
from or otherwise requires all the limitations thereof.
MPEP 821.04(a)
If nonelected claims which depended from or otherwise
required all the limitations of an allowable claim were
cancelled by applicant, the examiner should use FP 8.46,
8.47, or 8.47.01 to inform applicant that such claims may
be reinstated by applicant if submitted in an amendment.
Rejoinder (cont’d)
Rejoined claims must 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.
MPEP 821.04
Rejoinder (cont’d)
The requirement for restriction between rejoined
inventions must be withdrawn.
Any claims presented in a continuation or
divisional application that are anticipated by, or
rendered obvious over, the claims of the parent
application may be subject to a double
patenting rejection if the restriction
requirement has been withdrawn in the parent
application.
See MPEP 821.04 and 821.04(a) for further
information on rejoinder.
Rejoinder of Process Claims
Requiring an Allowable Product
Rejoinder may be appropriate when claims to an
elected product are allowable and claims to a
nonelected process of making and/or using the
product depend from or otherwise require all
limitations of the allowable product claim.
If applicant cancels all claims to a nonelected
process invention before rejoinder occurs, the
examiner should not withdraw the restriction
requirement. This will preserve the applicant’s
rights under 35 USC 121.
MPEP 821.04(b)
Rejoinder Example 1
Claim 1. (Original) A dielectric resonator circuit comprising:
a dielectric resonator having a body formed of a dielectric
material, said body having at least one slit defining a gap
in the body. [Linking claim generic to species I and II]
Claim 2. (Original) The dielectric resonator circuit of claim
1, wherein the gap is comprised of air. [Species I]
Claim 3. (Withdrawn) The dielectric resonator circuit of
claim 1, wherein the gap is filled with mixture of superconductive material and ceramic material. [Species II]
Claim 4. (Withdrawn) A dielectric resonator circuit
comprising: a dielectric resonator having a body formed
of a dielectric material, said body having first and second
dielectric portions in contact with each other. [Species III]
Rejoinder Example 1 (cont’d)
The examiner required an election of species I, II, or III.
Species I was elected. Claims 1 and 2 are allowable.
The examiner should withdraw the election of species
requirement related to Species II and the invention
defined by claim 3 should be rejoined with the
invention of claim 1 since claim 1 is generic to Species
I and II.
Claim 4 remains as a non-elected species, and the
examiner may cancel the claim without consulting
applicant if the applicant elected species I without
traverse (FP 8.07) OR give applicant one month to
cancel claim 4 or take other appropriate action under
37 CFR 1.144 if the applicant elected species I with
traverse (FP 8.03).
Rejoinder Example 2
Claim 1. (Original) A multi-layered printed circuit board
comprising:
a plurality of dielectric layers arranged in a laminated
structure;
a ground layer disposed on a bottom surface of said
laminated structure; and
a chip capacitor and a signal conductor disposed on a
top surface of said laminated structure.
Claim 2. (Original) The multi-layered printed circuit board
according to claim 1, wherein said laminated structure
has a plurality of holes therethrough to connect said
chip capacitor and said ground layer.
Rejoinder Example 2 (cont’d)
Claim 3. (Original) A method of making a multi-layered
printed circuit board comprising the steps of:
providing a plurality of dielectric layers;
press-fitting said plurality of dielectric layers under a
pressure of 4000-5000 pounds per square inch; and
firing said plurality of dielectric layers at a temperature
of approximately 870 degree Celsius.
The examiner required restriction between Invention I
(claims 1 and 2) and Invention 2 (claim 3).
In response, Applicant elected Invention I without traverse
and amended claim 3 to the following:
Rejoinder Example 2 (cont’d)
Claim 3. (Amended) A method of making a multilayered printed circuit board according to claim 1
comprising the steps of:
providing a plurality of dielectric layers;
press-fitting said plurality of dielectric layers under a
pressure of 4000-5000 pounds per square inch; and
firing said plurality of dielectric layers at a temperature
of approximately 870 degree Celsius.
After claim 1 is determined to be allowable, the examiner
should withdraw the restriction requirement and claim 3
should be rejoined with claim 1 (see MPEP 821.04(b),
FP 8.42, 8.43)).
Thank You!