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806.04(b) Species May Be Related Inventions - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
806.04(b) Species May Be Related Inventions
Species, while usually independent, may be related under the particular disclosure. Where inventions as disclosed and claimed are both (A) species under a claimed genus and (B) related, then the question of restriction must be determined by both the practice applicable to election of species and the practice applicable to other types of restrictions such as those covered in MPEP § 806.05 - § 806.05(i). If restriction is improper under either practice, it should not be required.
For example, two different subcombinations usable with each other may each be a species of some common generic invention. In Ex parte Healy, 1898 C.D. 157, 84 O.G. 1281 (Comm"r Pat. 1898), a clamp for a handle bar stem and a specifically different clamp for a seat post both usable together on a bicycle were claimed. In his decision, the Commissioner considered both the restriction practice under election of species and the practice applicable to restriction between combination and subcombinations.
As a further example, species of carbon compounds may be related to each other as intermediate and final product. Thus, these species are not independent and in order to sustain a restriction requirement, distinctness must be shown. Distinctness is proven if it can be shown that the intermediate product is useful other than to make the final product. Otherwise, the disclosed relationship would preclude their being issued in separate patents.
Form Paragraph 8.14 may be used in intermediate - final product restriction requirements.
¶ 8.14 Intermediate-Final Product
Inventions [1] and [2] are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product ( MPEP § 806.04(b), 3rd paragraph), and the species are patentably distinct ( MPEP § 806.04(h)). In the instant case, the intermediate product is deemed to be useful as [3] and the inventions are deemed patentably distinct since there is nothing on this record to show them to be obvious variants. Should applicant traverseon the ground that the species are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the species to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions anticipated by the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
Examiner Note
1. This form paragraph is to be used when claims are presented to both an intermediate and final product ( MPEP § 806.04(b)).
2. Conclude restriction requirement with one of form paragraphs 8.21.01 through 8.21.03.
The intermediate and final product must have a mutually exclusive species relationship and as with all species restrictions, must be patentably distinct.
Typically, the intermediate loses its identity in the final product.
Additionally, the intermediate must be shown to be useful to make other than the final product. The examiner must give an example of an alternative use but need not provide documentation. Applicant then has the burden to prove or provide a convincing argument that the intermediate does not have the suggested use.
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