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809.02(c) Action Following Election - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
809.02(c) Action Following Election
An examiner's action subsequent to an election of species should include a complete action on the merits of all claims readable on the elected species.
(A) When the generic claims are rejected, or there is no generic claim, all claims not readable on the elected species should be treated using Form Paragraphs 8.05 and 8.06, as appropriate.
¶ 8.05 Claims Stand Withdrawn With Traverse
Claim [1] withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected [2], there being no (allowable) generic or linking claim. Applicant timely traversed the restriction (election) requirement in Paper No. [3].
Examiner Note
In bracket 2, insert --invention-- or --species--.
¶ 8.06 Claims Stand Withdrawn Without Traverse
Claim [1] withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected [2], there being no allowable generic or linking claim. Election was made without traverse in Paper No. [3].
Examiner Note
In bracket 2, insert --invention--, or --species--.
(B) When a generic claim is subsequently found to be allowable, and not more than a reasonable number of additional species are claimed, treatment shall be as follows:
(1) When all claims to each of the additional species are embraced by an allowable generic claim as provided by 37 CFR 1.141, applicant must be advised of the allowable generic claim and that claims drawn to the nonelected species are no longer withdrawn since they are fully embraced by the allowed generic claim.
(2) When any claim directed to one of said additional species embraced by an allowed generic claim is not in the required form, all claims to that species should be held to be withdrawn from further consideration by the examiner. The holding should be worded as set forth in form paragraph 8.49.
¶ 8.49 Allowance of Generic Claim(s), Claims Stand Withdrawn as Not In Required Form
Claim [1], directed to the species of [2] withdrawn from further consideration since [3] depend upon or otherwise include each of the limitations of an allowed generic claim as required by 37 CFR 1.141.
Examiner Note
1. In bracket 2, insert identification of species followed by --, is-- or --, are--.
2. In bracket 3, insert --it does not-- or --they do not all--.
Note that each additional species is handled separately. When all of the claims to one nonelected species are embraced by an allowable generic claim but each of the claims to another nonelected species is not embraced by an allowable generic claim, applicant must be advised that the claims to the one nonelected species are no longer withdrawn from further consideration but that the claims to the other nonelected species remain withdrawn from further consideration since all of the claims to this other species do not depend upon or fully include all of the limitations of an allowed generic claim as required by 37 CFR 1.141. This holding should be worded as set forth in form paragraph 8.50.
¶ 8.50 Allowance of Generic Claim(s), Some Claims No Longer Considered Withdrawn
Claim [1] generic and allowable. Accordingly, the restriction requirement as to the encompassed species is hereby withdrawn and claim [2], directed to the species of [3] no longer withdrawn from consideration since all of the claims to this species depend from or otherwise include each of the limitations of an allowed generic claim. However, claim [4], directed to the species of [5] remain withdrawn from consideration since [6] depend upon or otherwise include all the limitations of an allowed generic claim as required by 37 CFR1.141.
In view of the above noted withdrawal of the restriction requirement as to the linked species, applicant(s) are advised that if any claim(s) depending from or including all the limitations of the allowable generic linking claim(s) be presented in a continuation or divisional application, such claims may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 44 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note
1. In bracket 3, insert an identification of species followed by --, is-- or --, are--.
2. In bracket 5, insert an identification of species.
3. In bracket 6, insert --it does not-- or --they do not all--.
4. If all of the pending claims are in proper form, i.e., they include all the limitations of an allowed generic or linking claim, one of form paragraphs 8.45, 8.46 or 8.47 must be used.
When the application is otherwise ready for issue and there is an allowed generic claim, and applicant has not been previously notified as to the allowance of a generic claim, applicant must be advised of the allowance of a generic claim and given a time limit of 1 month (not less than 30 days) to conform all of the claims to the nonelected species to fully embrace an allowed generic claim or the examiner will cancel the claims to each nonconforming species by examiner's amendment and pass the application to issue. If the election is traversed, an additional paragraph worded as form paragraph 8.03 should be added to the holding.
¶ 8.03 In Condition for Allowance, Non-elected Claims
This application is in condition for allowance except for the presence of claim [1] to an invention non-elected with traverse in Paper no. [2]. Applicant is given ONE MONTH or THIRTY DAYS from the date of this letter, whichever is longer, to cancel the noted claims or take other appropriate action ( 37 CFR 1.144). Failure to take action during this period will be treated as authorization to cancel the noted claims by Examiner's Amendment and pass the case to issue. Extensions of time under 37 CFR 1.136(a) will not be permitted since this application will be passed to issue.
The prosecution of this case is closed except for consideration of the above matter.
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