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809.03 Linking Claims - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
809.03 Linking Claims
There are a number of situations which arise in which an application has claims to two or more properly divisible inventions, so that a requirement to restrict the application to one would be proper, but presented in the same case are one or more claims (generally called "linking" claims) inseparable therefrom and thus linking together the inventions otherwise divisible.
The most common types of linking claims which, if allowed, act to prevent restriction between inventions that can otherwise be shown to be divisible, are
(A) genus claims linking species claims;
(B) a claim to the necessary process of making a product linking proper process and product claims;
(C) a claim to "means" for practicing a process linking proper apparatus and process claims; and
(D) a claim to the product linking a process of making and a use (process of using).
Where linking claims exist, a letter including a restriction requirement only or a telephoned requirement to restrict (the latter being encouraged) will be effected, specifying which claims are considered to be linking. Examiners should use Form Paragraph 8.12 to make restrictions involving linking claims.
¶ 8.12 Restriction, Linking Claims
Claim [1] link(s) inventions [2] and [3]. The restriction requirement [4] the linked inventions is subject to the nonallowance of the linking claim(s), claim [5]. Upon the allowance of the linking claim(s), the restriction requirement as to the linked inventions shall be withdrawn and any claim(s) depending from or otherwise including all the limitations of the allowable linking claim(s) will be entitled to examination in the instant application. Applicant(s) are advised that if any such claim(s) depending from or including all the limitations of the allowable linking claim(s) is/are presented in a continuation or divisional application, the claims of the continuation or divisional application may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Where a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. In re Ziegler, 44 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note
1. This form paragraph must be included in any restriction requirement with at least one linking claim present.
2. In bracket 4, insert either --between-- or --among--.
3. In bracket 5, insert the claim number(s) of the linking claims.
4. See related form paragraphs 8.45, 8.46 and 8.47.
For traverse of rejection of linking claim in applications, see MPEP § 818.03(d).
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