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818.03(d) Traverse of Nonallowance of Linking Claims - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
818.03(d) Traverse of Nonallowance of Linking Claims
A traverse of the nonallowance of the linking claims is not a traverse of the requirement to restrict; it is a traverse of a holding of nonallowance.
Election combined with a traverse of the nonallowance of the linking claims only is an agreement with the position taken by the Office that restriction is proper if the linking-type claim is not allowable and improper if they are allowable. If the Office allows such a claim, it is bound to withdraw the requirement and to act on all linked inventions. But once all linking claims are canceled 37 CFR 1.144 would not apply, since the record would be one of agreement as to the propriety of restriction.
Where, however, there is a traverse on the ground that there is some relationship (other than and in addition to the linking-type claim) that also prevents restriction, the merits of the requirement are contested and not admitted. Assume a particular situation of process of making and product made where the claim held linking is a claim to product limited by the process of making it. The traverse may set forth particular reasons justifying the conclusion that restriction is improper where the process necessarily makes the product and there is no other present known process by which the product can be made. If restriction is made final in spite of such traverse, the right to petition is preserved even though all linking claims are canceled.
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