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821.04 Rejoinder - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
821.04 Rejoinder
Where product and process claims drawn to independent and distinct inventions are presented in the same application, applicant may be called upon under 35 U.S.C. 121 to elect claims to either the product or process. See MPEP § 806.05(f) and § 806.05(h). The claims to the nonelected invention will be withdrawn from further consideration under 37 CFR 1.142. See MPEP § 809.02(c) and § 821 through § 821.03. However, if applicant elects claims directed to the product, and a product claim is subsequently found allowable, withdrawn process claims which depend from or otherwise include all the limitations of the allowable product claim will be rejoined.
Where the application as originally filed discloses the product and the process for making and/or using the product, and only claims directed to the product are presented for examination, when a product claim is found allowable, applicant may present claims directed to the process of making and/or using the patentable product by way of amendment pursuant to 37 CFR 1.121. In view of the rejoinder procedure, and in order to expedite prosecution, applicants are encouraged to present such process claims, preferably as dependent claims, in the application at an early stage of prosecution. Process claims which depend from or otherwise include all the limitations of the patentable product will be entered as a matter of right if the amendment is presented prior to final rejection or allowance. Amendments submitted after final rejection are governed by 37 CFR 1.116. Process claims which do not depend from or otherwise include the limitations of the patentable product will be withdrawn from consideration, via an election by original presentation (see MPEP § 821.03). Amendments submitted after allowance are governed by 37 CFR 1.312. Process claims which depend from or otherwise include all the limitations of an allowed product claim and which meet the requirements of 35 U.S.C. 101, 102, 103, and 112 may be entered.
Where applicant voluntarily presents claims to the product and process in separate applications (i.e., no restriction requirement was made by the Office), and one of the applications issues as a patent, the remaining application may be rejected under the doctrine of obviousness-type double patenting, where appropriate (see MPEP § 804 - § 804.03), and applicant may overcome the rejection by the filing of a terminal disclaimer under 37 CFR 1.321(c) where appropriate. Similarly, if copending applications separately present product and process claims, provisional obviousness-type double patenting rejections should be made where appropriate. However, once a determination as to the patentability of the product has been reached any process claim which contains limitations identical to the allowed/allowable product should not be rejected over prior art without consultation with a Technology Center Director.
Where product and process claims are presented in a single application and that application qualifies under the transitional restriction practice pursuant to 37 CFR 1.129(b), applicant may either: (A) elect the invention to be searched and examined and pay the fee set forth in 37 CFR 1.17(s) and have the additional inventions searched and examined under 37 CFR 1.129(b)(2); or (B) elect the invention to be searched and examined and not pay the additional fee ( 37 CFR 1.129(b)(3)). Where no additional fee is paid, if the elected invention is directed to the product and the claims directed to the product are subsequently found patentable, process claims which either depend from or include all the limitations of the allowable product will be rejoined. If applicant chooses to pay the fees to have the additional inventions searched and examined pursuant to 37 CFR 1.129(b)(2) even if the product is found allowable, applicant would not be entitled to a refund of the fees paid under 37 CFR 1.129(b) by arguing that the process claims could have been rejoined. 37 CFR 1.26(a) states that "[T]he Commissioner may refund any fee paid by mistake or in excess of that required. A change of purpose after the payment of a fee...will not entitle a party to a refund of such fee..." In this case, the fees paid under 37 CFR 1.129(b) were not paid by mistake nor paid in excess, therefore, applicant would not be entitled to a refund.
In the event of rejoinder, the rejoined process claims will 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. If the application containing the rejoined claims is not in condition for allowance, the subsequent Office action may be made final, or, if the application was already under final rejection, the next Office action may be an advisory action.
Form paragraphs 8.42 through 8.44 should be used to notify applicant of the rejoinder of process claims which depend from or otherwise include all the limitations of an allowable product claim.
¶ 8.42 Rejoinder of Less Than All Process Claims
Claim [1] directed to an allowable product. Pursuant to the procedures set forth in the Official Gazette notice dated March 26, 1996 (1184 O.G. 86), claim [2], directed to the process of making or using the patentable product, previously withdrawn from consideration as a result of a restriction requirement, [3] now subject to being rejoined. Process claim [4] hereby rejoined and fully examined for patentability under 37 CFR 1.104. In accordance with the Official Gazette notice, supra, process claim [5], which [6] not depend fromor otherwise include all the limitations of the allowable product, [7] NOT been rejoined.
Examiner Note
1. If ALL previously withdrawn claims are being rejoined, then form paragraph 8.43 should be used instead of this form paragraph.
2. If other non-process claims are present and are NOT being rejoined, use form paragraph 8.44 instead of this form paragraph.
3. In bracket 1, insert the claim number(s) of the allowable product claims followed by either -- is-- or -- are--.
4. In bracket 2, insert the claim number(s) of ALL process claims previously withdrawn from consideration.
5. In bracket 3, insert either --is-- or --are--.
6. In bracket 4 , insert the number(s) of the rejoined process claims.
7. In bracket 5, insert the number(s) of the process claims NOT being rejoined followed by either -- is-- or -- are--.
8. In bracket 6, insert --do-- or --does--.
9. In bracket 7, insert --has-- or --have--.
10. If rejoinder occurs after the first Office action on the merits and if any of the rejoined claims are unpatentable, e.g., if a rejection under 35 U.S.C. 112, first paragraph is made, then the next Office action may be made final since the new ground of rejection was necessitated by applicant's reply.
¶ 8.43 Rejoinder of All Previously Withdrawn Claims
Claim [1] directed to an allowable product. Pursuant to the procedures set forth in the Official Gazette notice dated March 26, 1996 (1184 O.G. 86), claim [2], directed to the process of making or using the patentable product, previously withdrawn from consideration as a result of a restriction requirement, [3] now subject to being rejoined. Claim [4] hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Since all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement made in the Paper No. [5] is hereby withdrawn.
Examiner Note
1. If LESS THAN ALL previously withdrawn process claims are being rejoined, then form paragraph 8.42 should be used instead of this form paragraph. If LESS THAN ALL previously withdrawn claims are being rejoined, then form paragraph 8.44 should be used instead of this form paragraph.
2. In bracket 1, insert the claim number(s) of the allowable product claim(s) followed by either -- is-- or -- are--.
3. In bracket 2, insert the claim number(s) of the process claim(s) previously withdrawn from consideration.
4. In bracket 3, insert either --is-- or --are--.
5. In bracket 4, insert the number(s) of the process claims being rejoined (should correspond to bracket 2 insert).
6. If rejoinder occurs after the first Office action on the merits and if any of the rejoined claims are unpatentable, e.g., if a rejection under 35 U.S.C. 112, first paragraph is made, then the next Office action may be made final since the new ground of rejection was necessitated by applicant's reply.
¶ 8.44 Rejoinder of Process Claims, Other Claims Present and Not Rejoined
Claim [1] directed to an allowable product. Pursuant to the procedures set forth in the Official Gazette notice dated March 26, 1996 (1184 O.G. 86), claim [2], directed to the process of making or using the patentable product, previously withdrawn from consideration as a result of a restriction requirement, [3] now subject to being rejoined. Process claim [4] hereby rejoined and fully examined for patentability under 37 CFR 1.104. Claim [5], not directed to the process of making or using the patentable product, will not be rejoined.
Examiner Note
1. If LESS THAN ALL previously withdrawn process claims are being rejoined, then form paragraph 8.42 should be used instead of this form paragraph. If ALL previously withdrawn claims are being rejoined then form paragraph 8.43 should be used instead of this form paragraph.
2. In bracket 1, insert the claim number(s) of the allowable product claim(s) followed by either -- is-- or -- are--.
3. In bracket 2, insert the claim number(s) of the process claim(s) previously withdrawn from consideration.
4. In bracket 3, insert either --is-- or --are--.
5. In bracket 4, insert the number(s) of the process claims being rejoined (should correspond to bracket 2 insert).
6. In bracket 5, insert the number(s) of all previously withdrawn claims which are not being rejoined.
7. If rejoinder occurs after the first Office action on the merits and if any of the rejoined claims are unpatentable, e.g., if a rejection under 35 U.S.C. 112, first paragraph is made, then the next Office action may be made final since the new ground of rejection was necessitated by applicant's reply.
See MPEP § 706.02(n) for the applicability of 35 U.S.C. 103(b) to biotechnological processes and compositions of matter.
See MPEP § 2116.01 for guidance on the treatment of process claims which make or use a novel, nonobvious product.
See MPEP § 806.05(c) for rejoinder of restricted combination/subcombination inventions when an evidence claim is found to be unallowable, and see MPEP § 809 and § 809.04 for rejoinder of restricted inventions when a linking claim is found allowable.
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