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2303.01 Interference on Nonelected Subject Matter - 2300 Interference Proceedings
2303.01 Interference on Nonelected Subject Matter
Where the subject matter found to be allowable in one application is disclosed and claimed in another application, but the claims therein to such subject matter are either nonelected or subject to election, the question of interference should be considered. The requirement of 37 CFR 1.601(i) that the conflicting applications shall contain claims for the same patentable invention should be interpreted as meaning generally that the conflicting claimed subject matter is sufficiently supported in each application and is patentable to each applicant over the prior art. The statutory requirement of first inventorship should be given primary emphasis and every effort should be made to avoid prematurely issuing a patent where there is an adverse claimant.
Following are illustrative situations where the examiner should take action toward instituting interference:
(A) Application filed with claims to divisible inventions I and II. Before action requiring restriction is made, examiner discovers another application having claims to invention I. The situation is not altered by the fact that a requirement for restriction had actually been made but had not been replied to. Nor is the situation materially different if an election of noninterfering subject matter had been made without traverse but no action given on the merits of the elected invention.
(B) Application filed with claims to divisible inventions I and II and in reply to a requirement for restriction, applicant traverses the same and elects invention I. Examiner gives an action on the merits of I. Examiner subsequently finds an application to another containing allowed claims to invention II and which is ready for issue. The situation is not altered by the fact that the election is made without traverse and the nonelected claims possibly canceled.
(C) Application filed with generic claims and claimed species a, b, c, d, and e. Generic claims rejected and election of a single species required. Applicant elects species a, but continues to urge allowability of generic claims. Examiner finds another application claiming species b which is ready for issue. An interference may be proposed even though the generic claims in the first application are not allowable.
(D) Application filed with generic claims and claims to five species and other species disclosed but not specifically claimed. Examiner finds another application the disclosure and claims of which are restricted to one of the unclaimed species and have been found allowable. The prosecution of generic claims is taken as indication of an intention to cover all species disclosed which come under the generic claim.
In all the above situations, the applicant has shown an intention to claim the subject matter which is actually being claimed in another application. These are to be distinguished from situations where a distinct invention is claimed in one application but merely disclosed in another application without evidence of an intent to claim the same. The question of interference should not be considered in the latter instance. However, if the application disclosing but not claiming the invention is senior, and the junior application is ready for issue, the matter should be discussed with the TC Director to determine the action to be taken.
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