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809.04 Retention of Claims to Non-elected Invention - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
809.04 Retention of Claims to Non-elected Invention
Where the requirement for restriction in an application is predicated upon the nonallowability of generic or other type of linking claims, applicant is entitled to retain in the case claims to the nonelected invention or inventions.
If a linking claim is allowed, the examiner must thereafter examine species if the linking claim is generic thereto, or he or she must examine the claims to the nonelected inventions that are linked to the elected invention by such allowed linking claim.
Form paragraph 8.45 should be used to notify applicant of the allowance of a linking claim and that the nonelected claim(s) depending from or including all the limitations of the allowable linking claim, previously withdrawn from consideration, is/are rejoined and fully examined for patentability under 37 CFR 1.104.
¶ 8.45 Allowance of Linking Claim(s), Nonelected Claims Not Canceled
Linking claim [1] allowed. Since the restriction requirement [2] inventions [3], as set forth in Paper No. [4] mailed on [5], was conditioned on the nonallowance of the linking claim(s), the restriction requirement as to the linked inventions is hereby withdrawn. Claim [6], previously withdrawn from consideration as a result of the restriction requirement, [7] hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement as to the linked inventions, applicant(s) are advised thatif any claim(s) depending from or including all the limitations of the allowable 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 Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable.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. This form paragraph must be used upon the allowance of a linking claim following a restriction requirement with at least one linking claim present and wherein the nonelected claims have NOT been canceled. Use form paragraph 8.46 where the nonelected claims HAVE BEEN canceled.
2. In bracket 2, insert either --between-- or --among--.
3. In bracket 7, insert either --is-- or --are--.
Form paragraph 8.46 (or form paragraph 8.47 if appropriate) must be used to notify applicant of the allowance of a linking claim and that the nonelected claim(s) which depended from or included all the limitations of the allowable linking claim canceled by applicant may be reinstated by submitting the claim(s) in an amendment.
¶ 8.46 Allowance of Linking Claim(s), Nonelected Claims Canceled, Other Issues Remain Outstanding
Linking claim [1] allowed. Since the restriction requirement [2] inventions [3], as set forth in Paper No. [4] mailed on [5], was conditioned on the nonallowance of the linking claim(s), the restriction requirement as to the linked inventions is hereby withdrawn. Claim [6], which depended from or included all the limitations of the allowable linking claim(s), previously withdrawn from consideration as a result of the restriction requirement, [7] canceled by applicant in Paper No. [8]. The canceled, nonelected claim(s) may be reinstated by applicantif submitted in a timely filed amendment in reply to this action. Upon entry of the amendment, such amended claim(s) will be examined for patentability under 37 CFR 1.104.
In view of the withdrawal of the restriction requirement as to the linked inventions, applicant(s) are advised that if any claim(s) depending from or including all the limitations of the allowable 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 the 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. This form paragraph (or form paragraph 8.47) must be used upon the allowance of a linking claim following a restriction requirement with at least one linking claim present and wherein the nonelected claims HAVE BEEN canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled.
2. If no issues remain outstanding and application is otherwise ready for allowance, use form paragraph 8.47 instead of this form paragraph.
3. In bracket 2, insert either --between-- or --among--.
4. In bracket 7, insert either --was-- or --were--.
¶ 8.47 Allowance of Linking Claim(s), Nonelected Claims Canceled, No Outstanding Issues Remaining
Linking claim [1] allowed. Since the restriction requirement [2] inventions [3], as set forth in Paper No. [4] mailed on [5], was conditioned on the nonallowance of the linking claim(s), the restriction requirement as to the linked inventions is hereby withdrawn. Claim [6], which depended from or included all the limitations of the allowable linking claim(s), previously withdrawn from consideration as a result of the restriction requirement, [7] canceled by applicant in Paper No. [8]. The canceled, nonelected claim(s) may be reinstated by applicantif submitted in an amendment, limited to the addition of such claim(s), filed within a time period of ONE MONTH, or THIRTY DAYS, whichever is longer, from the mailing date of this letter. Upon entry of the amendment, such amended claim(s) will be examined for patentability under 37 CFR 1.104. If NO such amendment is submitted within the set time period, the application will be passed to issue. PROSECUTION ON THE MERITS IS OTHERWISE CLOSED.
In view of the withdrawal of the restriction requirement as to the linked inventions, applicant(s) are advised that if any claim(s) depending from or including all the limitations of the allowable 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 the 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. This form paragraph (or form paragraph 8.46) must be used upon the allowance of a linking claim following a restriction requirement with at least one linking claim present and wherein the nonelected claims HAVE BEEN canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled.
2. This form paragraph should be used only when there are no outstanding issues remaining and is to be used with only a PTO-90C cover sheet.
3. In bracket 2, insert either --between-- or --among--.
4. In bracket 7, insert either --was-- or --were--.
When a final requirement is contingent on the nonallowability of the linking claims, applicant may petition from the requirement under 37 CFR 1.144 without waiting for a final action on the merits of the linking claims or applicant may defer his or her petition until the linking claims have been finally rejected, but not later than appeal. See 37 CFR 1.144 and MPEP § 818.03(c).
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