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817 Outline of Letter for Restriction Requirement Between Distinct Inventions - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
817 Outline of Letter for Restriction Requirement Between Distinct Inventions
The statement in MPEP § 809.02 through § 809.02(d) is adequate indication of the form of letter when election of species is required.
No outline of a letter is given for other types of independent inventions since they rarely occur.
The following outline of a letter for a requirement to restrict is intended to cover every type of original restriction requirement between related inventions including those having linking claims.
OUTLINE OF LETTER
(A) Statement of the requirement to restrict and that it is being made under 35 U.S.C. 121
(1) Identify each group by Roman numeral.
(2) List claims in each group. Check accuracy of numbering of the claims; look for same claims in two groups; and look for omitted claims.
(3) Give short description of total extent of the subject matter claimed in each group, pointing out critical claims of different scope and identifying whether the claims are directed to a combination, subcombination, process, apparatus, or product.
(4) Classify each group.
Form paragraphs 8.08-8.11 should be used to group inventions.
¶ 8.08 Restriction, Two Groupings
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claim [1], drawn to [2], classified in class [3], subclass [4].
II. Claim [5], drawn to [6], classified in class [7], subclass [8].
¶ 8.09 Restriction, 3rd Grouping
III. Claim [1], drawn to [2], classified in class [3], subclass [4].
¶ 8.10 Restriction, 4th Grouping
IV. Claim [1], drawn to [2], classified in class [3], subclass [4].
¶ 8.11 Restriction, Additional Groupings
[1]. Claim[2], drawn to [3], classified in class [4], subclass [5].
Examiner Note
In bracket 1, insert the appropriate roman numeral, e.g., --V--, --VI--, etc.
(B) Take into account claims not grouped, indicating their disposition.
(1) Linking claims
(i) Indicate (make no action)
(ii) Statement of groups to which linking claims may be assigned for examination
(2) Other ungrouped claims
(3) Indicate disposition, e.g., previously nonelected, nonstatutory, canceled, etc.
(C) Allegation of distinctness
(1) Point out facts which show distinctness
(2) Treat the inventions as claimed, don't merely state the conclusion that inventions in fact are distinct
(i) Subcombination - Subcombination disclosed as usable together Each usable alone or in other identified combination Demonstrate by examiner's suggestion
(ii) Combination - Subcombination Combination as claimed does not require subcombination AND Subcombination usable alone or in other combination Demonstrate by examiner's suggestion
(iii) Process - Apparatus Process can be carried out by hand or by other apparatus Demonstrate by examiner's suggestion OR Demonstrate apparatus can be used in other process (rare).
(iv) Process of making and/or Apparatus for making - Product made Claimed product can be made by other process (or apparatus) Demonstrate by examiner's suggestion OR Demonstrate process of making (or apparatus for making) can produce other product (rare)
(D) Provide reasons for insisting upon restriction
(1) Separate status in the art
(2) Different classification
(3) Same classification but recognition of divergent subject matter
(4) Divergent fields of search, or
(5) Search required for one group not required for the other
(E) Summary statement
(1) Summarize (i) distinctness and (ii) reasons for insisting upon restriction, if applicable
(2) Include paragraph advising as to reply required.
(3) Indicate effect of allowances of linking claims, if any present
(4) Indicate effect of cancellation or nonallowance of evidence claims (see MPEP § 806.05(c))
One of form paragraphs 8.21.01 through 8.21.03 must be used at the conclusion of each restriction requirement.
¶ 8.21.01 Conclusion to All Restriction Requirements: Different Classification
Because these inventions are distinct for the reasons given above and have acquired a separate status in the art as shown by their different classification, restriction for examination purposes as indicated is proper.
Examiner Note
THIS FORM PARAGRAPH (OR ONE OF FORM PARAGRAPHS 8.21.02 OR 8.21.03) MUST BE ADDED AS A CONCLUSION TO ALL RESTRICTION REQUIREMENTS employing any of form paragraphs 8.14 to 8.20.02.
¶ 8.21.02 Conclusion to All Restriction Requirements: Recognized Divergent Subject Matter
Because these inventions are distinct for the reasons given above and have acquired a separate status in the art because of their recognized divergent subject matter, restriction for examination purposes as indicated is proper.
Examiner Note
THIS FORM PARAGRAPH (OR ONE OF FORM PARAGRAPHS 8.21.01 OR 8.21.03) MUST BE ADDED AS A CONCLUSION TO ALL RESTRICTION REQUIREMENTS employing any of form paragraphs 8.14 to 8.20.02.
¶ 8.21.03 Conclusion to All Restriction Requirements: Different Search
Because these inventions are distinct for the reasons given above and the search required for Group [1] is not required for Group [2], restriction for examination purposes as indicated is proper.
Examiner Note
THIS FORM PARAGRAPH (OR ONE OF FORM PARAGRAPHS 8.21.01 OR 8.21.02) MUST BE ADDED AS A CONCLUSION TO ALL RESTRICTION REQUIREMENTS employing any of form paragraphs 8.14 to 8.20.02.
Form paragraph 8.23.02 must be included in all restriction requirements for applications having joint inventors.
¶ 8.23.02 Joint Inventors, Correction of Inventorship
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Examiner Note
This form paragraph must be included in all restriction requirements for applications having joint inventors.
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