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USPTO Restriction Training Materials and Chapter 800 Revisions
USPTO Restriction Training Materials and Chapter 800 Revisions Part I - What is this thing we call restriction? Kathleen Kerr SPE Art Unit 1656
INVENTION A INVENTION A DOUBLE PATENTING: STATUTORY TYPE 35 USC 101 NON-STATUTORY Obviousness-type Double Patenting PATENT FOR INVENTION A PLURAL DISTINCT INVENTIONS RESTRICTION 35 U.S.C U.S.C. 101: WHOEVER INVENTS …MAY RECEIVE A PATENT PATENT APPLICATION PATENT APPLICATION PATENT APPLICATION ONE PATENT FOR ONE INVENTION
What is RESTRICTION ? Restriction is the practice of requiring an applicant to elect a single invention for examination when an application discloses and claims plural inventions. MPEP
35 U.S.C. 101 “Whoever invents or discovers any new and useful process, machine, manufacture, composition of matter, or any new and useful improvement thereof, may obtain a patent therefor,…”
35 U.S.C. 121 “If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions….”
Interpretation of 35 U.S.C. 121 Restriction is discretionary, not mandatory. Historically the phrase “two or more independent and distinct inventions” has been interpreted to mean two or more independent or distinct inventions. MPEP
Correlation Between Independent Inventions and Distinct Inventions Independent Inventions in design, operation, and effect Unrelated in design, operation, and effect The natural consequence of the lack of any relationship is that each invention is patentable over the other. Distinct Inventions of design, operation, or effect, and Related in at least one of design, operation, or effect, and of design, operation, or effect, and Not connected in at least one of design, operation, or effect, and At least At least one invention is patentable over the other
Is Restriction Appropriate? Is the application filed under 35 U.S.C. 111(a)? Restriction practice may be used when plural independent or distinct inventions are claimed in an application filed under 35 U.S.C. 111(a). MPEP 801 The claims of an application must be compared to determine if they describe plural independent or distinct inventions. MPEP Plural inventions in an application filed under 35 U.S.C. 371 are considered under PCT unity of invention standards. See MPEP Chapter 1800 for details.
When is Restriction Not an Option? If the search and examination of all the claims in an application can be made without serious burden, the examiner must examine all of the claims on the merits, even if the claims are drawn to independent or distinct inventions. If there is an express admission that the claimed inventions would have been obvious over each other within the meaning of 35 U.S.C. 103, restriction should not be required. MPEP 803
If an application does not specifically claim, or encompass within a generic claim, two or more independent or distinct inventions, restriction cannot be required. If the inventions are related as disclosed but are not distinct as claimed, restriction is never proper. MPEP 806 Do not restrict if the claims define the same essential characteristics of a single disclosed embodiment of an invention. MPEP When is Restriction Not Appropriate?
Single Disclosed Embodiment Claims define the same essential characteristics of a single disclosed embodiment when Claims define the same essential characteristics of a single disclosed embodiment when the claims provide different definitions of the same disclosed invention and/or the claims vary only in breadth or scope of the invention. See MPEP Claims that merely further define elements of a single disclosed embodiment should not be restricted from each other because the claims would overlap in scope and be infringed upon by the single disclosed embodiment and/or the claims define products (or processes) that are related in design, operation, and effect.
Example of Claims Defining a Single Disclosed Embodiment of an Invention Specification discloses a pair of chopsticks wherein the preferred embodiment is a pair of 8 inch long bamboo chopsticks, with wider square handles tapering down to narrow tips. Specification discloses a pair of chopsticks wherein the preferred embodiment is a pair of 8 inch long bamboo chopsticks, with wider square handles tapering down to narrow tips. Claim 1. A pair of bamboo chopsticks with square handles. Claim 2. A pair of chopsticks which are tapered from one end to the other. Claim 3. A pair of 8 inch long bamboo chopsticks.
Basic Restriction Guidelines Every restriction requirement has two criteria: The inventions, as claimed, must be independent or distinct and There would be serious burden on the examiner if restriction were not required. MPEP
Showing Serious Burden The examiner must provide reasons to support the conclusion that a serious burden would exist if restriction were not required. A serious burden may be prima facie shown if the examiner explains why the inventions have separate classification or separate status in the art or a different field of search as defined in MPEP The prima facie showing may be rebutted by the applicant. MPEP 803
Showing Serious Burden (cont.) Serious burden may be established based on a different field of search if it is necessary to search for one of the inventions in a manner not likely to result in finding art pertinent to the other invention(s), e.g., - searching different classes/subclasses - searching different classes/subclasses - searching different electronic resources - searching different electronic resources - employing different search queries - employing different search queries A serious burden may be shown when the inventions are classified together if the examiner can explain how the searches differ.
USPTO Restriction Training Materials and Chapter 800 Revisions Part II - Defining an Invention Michael Hartley SPE Art Unit 1618
Independent Inventions Independent inventions have no disclosed relationship, i.e., they are unrelated. In other words, the inventions as disclosed are not connected in any of: a. DESIGN b. OPERATION and c. EFFECT MPEP (subsection I), , FP
Related Inventions Related inventions have a disclosed relationship, i.e., are connected in at least one of: a. DESIGN (structure or method of manufacturing) b. OPERATION (function or method of use) or c. EFFECT MPEP (subsection II)
Related but Distinct Inventions Related inventions are distinct if the claimed inventions are not connected in at least one of: a. DESIGN a. DESIGN b. OPERATION or c. EFFECT AND at least one invention is patentable over the other. (Note: one or both inventions may be unpatentable over the prior art.) MPEP (subsection II), (a, c, d, e, f, g, h, i, j)
Related - but are they distinct?
Establishing Distinctness Between Related Product and Process Inventions Process of using an apparatus & apparatus for its practice – See MPEP (e) Process of making a product & product made by the process – See MPEP (f) Product & process of using the product – See MPEP (h)
Establishing Distinctness Between Related Inventions in the Same Statutory Category (e.g., “Products” or “Processes”) Combination – Subcombination – See MPEP (c) Subcombinations Usable Together – See MPEP (d) Apparatus for making a product & product made by the apparatus – See MPEP (g) Related products or related processes (including intermediate/final product) – See MPEP (j)
Concepts Relevant to Determining Distinctness Mutually Exclusive/Do Not Overlap in Scope Materially Different Not Obvious Variants
Mutually Exclusive/Do Not Overlap in Scope Claims to two products (or two processes) are mutually exclusive, i.e., do not overlap in scope, if one claim recites limitations disclosed for a first product (or process) but not a second, while a second claim recites limitations disclosed for a second product (or process) but not the first. In other words, claims to two products (or two processes) do not overlap in scope if the first product (or process) would not infringe the second product (or process), and the second product (or process) would not infringe the first.
Materially Different Establishing distinction often requires showing - the claimed product can be used in, or made by, a materially different process than that claimed, or - the claimed process can result in, or be performed with, a materially different product than that claimed. Two products or two processes are “materially different” when they are independent or distinct from one another. Burden on the examiner to provide a reasonable example of a materially different product/process - Example need not be documented - If applicant convincingly traverses the restriction requirement, a viable alternative process or product is needed to maintain the restriction.
Not Obvious Variants Distinctness between related inventions requires that at least one invention would not have been obvious over the other (i.e., that the inventions are not obvious variants). Criterion can be met by stating, where appropriate, that there is no indication on the record that the inventions would have been obvious over each other within the meaning of 35 U.S.C Notify applicant via FP 8.22 that if applicant traverses the restriction requirement on the grounds that the inventions are not patentably distinct and one invention is unpatentable over the prior art, such traversal may be used in a rejection of the other invention under 35 U.S.C. 103(a).
Distinctness Between Related Products or Between Related Processes Follow this analysis when related products or related processes are NOT related as either Combination/subcombination Subcombinations usable together Apparatus and product made Intermediate-final product.
Distinctness Between Related Products or Between Related Processes (cont’d) Test: the inventions as claimed do not overlap in scope, i.e., are mutually exclusive; AND the inventions as claimed are not obvious variants; AND the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect. MPEP (j); FP
USPTO Restriction Training Materials and Chapter 800 Revisions Part III - Writing a Restriction Peter Paras SPE Art Units 1635 and 1639
Basic Restriction Guidelines Every restriction requirement has two criteria: The inventions, as claimed, must be independent or distinct and There would be serious burden on the examiner if restriction were not required. MPEP
Statement of Requirement for Restriction Set forth the groups of inventions from which the applicant is required to elect Set forth the reasons for insisting upon restriction independence/distinctness AND burden. Advise applicants about the reply to the requirement and means for traversal. FP 8.22 should be included in all restriction requirements FP should be included in any requirement for restriction between a product and a process of making or process of using the product.
Defining Groups of Inventions Review the specification (including claims) to identify the invention(s) disclosed therein. Sort the claims into groups; each group is directed to a single invention. A single claim should ordinarily be placed in only one group. - An exception may be possible where the claim recites inventions listed in the alternative. Claims that appear to belong to more than one group should be ordinarily be considered either generic claims or linking claims and treated in accordance with FP 8.01, 8.02, or 8.12 as appropriate. Each claim must be accounted for, either in a group, or as a generic or linking claim.
Practice Tips – Defining Groups The same invention cannot be placed in two groups. Dependent claims cannot be grouped separate from the group that contains their independent or intervening claims. Claims that refer to, but are not dependent on, other claims may be placed in a separate group from the referenced claims. Review the active steps, not just the preamble, when grouping method claims. Product by process claims are a type of “product” claim that should usually be grouped with the product, not the process. Product by process claims are a type of “product” claim that should usually be grouped with the product, not the process.
Reasons for Insisting Upon Restriction Independence/distinctness Provide a clear and detailed record of the restriction requirement, explaining how each invention is either independent or distinct from each other invention. Establish reasons why a serious burden on the examiner would exist if the restriction were not required. Each restriction requirement must conclude with one of form paragraphs MPEP 814, 817, and 818
Importance of a Clear Record A clear and detailed record of the restriction requirement provides a clear demarcation between restricted inventions. - Applicants have adequate notice regarding the inventions to be elected from. - If applicants seek relief from a restriction requirement by petition, a clear record simplifies the petition decision process. - An examiner/court can determine whether inventions claimed in a continuing application are consonant with the restriction requirement and therefore subject to the prohibition against double patenting rejections under 35 U.S.C Geneva Pharms. Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1381, 68 USPQ2d 1865, 1871 (Fed. Cir. 2003).
Request for Oral Election Examiners are encouraged to contact the attorney or agent of record by telephone to present the restriction requirement and request an oral election with or without traverse. If the restriction requirement is complex or the examiner knows from past experience that a telephone election will not be made, the examiner may proceed directly to a written restriction requirement. When an oral election is made, the next Office action will include a written record of the restriction requirement and a complete action on the merits of the elected invention. MPEP 810 and Form paragraph 8.23 should be used.
Request for Oral Election (cont’d) When an attorney or agent of record objects to making an oral election, the next Office action will be a written restriction requirement; no action on the merits is made. Form paragraph should be used. Written restriction requirements made without an action on the merits are given a 1-month (not less than 30 days) shortened statutory period for response. MPEP
Timing of Restriction Requirements 37 C.F.R (a) Requirement for restriction states: “…Such requirement will normally be made before any action on the merits; however, it may be made at any time before final action.” Before final rejection, a second restriction requirement may be made even if there was a prior requirement with which applicant complied. MPEP
Applicant’s Response Applicant must elect in response to the restriction even if the restriction is traversed. MPEP (b) If applicant does not distinctly and specifically point out supposed errors in the restriction, the election should be treated as an election without traverse. MPEP (a) and (c) If applicant’s response states that the different grouped inventions are not patentably distinct, the restriction requirement should be withdrawn.
Applicant’s Response – Election with Traverse Applicant must distinctly and specifically point out the supposed errors in the restriction requirement. Reconsider the restriction requirement. If proper and the claims are not allowable, respond to the points raised in the traversal, repeat the restriction requirement and make the requirement final in the next Office action. See FP Although the requirement for restriction is being made final, if the action is a non-final action it may be signed by someone with at least temporary partial signatory authority. MPEP Applicant has the right to petition a final restriction requirement. If improper, clearly state on the record that the requirement is withdrawn and examine all claims.
Applicant’s Response – Election with Traverse (cont’d) Reconsider the restriction requirement (cont’d). If proper when made, and the application is in condition for allowance except for the presence of claims to the non-elected invention, determine whether rejoinder pursuant to MPEP is appropriate. If so, rejoin nonelected invention, withdraw the restriction requirement, and examine the rejoined claims on the merits. If not, contact the applicant for permission to cancel the claims. Use FP 8.03 to set a response period of one month or 30 days. If applicant does not respond within the time period, cancel the claims to the non-elected invention by Examiner’s Amendment. MPEP
Applicant’s Response – Election without Traverse Applicant cannot petition the restriction requirement under 37 CFR If all claims to elected invention are allowable, claims to non-elected inventions (including non-elected species) may be cancelled by Examiner’s Amendment unless all claims to the non-elected inventions depend from or otherwise include all the limitations of an allowable claim (see MPEP for rejoinder). See MPEP and FP (without traverse) or (without traverse based on incomplete reply).
Switching Inventions after Election Applicant is generally not permitted to switch to claiming a different invention after a first action on the merits. Cancellation of all claims drawn to an elected invention and presentation of claims drawn to a non-elected invention is non-responsive. An RCE may not be used as a matter of right to switch to an invention which is independent or distinct from the invention examined previously. MPEP 819 and MPEP 819 and
Limits on Constructive Election Claims added after an Office action should be withdrawn as non-elected by original presentation ONLY IF those claims are drawn to an invention that is independent or distinct from the invention examined on the merits. Where applicant presents claims that could not have been restricted from the claims drawn to other elected invention had they been presented earlier, the newly added claims (if entered) must be examined on the merits. It is improper to hold claims constructively nonelected where a provisional election of a single species was made in accordance with MPEP § and applicant amends the claims such that the elected species is cancelled.
USPTO Restriction Training Materials and Chapter 800 Revisions Part IV - Linking Claims, Double Patenting, and Rejoinder Deborah Reynolds tQAS 1600
37 C.F.R (a) “Two or more independent and distinct inventions may not be claimed in one national application, except that “Two or more independent and distinct inventions may not be claimed in one national application, except that more than one species of an invention, not to exceed a reasonable number, may be specifically claimed in different claims in one national application, provided the application also includes an allowable claim generic to all the claimed species and all the claims to species in excess of one are written in dependent form (§ 1.75) or otherwise include all the limitations of the generic claim.”
Linking Claims Definition: A linking claim is a claim which, if allowable, would prevent restriction between two or more otherwise properly divisible (restrictable) inventions. MPEP 809 and Linking claims and linked inventions are usually either a product claim linking properly divisible product inventions, or a process claim linking properly divisible process inventions. - Genus claims linking species claims - Subcombination claim linking plural combinations that require the subcombination. If a linked invention is elected, the linking claims are examined with the elected invention.
Allowable Linking Claims When a linking claim is allowable, a restriction requirement between the inventions it links cannot be maintained. The record must clearly state that the restriction requirement has been withdrawn, even if claims to non-elected linked inventions have been canceled. Any claim(s) depending from or otherwise requiring all the limitations of the allowable linking claim(s) will be rejoined and fully examined for patentability The Office must provide Applicant with an opportunity to reinstate canceled claims when a restriction requirement is withdrawn based on the allowability of the linking claim.
Practical Tips on Linking Claims When requiring a restriction involving linking claims per MPEP , the linking claims should not appear in the list of claims for any particular group. The linking claims appear only in FP When requiring a provisional election of species involving genus-type linking claims per MPEP , the species are listed and the linking claims appear as the generic claims in FP 8.01.
Ramifications of Improper Restriction Requirements Inventions that were subject to a restriction requirement and thus held to be patentably distinct can not later be rejected under double patenting over one another unless the restriction requirement is withdrawn. Patent rights may be unjustly extended. MPEP
Ramifications of Improper Restriction Requirements (cont’d) Obviousness-type double patenting rejections may be overcome by filing a terminal disclaimer tying together ownership of inventions that are not patentably distinct. An improper restriction requirement may bar a double patenting rejection in a divisional or continuation application. This could result in a situation where two patentably indistinct inventions are owned by different parties.
Ramifications of Improper Restriction Requirements (cont’d) A final restriction requirement may be petitioned if the applicant requested reconsideration of the requirement. The petition may be filed after final action or allowance of claims to the elected invention, but must be filed not later than appeal. If the examiner is reversed in the petition decision, the examiner must examine an invention(s) previously withdrawn from consideration. This creates additional work for the examiner and may delay the patent and increase the cost of prosecution for applicants.
Relationship of Restriction to Double Patenting Rejections Generally, a double patenting rejection is not permitted where the claimed subject matter is presented in a divisional application as a result of a restriction requirement made in a parent application under 35 U.S.C TC Director approval is needed for double patenting rejections between a parent application and a divisional or continuation application filed because of a requirement to restrict (including election of species). MPEP When examining a divisional or continuation application filed because of a restriction requirement, the examiner should determine whether the claims of the different applications or patents are consonant (consistent) with the restriction requirement made in the parent application. If the claimed invention is not the same as the invention which was held to be patentably distinct when the restriction requirement was made, a double patenting rejection may be appropriate.
Relationship of Restriction to Double Patenting Rejections (cont’d) When a restriction requirement is withdrawn, 35 USC 121 no longer shields claims from double patenting considerations. Double patenting situations may arise where a restriction requirement was made subject to the non-allowance of linking claims, the linking claims were subsequently allowed and the restriction requirement was withdrawn.
Rejoinder When all claims directed to the elected invention are in condition for allowance, the nonelected invention(s) should be considered for rejoinder. Rejoinder is the process of withdrawing a restriction requirement between an allowable elected invention and a nonelected invention and examining the formerly nonelected invention on the merits. In order to be eligible for rejoinder, a claim to a nonelected invention must depend from or otherwise require all the limitations of an allowable claim. A claim that has been withdrawn from consideration and that does not require all the limitations of an allowable claim will not be rejoined.
Rejoinder (cont’d) Rejoinder between independent and distinct products, or independent and distinct processes, is appropriate when a generic claim, linking claim or subcombination claim is allowable and any previously withdrawn claim depends from or otherwise requires all the limitations thereof. MPEP (a) If nonelected claims which depended from or otherwise required all the limitations of an allowable claim were cancelled by applicant, the examiner should use FP 8.46, 8.47, or to inform applicant that such claims may be reinstated by applicant if submitted in an amendment.
Rejoinder (cont’d) Rejoined claims must be fully examined for patentability in accordance with 37 CFR 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. MPEP
Rejoinder (cont’d) The requirement for restriction between rejoined inventions must be withdrawn. Any claims presented in a continuation or divisional application that are anticipated by, or rendered obvious over, the claims of the parent application may be subject to a double patenting rejection if the restriction requirement has been withdrawn in the parent application. See MPEP and (a) for further information on rejoinder.
Rejoinder of Process Claims Requiring an Allowable Product Rejoinder may be appropriate when claims to an elected product are allowable and claims to a nonelected process of making and/or using the product depend from or otherwise require all limitations of the allowable product claim. If applicant cancels all claims to a nonelected process invention before rejoinder occurs, the examiner should not withdraw the restriction requirement. This will preserve the applicant’s rights under 35 USC 121. MPEP (b)
Rejoinder Example 1 Claim 1. (Original) A dielectric resonator circuit comprising: a dielectric resonator having a body formed of a dielectric material, said body having at least one slit defining a gap in the body. [Linking claim generic to species I and II] Claim 2. (Original) The dielectric resonator circuit of claim 1, wherein the gap is comprised of air. [Species I] Claim 3. (Withdrawn) The dielectric resonator circuit of claim 1, wherein the gap is filled with mixture of super- conductive material and ceramic material. [Species II] Claim 4. (Withdrawn) A dielectric resonator circuit comprising: a dielectric resonator having a body formed of a dielectric material, said body having first and second dielectric portions in contact with each other. [Species III]
Rejoinder Example 1 (cont’d) The examiner required an election of species I, II, or III. Species I was elected. Claims 1 and 2 are allowable. The examiner should withdraw the election of species requirement related to Species II and the invention defined by claim 3 should be rejoined with the invention of claim 1 since claim 1 is generic to Species I and II. Claim 4 remains as a non-elected species, and the examiner may cancel the claim without consulting applicant if the applicant elected species I without traverse (FP 8.07) OR give applicant one month to cancel claim 4 or take other appropriate action under 37 CFR if the applicant elected species I with traverse (FP 8.03).
Rejoinder Example 2 Claim 1. (Original) A multi-layered printed circuit board comprising: a plurality of dielectric layers arranged in a laminated structure; a ground layer disposed on a bottom surface of said laminated structure; and a chip capacitor and a signal conductor disposed on a top surface of said laminated structure. Claim 2. (Original) The multi-layered printed circuit board according to claim 1, wherein said laminated structure has a plurality of holes therethrough to connect said chip capacitor and said ground layer.
Rejoinder Example 2 (cont’d) Claim 3. (Original) A method of making a multi-layered printed circuit board comprising the steps of: providing a plurality of dielectric layers; press-fitting said plurality of dielectric layers under a pressure of pounds per square inch; and firing said plurality of dielectric layers at a temperature of approximately 870 degree Celsius. The examiner required restriction between Invention I (claims 1 and 2) and Invention 2 (claim 3). In response, Applicant elected Invention I without traverse and amended claim 3 to the following:
Rejoinder Example 2 (cont’d) Claim 3. (Amended) A method of making a multi- layered printed circuit board according to claim 1 comprising the steps of: providing a plurality of dielectric layers; press-fitting said plurality of dielectric layers under a pressure of pounds per square inch; and firing said plurality of dielectric layers at a temperature of approximately 870 degree Celsius. After claim 1 is determined to be allowable, the examiner should withdraw the restriction requirement and claim 3 should be rejoined with claim 1 (see MPEP (b), FP 8.42, 8.43)).