To Restrict or Not To Restrict That Is The Question? Divided We Stand! Or Undivided We Stand!! By Joseph K. McKane SPE, Art Unit 1626

Restriction Common Goals Quality Examination Consistent Practice Timely Processing There is a great tool to accomplish these where claims have multiple distinct inventions and are burdensome to examine! Can you guess what it is? Hint: The answer is on the top of the slide.

Restriction Brief Background 1952 Patent Act: 35 USC 121 Discretionary authority - Director “may” require restriction Nonelected inventions must be patentably distinct from the elected invention (37 CFR 1.141) Examination of an application to one of a plurality of patentably distinct inventions that would impose a serious burden on the examiner (MPEP 803) In re Joyce, 1958 C.D. 2 (1957) In re Herrick, 1958 C.D. 1 (1957)

Restriction 35 USC 121 and species Patentably Distinct Species – when there are patentably distinct species, there can be an “election of species” to which the application would be limited in the absence of an allowable generic claim (MPEP (a)-(i)); (37 CFR 1.141) A reasonable number of species may be claimed in one application (37 CFR 1.141) When inventions are both (i) species under a claimed genus and (ii) related, then restriction must be determined by the practice applicable to election of species and the practice applicable to other types of restrictions such as those presented in MPEP (i)

Restriction (Markush Practice) Markush Claim - Eugene A. Markush Ex parte Markush, 1925 C.D. 126 Claimed a definition of a genus having a “material selected from the group consisting of aniline, homologues of aniline and halogen substitute of aniline Eventually the Markush-type claim turned into claiming a type of core molecule which may include a megamolecule with various “R” groups, variables and functional groups attached to the core or molecule

Restriction (Markush Practice) The Patent Office must examine what applicants regard as their invention. In re Haas, 486 F.2d 1053, 179 USPQ 623 (CCPA 1973) In re Haas, 580 F.2d 461, 198 USPQ 334 (CCPA 1978) In re Weber, 580 F.2d 455, 198 USPQ 328 (CCPA 1978)

Restriction (Markush Practice) Since the decisions of In re Weber (CCPA 1978) and In re Haas (CCPA 1978): It is improper for the Patent Office to refuse to examine that which applicants regard as their invention, unless the subject matter in a claim lacks unity of invention as defined by: In re Harnisch, 631 F.2d 716, 206 USPQ 300 (CCPA 1980) Ex parte Hozumi, 3 USPQ 2d 1059 (BPAI 1984)

Restriction (Markush Practice) Markush Language – Ex. “selected from the group consisting of…” or “any of A, B, or C”. Apply In re Harnisch test for “unity of invention” Common utility Common structural feature disclosed to be essential to the common utility

Restriction (Markush Practice) Broadly, unity of invention exists where compounds included within a Markush group (1) share a common utility, and (2) share a substantial structural feature disclosed as being essential to that utility.

Restriction (Markush Practice) Markush practice of MPEP 803 applies where unity of invention exists under the Harnisch test Non-markush restriction practice applies where unity of invention does not exist under the Harnisch test

Restriction (Markush Practice) If the members of the Markush group are sufficiently few in number or so closely related that a search and examination of the entire claim can be made without serious burden, the examiner must examine all the members of the Markush group in the claim on the merits, even though they are directed to independent and distinct inventions.

Harnisch Lines Lack of Unity Each slice represents different inventive embodiments Within each slice there are structurally similar groups which passed the Harnisch test

Product/Process Rejoinder MPEP Proper restriction between product and process claims Applies only where product claims are elected Requires allowable product claim Applies only to process claims that depend from or include all the limitations of the allowable product claim

Product/Process Rejoinder If an application discloses both product and process(es) of making and/or using, but claims the product only and a product claim is allowed, process claims may be rejoined prior to final rejection. After final rejection or allowance, amendments will be governed either by 37 CFR or 1.312, respectively.

Product/Process Rejoinder Rejoinder by the Office is sua sponte Less than all pending process claims may be rejoined where less than all process claims depend from or otherwise include all the limitations of the allowable product Obviousness-type double patenting may be applied where product and process claims are voluntarily filed in separate applications

Take Home Message - Restriction Technology Center 1600 is striving to have 1) quality examination, 2) a consistent practice and 3) timely processing. Every examiner in the Technology Center will be receiving restriction practice training during Fiscal Year 04 to achieve the above goals.

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