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803 Restriction - When Proper

MPEP SECTION SUMMARY The claims of an application may properly be required to be restricted to one of two or more claimed inventions only if they are able to support separate patents and they are either independent or distinct.

I. CRITERIA FOR RESTRICTION BETWEEN PATENTABLY DISTINCT INVENTIONS

There are two criteria for a proper requirement for restriction between patentably distinct inventions:

• (A) The inventions must be independent or distinct as claimed; and
• (B) There would be a serious burden on the examiner if restriction is not required.

II. GUIDELINES

Examiners must provide reasons and/or examples to support conclusions, but need not cite documents to support the restriction requirement in most cases.

Where plural inventions are capable of being viewed as related in two ways, both applicable criteria for distinctness must be demonstrated to support a restriction requirement.

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 SECTION SUMMARY A Markush claim recites alternatives in a format such as “selected from the group consisting of A, B and C.” A Markush claim may include independent and distinct inventions. This is true where two or more of the members are so unrelated and diverse that a prior art reference anticipating the claim with respect to one of the members would not render the claim obvious under 35 U.S.C. 103 with respect to the other member(s). In applications containing a Markush claim that encompasses at least two independent or distinct inventions, the examiner may require a provisional election of a single species prior to examination on the merits.

I. MARKUSH CLAIMS

A “Markush” claim recites a list of alternatively useable members. 

• When examining a Markush claim, the examiner may generally choose to require a provisional election of species from among patentably indistinct species or patentably indistinct groups of species.
• The applicant’s election serves as a starting point for the search and examination of the claim.

A rejection on the basis of an improper Markush grouping should be made in an Office action on the merits.

• In certain circumstances, both a provisional election of species requirement and an improper Markush grouping rejection may apply to the same claim.

II. PROPER MARKUSH GROUPING

A Markush grouping is proper if:

• (1) the members of the Markush group share a “single structural similarity,” and
• (2) the members share a common use. 

Where a Markush grouping describes part of a combination or process, the members following “selected from the group consisting of” (or a similar introductory phrase) must be substitutable, one for the other, with the expectation that the same intended result would be achieved. 

Where a Markush grouping describes part of a chemical compound, regardless of whether the claim is limited to a compound per se or the compound is recited as part of a combination or process, the members following “selected from the group consisting of” (or similar introductory phrase) need not share a community of properties themselves; the propriety of the grouping is determined by a consideration of the compound as a whole.

In accordance with the principles of compact prosecution, if the examiner determines that one or more claims appear to include an improper Markush grouping, the examiner should require the applicant to elect a species.

• Note that if a written provisional election of species requirement must be made separate from the first Office action on the merits, it should not include a rejection on the basis of an improper Markush grouping.
• Any appropriate improper Markush grouping rejection should be made in an Office action on the merits.

III. ELECTION OF SPECIES PRACTICE FOR MARKUSH CLAIMS

A. Overview

Markush claims recite a plurality of alternatively usable substances or members.

• In most cases, a recitation by enumeration is used because there is no appropriate or true generic language.
• A Markush claim may include independent and distinct inventions.
• This is true where two or more of the members are so unrelated and diverse that a prior art reference anticipating the claim with respect to one of the members would not render the claim obvious with respect to the other member(s).

In applications containing a Markush claim that encompasses at least two independent or distinct inventions, the examiner may require a provisional election of a single species (or grouping of patentably indistinct species) prior to examination on the merits, with one exception.

If the members of a proper 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 may be directed to independent and distinct inventions.

• In such a case, the examiner will not require provisional election of a single species. 

B. Provisional Election of Species

If a claim that includes a Markush grouping reads on two or more patentably distinct inventions, a provisional election of species requirement may be made at the examiner’s discretion.

• When making such a requirement, the examiner will require the applicant to elect a species or group of patentably indistinct species for initial search and examination.
• The examiner should not require provisional election between species that are not patentably distinct, or when the Markush group is proper and there would be no serious burden if the species were examined together.
• The examiner should not invite the applicant to elect any group of species that would clearly be rejectable either as an improper Markush grouping or under 35 U.S.C. 112(a) if presented in a separate claim.

C. Initial Examination of Elected Species

1. Rejection of Claims to Elected Species

Examination on the merits begins after the applicant’s election.

If the elected species or group of patentably indistinct species is anticipated by or obvious over the prior art, an appropriate art-based rejection of any claim that reads on the elected species or group of patentably indistinct species should be made.

Non-prior art rejections that apply to the elected species or group of patentably indistinct species should also be made.

If the election was made with traverse, it should be treated in accordance with MPEP § 821.01.

2. Elected Species in Proper Markush Grouping Allowable over the Prior Art

If the elected species or group of patentably indistinct species is not anticipated by or obvious over the prior art, the examiner should extend the search and examination to a non-elected species or group of species that falls within the scope of a proper Markush grouping that includes the elected species.

The search and examination should be continued until either:

• (1) prior art is found that anticipates or renders obvious a species that falls within the scope of a proper Markush grouping that includes the elected species, or
• (2) it is determined that no prior art rejection of any species that falls within the scope of a proper Markush grouping that includes the elected species can be made.

The examiner need not extend the search beyond a proper Markush grouping.

D. Final Rejection; Finality of Election Requirement

An Office action may be made final if the requirements of MPEP §§ 706.07 - 706.07(b) are met.

If a claim in a first application recites a proper Markush grouping that encompasses patentably distinct inventions, an examiner who has required a provisional election of species need not continue to search the claim if the claim is rejected over prior art in a proper final rejection.

• That is, in this circumstance, the applicant’s election loses its provisional status and is given full effect under 35 U.S.C. 121.

Furthermore, if an applicant files a second application that is a divisional application claiming benefit under 35 U.S.C. 120 of the first application, the 35 U.S.C. 121 shield may be applicable.

• So long as the consonance requirement is met, a claim in the divisional application to a previously non-elected and unexamined embodiment may not be rejected on the ground of non-statutory double patenting over an embodiment examined in the first application.
• An amendment canceling the rejected species received after final under 37 CFR 1.116 may typically be denied entry on the basis that it would require further consideration and/or search.
• If the applicant’s provisional election was made with traverse and the requirement has been made final, the applicant may file a petition for review under 37 CFR 1.144. 

 

MPEP SECTION SUMMARY “Restriction” under 37 CFR 1.129(b) applies to both restriction requirements under 37 CFR 1.142 and election of species requirements. 37 CFR 1.129(b)(1) provides for examination of more than one independent and distinct invention in certain applications pending for 3 years or longer as of June 8, 1995, taking into account any reference to any earlier application under 35 U.S.C. 120, 121, or 365(c).

 

Applicant will not be permitted to have such additional invention(s) examined in an application if:

• (A) the requirement was made in the application or in an earlier application relied on under 35 U.S.C. 120, 121, or 365(c) prior to April 8, 1995;
• (B) no restriction requirement was made with respect to the invention(s) in the application or earlier application prior to April 8, 1995, due to actions by the applicant; or
• (C) the required fee for examination of each additional invention was not paid.

Only if one of these exceptions applies is a normal restriction requirement appropriate and telephone restriction practice may be used.

Examples of what constitute “actions by the applicant” in 37 CFR 1.129(b)(1) are:

• (A) applicant abandoned the application and continued to refile the application such that no Office action could be issued in the application,
• (B) applicant requested suspension of prosecution such that no Office action could be issued in the application,
• (C) applicant disclosed a plurality of independent and distinct inventions in the present or parent application, but delayed presenting claims to more than one of the disclosed independent and distinct inventions in the present or parent application such that no restriction requirement could be made prior to April 8, 1995, and
• (D) applicant combined several applications, each of which claimed a different independent and distinct invention, into one large “continuing” application, but delayed filing the continuing application first claiming more than one independent and distinct invention such that no restriction requirement could be made prior to April 8, 1995.

 

MPEP SECTION SUMMARY Whenever divided inventions in a transitional application are rejoined because a linking claim is allowable and applicant paid the fee for the additional invention, applicant should be notified that he or she may request a refund of the fee paid for that additional invention.

 

803.03(b)   Transitional Application — Generic Claim Allowable

MPEP SECTION SUMMARY Whenever claims drawn to an additional species in a transitional application for which applicant paid the fee are no longer withdrawn from consideration because they are fully embraced by an allowable generic claim, applicant should be notified that he or she may request a refund of the fee paid for that additional species.

 

MPEP SECTION SUMMARY Nucleotide sequences that encode different proteins are structurally distinct chemical compounds. These sequences are thus deemed to normally constitute independent and distinct inventions within the meaning of 35 U.S.C. 121. Absent evidence to the contrary, each such nucleotide sequence is presumed to represent an independent and distinct invention, subject to a restriction requirement.

Claims to polynucleotide molecules will be considered for independence, relatedness, distinction and burden in the same manner as claims to any other type of molecule.

 

803.05   Reissue Application Practice  

MPEP SECTION SUMMARY Restriction practice relating to reissue applications is governed by 37 CFR 1.176(b) which specifies that restriction may only be required between the invention(s) of the original patent claims and previously unclaimed invention(s) set forth in new claims added in the reissue application. The claims of the original patent must not be restricted as being directed to two or more independent and distinct inventions and must be examined together.

 

 

Where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a divisional application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, the non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application.

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