Every requirement to restrict has two aspects: (A) the reasons (as distinguished from the mere statement of conclusion) why each invention as claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious burden on the examiner if restriction is not required, i.e., the reasons for insisting upon restriction there between as set forth in the following sections.
808.01 Reasons for Holding of Independence or Distinctness
MPEP SECTION SUMMARY
The particular reasons relied on by the examiner for holding that the inventions as claimed are either independent or distinct should be concisely stated. A mere statement of conclusion is inadequate. The reasons upon which the conclusion is based should be given.
808.01(a) Species
MPEP SECTION SUMMARY
Where there is no disclosure of a relationship between species, they are independent inventions. A requirement for restriction is permissible if there is a patentable difference between the species as claimed and there would be a serious burden on the examiner if restriction is not required.
Election of species should not be required between claimed species that are considered clearly unpatentable (obvious) over each other.
Election of species may be required prior to a search on the merits (A) in applications containing claims to a plurality of species with no generic claims, and (B) in applications containing both species claims and generic or Markush claims.
808.02 Establishing Burden
MPEP SECTION SUMMARY
Where, as disclosed in the application, the several inventions claimed are related, and such related inventions are not patentably distinct as claimed, restriction is never proper. If applicant voluntarily files claims to such related inventions in different applications, double patenting may be held.
