821 Treatment of Claims Held to be Drawn to Nonelected Inventions
MPEP SECTION SUMMARY
 The examiner should clearly set forth in the Office action the reasons why the claims withdrawn from consideration are not readable on the elected invention. Applicant may traverse the requirement. If a final requirement for restriction is made by the examiner, applicant may file a petition under 37 CFR 1.144 for review of the restriction requirement if the applicant made a timely traversal.
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821.01 After Election With Traverse
MPEP SECTION SUMMARY
Where the initial requirement is traversed, the examiner should reconsider it. If, upon reconsideration, the examiner is still of the opinion that restriction is proper, the examiner should maintain the restriction requirement and make it final in the next Office action. In doing so, the examiner should reply to the reasons or arguments advanced by applicant in the traverse. |
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821.02 After Election Without Traverse
MPEP SECTION SUMMARY
Where the initial requirement is not traversed (either expressly or by virtue of an incomplete reply), the examiner should take appropriate action on the elected claims including determining whether the restriction requirement should be withdrawn in whole or in part. |
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821.03 Claims for Different Invention Added After an Office Action
MPEP SECTION SUMMARY
Claims added by amendment following action by the examiner and drawn to an invention other than the one previously claimed, should be treated as indicated in 37 CFR 1.145. |
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If, after an office action on an application, the applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant will be required to restrict the claims to the invention previously claimed if the amendment is entered, subject to reconsideration and review as provided in §§ 1.143 and 1.144
MPEP SECTION SUMMARY
The propriety of a restriction requirement should be reconsidered when all the claims directed to the elected invention are in condition for allowance, and the nonelected invention(s) should be considered for rejoinder. Rejoinder involves withdrawal of a restriction requirement between an allowable elected invention and a nonelected invention and examination of 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 withdrawn claim that does not require all the limitations of an allowable claim will not be rejoined. Furthermore, where restriction was required between a product and a process of making and/or using the product, and the product invention was elected and subsequently found allowable, all claims to a nonelected process invention must depend from or otherwise require all the limitations of an allowable claim for the claims directed to that process invention to be eligible for rejoinder. |
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821.04(a) Rejoinder Between Product Inventions; Rejoinder Between Process Inventions
MPEP SECTION SUMMARY
Where restriction was required between independent or distinct products, or between independent or distinct processes, and all claims directed to an elected invention are allowable, any restriction requirement between the elected invention and any nonelected invention that depends from or otherwise requires all the limitations of an allowable claim should be withdrawn. For example, a requirement for restriction should be withdrawn 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. |
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821.04(b) Rejoinder of Process Requiring an Allowable Product
MPEP SECTION SUMMARY
This section discusses the rejoinder of process requiring an allowable product.
Where claims directed to a product and to a process of making and/or using the product are presented in the same application, applicant may be called upon under 35 U.S.C. 121 to elect claims to either the product or a process. The claims to the nonelected invention will be withdrawn from further consideration under 37 CFR 1.142.
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However, if applicant elects a claim(s) directed to a product which is subsequently found allowable, withdrawn process claims which depend from or otherwise require all the limitations of an allowable product claim will be considered for rejoinder.
- All claims directed to a nonelected process invention must depend from or otherwise require all the limitations of an allowable product claim for that process invention to be rejoined.
- Upon rejoinder of claims directed to a previously nonelected process invention, the restriction requirement between the elected product and rejoined process(es) will be withdrawn.
If applicant cancels all the claims directed to a nonelected process invention before rejoinder occurs, the examiner should not withdraw the restriction requirement.
When all claims to the elected product are in condition for allowance, all process claims eligible for rejoinder must be considered for patentability.
» 822 Claims to Inventions That Are Not Patentably Distinct in Plural Applications of Same Applicant or Assignee
