This section covers the basis for restrictions including definitions for the following; independent inventions, distinct inventions, related inventions, and restriction practice.

It also discusses a few details on divisional applications. If two or more independent and distinct inventions are claimed in one application, the original application may need to be restricted to one of the inventions. If one of the inventions is made the subject of a divisional application and it complies with the requirements for divisional applications, it will be entitled to the benefit of the filing date of the original application.

Two or more independent and distinct inventions may not be claimed in one national application. If two or more independent and distinct inventions are claimed in a single application, the examiner in his or her Office action shall require the applicant in his or her response to elect the invention to which the claim(s) shall be restricted.

• Review Ed9 10.2019: 802

This section covers details on when restrictions are proper. It includes a discussion on prosecution after final rejections and restriction along with actions by the applicant.

This section also covers nucleotide sequencing. The rules are different for patent applications involving nucleotide sequencing as nucleotide sequences that encode different proteins are structurally distinct chemical compounds.

• Review Ed9 10.2019: 803

This section provides specific details on double patenting. Essentially, double patenting seeks to prevent the unjustified extension of patent rights beyond the term of a patent. This section covers when double patenting is possible along with the requirements of double patenting rejections. Obviousness type nonstatutory double patenting is also discussed including two-way obviousness.

This section also discusses disclaimers which may be used to disclaim or dedicate part of a patent term. The topics discussed include terms, terminal disclaimers, statutory double patenting rejections, and nonstatutory rejections.

• Review Ed9 10.2019: 804

No patent can be held void for the improper joinder of inventions claimed therein.

• Review Ed9 10.2019: 805

This section covers the determination of distinctness or independence. Where inventions are independent, a restriction to one per patent is usually proper. If the inventions are related as disclosed but are not distinct as claimed, a restriction is never proper.

This section also discusses the election of a species, intermediates, subcombinations, and showing a distinction between a process and an apparatus. In addition, the topic of traversing is covered. Essentially, when the restriction or rejection is thought to be wrong and is objected to, the applicant must attempt to “traverse” the rejection.

The specifics of double patenting rejections and terminal disclaimers are also covered. For instance, a double patenting rejection is allowable if the inventors are not the same but the patent or application has the same owners. Lastly, the topic of species is covered in more detail.

• Review Ed9 10.2019: 806

This section covers the reasons for insisting restriction and the two aspects for a requirement to restrict.

• Review Ed9 10.2019: 808

This section covers claims linking distinct inventions. Linking claims act to prevent restriction between inventions that can otherwise be shown to be divisible.

• Review Ed9 10.2019: 809

If an action is given on the merits, it must be given on all the claims. Usually, the action on the merits will be denied until after the requirement for restriction is complied with or withdrawn.

If the requirement is repeated and made final, the examiner will at the same time act on the claims to the invention elected. A one-month shortened statutory period will be set for reply when a restriction requirement is made without action on the merits.

• Review Ed9 10.2019: 810

Restriction is proper at any stage of prosecution up to the final action, a second requirement may be made when it becomes proper, even though there was a prior requirement with which the applicant complied.

• Review Ed9 10.2019: 811

If, on examination, the examiner finds the claims to an invention elected without traverse to be allowable and no nonelected invention is eligible for rejoinder, the letter should be attached to the Notice of Allowability form and should include cancellation of the nonelected claims, a statement that the prosecution is closed, and that a notice of allowance will be sent in due course. Correction of formal matters in the above-noted situation which cannot be handled by a telephone call and thus requires action by the applicant should be handled under the Ex parte Quayle practice.

• Review Ed9 10.2019: 812

If an applicant receives a non-final Office action containing restriction requirements between two groups of claims the applicant's reply should distinctly point out the detailed reasons why the applicant believes the examiner errored in requiring a restriction between the two groups and additionally state that the “applicant therefore respectively traverses the restriction requirement and elects Group 2".

An applicant cannot as a matter of right switch inventions by filing an RCE. The examiner may require an applicant to elect a single species upon later presentation of claims to more than one patentably distinct species.

• Review Ed9 10.2019: 818

This section covers the treatment of claims withdrawn from consideration. It also discusses the possibility for rejoining the claims.

• Review Ed9 10.2019: 821