Chapter    800  Restriction in Applications Filed Under 35 U.S.C. 111;
Double Patenting
---SECTION---801 Introduction

This chapter is limited to a discussion of the subject of restriction
and double patenting under Title 35 of the United States Code and Title
37 of the Code of Federal Regulations as it relates to national
applications filed under  35 U.S.C. 111(a). The discussion of unity of
invention under the Patent Cooperation Treaty Articles and Rules as it
is applied as an International Searching Authority, International
Preliminary Examining Authority, and in applications entering the
National Stage under  35 U.S.C. 371 as a Designated or Elected Office in
the Patent and Trademark Office is covered in Chapter 1800.

---SECTION---802 Basis for Practice in Statute and Rules

The basis for restriction and double patenting practices is found in the
following statute and rules:

35 U.S.C. 121 Divisional applications.

If two or more independent and distinct inventions are claimed in one
application, the Commissioner may require the application to be
restricted to one of the inventions. If the other invention is made the
subject of a divisional application which complies with the requirements
of section 120 of this title it shall be entitled to the benefit of the
filing date of the original application. A patent issuing on an
application with respect to which a requirement for restriction under
this section has been made, or on an application filed as a result of
such a requirement shall not be used as a reference either in the Patent
and Trademark Office or in the courts against a divisional application
or against the original application or any patent issued on either of
them, if the divisional application is filed before the issuance of the
patent on the other application. If a divisional application is directed
solely to subject matter described and claimed in the original
application as filed, the Commissioner may dispense with signing and
execution by the inventor. The validity of a patent shall not be
questioned for failure of the Commissioner to require the application to
be restricted to one invention.

37 CFR 1.141 Different inventions in one application.

(a) Two or more independent and distinct inventions may not be claimed
in one national application, except that more than one species of an
invention, not to exceed a reasonable number, may be specifically
claimed in different claims in one national application, provided that
application also includes an allowable claim generic to all the claimed
species and all the claims to species in excess of one are written in
dependent form (Section  1.75) or otherwise include all the limitations
of the generic claim.

(b) Where claims to all three categories, product, process of making and
process of use, are included in a national application, a three way
requirement for restriction can only be made where the process of making
is distinct from the product. If the process of making and the product
are not distinct, the process of using may be joined with the claims
directed to the product and the process of making the product even
though a showing of distinctness between the product and process of
using the product can be made.

37 CFR 1.142 Requirement for restriction.

(a) If two or more independent and distinct inventions are claimed in a
single application, the examiner in his action shall require the
applicant in his response to that action to elect that invention to
which his claim shall be restricted, this official action being called a
requirement for restriction (also known as a requirement for division).
If the distinctness and independence of the inventions be clear, such
requirement will be made before any action on the merits; however, it
may be made at any time before final action in the case, at the
discretion of the examiner.

(b) Claims to the invention or inventions not elected, if not cancelled,
are nevertheless withdrawn from further consideration by the examiner by
the election, subject however to reinstatement in the event the
requirement for restriction is withdrawn or overruled.

The pertinent Patent Cooperation Treaty (PCT) articles and rules are
cited and discussed in Chapter 1800. Sections 1850, 1875, and 1893.03(d)
should be consulted for discussions on unity of invention:

(A) before the International Searching Authority,

(B) before the International Preliminary Examining Authority, and

(C) in the National Stage under  35 U.S.C. 371.

---SECTION---802.01 Meaning of "Independent" and "Distinct"

35 U.S.C. 121 quoted in the preceding section states that the
Commissioner may require restriction if two or more "independent and
distinct" inventions are claimed in one application. In  37 CFR 1.141,
the statement is made that two or more "independent and distinct
inventions" may not be claimed in one application.

This raises the question of the subjects as between which the
Commissioner may require restriction. This, in turn, depends on the
construction of the expression "independent and distinct" inventions.

"Independent", of course, means not dependent. If  "distinct" means the
same thing, then its use in the statute and in the rule is redundant. If
"distinct" means something different, then the question arises as to
what the difference in meaning between these two words may be. The
hearings before the committees of Congress considering the codification
of the patent laws indicate that  35 U.S.C. 121: "enacts as law existing
practice with respect to division, at the same time introducing a number
of changes."

The report on the hearings does not mention as a change that is
introduced, the subjects between which the Commissioner may properly
require division.

The term "independent" as already pointed out, means not dependent. A
large number of subjects between which, prior to the 1952 Act, division
had been proper, are dependent subjects, such as, for example,
combination and a subcombination thereof; as process and apparatus used
in the practice of the process; as composition and the process in which
the composition is used; as process and the product made by such
process, etc. If section 121 of the 1952 Act were intended to direct the
Commissioner never to approve division between dependent inventions, the
word "independent" would clearly have been used alone. If the
Commissioner has authority or discretion to restrict independent
inventions only, then restriction would be improper as between dependent
inventions, e.g., the examples used for purpose of illustration above.
Such was clearly not the intent of Congress. Nothing in the language of
the statute and nothing in the hearings of the committees indicate any
intent to change the substantive law on this subject. On the contrary,
joinder of the term "distinct" with the term "independent", indicates
lack of such intent. The law has long been established that dependent
inventions (frequently termed related inventions) such as used for
illustration above may be properly divided if they are, in
fact,"distinct" inventions, even though dependent.

INDEPENDENT

The term "independent" (i.e., not dependent) means that there is no
disclosed relationship between the two or more subjects disclosed, that
is, they are unconnected in design, operation, or effect, for example:
(1) species under a genus which species are not usable together as
disclosed; or (2) process and apparatus incapable of being used in
practicing the process.

DISTINCT

The term "distinct" means that two or more subjects as disclosed are
related, for example, as combination and part (subcombination) thereof,
process and apparatus for its practice, process and product made, etc.,
but are capable of separate manufacture, use, or sale as claimed, AND
ARE PATENTABLE (novel and unobvious) OVER EACH OTHER (though they may
each be unpatentable because of the prior art). It will be noted that in
this definition the term related is used as an alternative for dependent
in referring to subjects other than independent subjects.

It is further noted that the terms "independent" and "distinct" are used
in decisions with varying meanings.  All decisions should be read
carefully to determine the meaning intended.

---SECTION---802.02 Definition of Restriction

Restriction, a generic term, includes that practice of requiring an
election between distinct inventions, for example, election between
combination and subcombination inventions, and the practice relating to
an election between independent inventions, for example, and election of
species.

---SECTION---803 Restriction - When Proper 

Under the statute 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 (MPEP
Section  806.04 -  Section  806.04(i)) or distinct (MPEP Section  806.05
-  Section  806.05(i)).

If the search and examination of an entire application can be made
without serious burden, the examiner must examine it on the merits, even
though it includes claims to independent or distinct inventions.

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 (see MPEP Section  802.01, 
Section  806.04,  Section  808.01) or distinct as claimed (see MPEP
Section  806.05 -  Section  806.05(i)); and

(B) There must be a serious burden on the examiner if restriction is
required (see MPEP Section  803.02,  Section  806.04(a) -  Section 
806.04(i),  Section  808.01(a), and Section  808.02).

GUIDELINES

Examiners must provide reasons and/or examples to support conclusions,
but need not cite documents to support the 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 are obvious
over each other within the meaning of  35 U.S.C. 103, restriction should
not be required. In re Lee, 199 USPQ 108 (Comm'r Pat. 1978).

For purposes of the initial requirement, a serious burden on the
examiner may be prima facie shown if the examiner shows by appropriate
explanation either separate classification, separate status in the art,
or a different field of search as defined in MPEP Section  808.02.  That  
prima facie showing may be rebutted by appropriate showings or evidence
by the applicant. Insofar as the criteria for restriction practice
relating to Markush-type claims is concerned, the criteria is set forth
in MPEP Section  803.02.  Insofar as the criteria for restriction or
election practice relating to claims to genus-species, see MPEP Section 
806.04(a) -  Section  806.04(i) and Section  808.01(a).

---SECTION---803.01 Review by Examiner With at Least Partial Signatory
Authority

Since requirements for restriction under  35 U.S.C. 121 are
discretionary with the Commissioner, it becomes very important that the
practice under this section be carefully administered. Notwithstanding
the fact that this section of the statute apparently protects the
applicant against the dangers that previously might have resulted from
compliance with an improper requirement for restriction, IT STILL
REMAINS IMPORTANT FROM THE STANDPOINT OF THE PUBLIC INTEREST THAT NO
REQUIREMENTS BE MADE WHICH MIGHT RESULT IN THE ISSUANCE OF TWO PATENTS
FOR THE SAME INVENTION. Therefore, to guard against this possibility,
only an examiner with permanent or temporary full signatory authority
may sign final and non-final Office actions containing a final
requirement for restriction, except that an examiner with permanent or
temporary partial signatory authority may sign non-final Office actions
containing a final requirement for restriction.

---SECTION---803.02 Restriction - Markush Claims

PRACTICE RE MARKUSH-TYPE CLAIMS

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 claims on the
merits, even though they are directed to independent and distinct
inventions. In such a case, the examiner will not follow the procedure
described below and will not require restriction.

Since the decisions in In re Weber, 580 F.2d 455, 198 USPQ 328 (CCPA
1978) and   In re Haas, 580 F.2d 461, 198 USPQ 334 (CCPA 1978), it is
improper for the Office to refuse to examine that which applicants
regard as their invention, unless the subject matter in a claim lacks
unity of invention. In re Harnish, 631 F.2d 716, 206 USPQ 300 (CCPA
1980); and Ex parte Hozumi, 3 USPQ2d 1059 (Bd. Pat. App. & Int. 1984).
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.

This subsection deals with Markush-type generic claims which include 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-type claim can 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 claims of that nature, the examiner may require
a provisional election of a single species prior to examination on the
merits. The provisional election will be given effect in the event that
the Markush-type claim should be found not allowable.  Following
election, the Markush-type claim will be examined fully with respect to
the elected species and further to the extent necessary to determine
patentability. If the Markush-type claim is not allowable over the prior
art, examination will be limited to the Markush-type claim and claims to
the elected species, with claims drawn to species patentably distinct
from the elected species held withdrawn from further consideration.

As an example, in the case of an application with a Markush-type claim
drawn to the compound C-R, wherein R is a radical selected from the
group consisting of A, B, C, D, and E, the examiner may require a
provisional election of a single species, CA, CB, CC, CD, or CE. The
Markush-type claim would then be examined fully with respect to the
elected species and any species considered to be clearly unpatentable
over the elected species. If on examination the elected species is found
to be anticipated or rendered obvious by prior art, the Markush-type
claim and claims to the elected species shall be rejected, and claims to
the nonelected species would be held withdrawn from further
consideration. As in the prevailing practice, a second action on the
rejected claims would be made final.

On the other hand, should no prior art be found that anticipates or
renders obvious the elected species, the search of the Markush-type
claim will be extended. If prior art is then found that anticipates or
renders obvious the Markush-type claim with respect to a nonelected
species, the Markush-type claim shall be rejected	and claims to the
nonelected species held withdrawn from further consideration. The prior
art search, however, will not be extended unnecessarily to cover all
nonelected species. Should applicant, in response to this rejection of
the Markush-type claim, overcome the rejection, as by amending the
Markush-type claim to exclude the species anticipated or rendered
obvious by the prior art, the amended Markush-type claim will be
reexamined.  The prior art search will be extended to the extent
necessary to determine patentability of the Markush-type claim. In the
event prior art is found during the reexamination that anticipates or
renders obvious the amended Markush-type claim, the claim will be
rejected and the action made final. Amendments submitted after the final
rejection further restricting the scope of the claim may be denied
entry.

---SECTION---803.03 Restriction - Transitional Applications

PRACTICE RE TRANSITIONAL APPLICATION

37 CFR 1.129 Transitional procedures for limited examination after final
rejection and restriction practice. 

                  +++    

(b)(1) In an application, other than for reissue or a design patent,
that has been pending for at least three years as of June 8, 1995,
taking into account any reference made in the application to any earlier
filed application under  35 U.S.C. 120, 121 and 365(c), no requirement
for restriction or for the filing of divisional applications shall be
made or maintained in the application after June 8, 1995, except where:

(i) the requirement was first made in the application or any earlier
filed application under  35 U.S.C. 120, 121 and 365(c) prior to April 8,
1995:

(ii) the examiner has not made a requirement for restriction in the
present or parent application prior to April 8, 1995, due to actions by
the applicant; or 

(iii) the required fee for examination of each additional invention was
not paid. 

(2) If the application contains more than one independent and distinct
invention and a requirement for restriction or for the filing of
divisional applications cannot be made or maintained pursuant to this
paragraph, applicant will be so notified and given a time period to:

(i) elect the invention or inventions to be searched and examined, if no
election has been made prior to the notice, and pay the fee set forth in
1.17(s) for each independent and distinct invention claimed in the
application in excess of one which applicant elects;

(ii) confirm an election made prior to the notice and pay the fee set
forth in Section  1.17(s) for each independent and distinct invention
claimed in the application in addition to the one invention which
applicant previously elected; or

(iii) file a petition under this section traversing the requirement. If
the required petition is filed in a timely manner, the original time
period for electing and paying the fee set forth in Section  1.17(s)
will be deferred and any decision on the petition affirming or modifying
the requirement will set a new time period to elect the invention or
inventions to be searched and examined and to pay the fee set forth in
Section  1.17(s) for each independent and distinct invention claimed in
the application in excess of one which applicant elects. 

(3) The additional inventions for which the required fee has not been
paid will be withdrawn from consideration under Section  1.142(b). An
applicant who desires examination of an invention so withdrawn from
consideration can file a divisional application under  35 U.S.C. 121.

(c) The provisions of this section shall not be applicable to any
application filed after June 8, 1995.

"Restriction" under  37 CFR 1.129(b) applies to both restriction
requirements under  37 CFR 1.142 and election of species requirements
under  37 CFR 1.146.

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 under  37 CFR 1.103(a)
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.

In examples (A) and (B), the fact that the present or parent application
claiming independent and distinct inventions was on an examiner's docket
for at least 3 months prior to abandonment or suspension, or in examples
(C) and (D), the fact that the amendment claiming independent and
distinct inventions was first filed, or the continuing application first
claiming the additional independent and distinct inventions was on an
examiner's docket, at least 3 months prior to April 8, 1995, is prima
facie evidence that applicant's actions did not prevent the Office from
making a requirement for restriction with respect to those independent
and distinct inventions prior to April 8, 1995. Furthermore, an
extension of time under  37 CFR 1.136(a) does not constitute such
"actions by the applicant" under  37 CFR 1.129(b)(1).

NOTE: If an examiner believes an application falls under the exception
that no restriction could be made prior to April 8, 1995, due to
applicant's action, the application must be brought to the attention of
the Group Special Program Examiner for review.

Under  37 CFR 1.129(b)(2), if the application contains claims to more
than one independent and distinct invention, and no requirement for
restriction or for the filing of divisional applications can be made or
maintained, applicant will be notified and given a time period to:

(A) elect the invention or inventions to be searched and examined, if no
election has been made prior to the notice, and pay the fee set forth in 
37 CFR 1.17(s) for each independent and distinct invention claimed in
the application in excess of one which applicant elects,

(B) in situations where an election was made in reply to a requirement
for restriction that cannot be maintained, confirm the election made
prior to the notice and pay the fee set forth in  37 CFR 1.17(s) for
each independent and distinct invention claimed in the application in
addition to the one invention which applicant previously elected, or

(C) file a petition under  37 CFR 1.129(b)(2) traversing the requirement
without regard to whether the requirement has been made final. No
petition fee is required.

37 CFR 1.129(b)(2) also provides that if the petition is filed in a
timely manner, the original time period for electing and paying the fee
set forth in  37 CFR 1.17(s) will be deferred and any decision on the
petition affirming or modifying the requirement will set a new time
period to elect the invention or inventions to be searched and examined
and to pay the fee set forth in  37 CFR 1.17(s) for each independent and
distinct invention claimed in the application in excess of one which
applicant elects.

Under  37 CFR 1.129(b)(3), each additional invention for which the
required fee set forth in  37 CFR 1.17(s) has not been paid will be
withdrawn from consideration under  37 CFR 1.142(b). An applicant who
desires examination of an invention so withdrawn from consideration can
file a divisional application under  35 U.S.C. 121.

37 CFR 1.129(c) clarifies that the provisions of  37 CFR 1.129(a) and
(b) are not applicable to any application filed after June 8, 1995. 
However, any application filed on June 8, 1995, would be subject to a
20-year patent term.

Form Paragraph 8.41 may be used to notify applicant that the application
is a transitional application and is entitled to consideration of
additional inventions upon payment of the required fee.

8.41 Transitional Restriction or Election of Species Requirement To Be
Mailed After June 8, 1995

This application is subject to the transitional restriction provisions
of Public Law 103-465, which became effective on June 8, 1995, because:

1. the application was filed on or before June 8, 1995, and has an
effective U.S. filing date of June 8, 1992, or earlier;

2. a requirement for restriction was not made in the present or a parent
application prior to April 8, 1995; and

3. the examiner was not prevented from making a requirement for
restriction in the present or a parent application prior to April 8,
1995, due to actions by the applicant.

The transitional restriction provisions permit applicant to have more
than one independent and distinct invention examined in the same
application by paying a fee for each invention in excess of one.

Final rules concerning the transition restriction provisions were
published in the Federal Register at 60 FR 20195 (April 25, 1995) and in
the Official Gazette at 1174 O.G. 15 (May 2, 1995).  The final rules at 
37 CFR 1.17(s) include the fee amount required to be paid for each
additional invention as set forth in the following requirement for
restriction.  See the current fee schedule for the proper amount of the
fee.

Applicant must either: (1) elect the invention or inventions to be
searched and examined and pay the fee set forth in  37 CFR 1.17(s) for
each independent and distinct invention in excess of one which applicant
elects; or (2) file a petition under  37 CFR 1.129(b) traversing the
requirement.

Examiner Note:

1. This paragraph should be used in all restriction or election of
species requirements made in applications subject to the transition
restriction provisions set forth in  37 CFR 1.129(b) where the
requirement is being mailed after June 8, 1995. The procedure is NOT
applicable to any design or reissue application.

---SECTION---803.03(a) Transitional Application -  Linking Claim
Allowable

Whenever divided inventions in a transitional application are rejoined
because a linking claim is allowed (MPEP Section  809) and applicant
paid the fee set forth in  37 CFR 1.17(s) for the additional invention,
applicant should be notified that he or she may request a refund of the
fee paid for that additional invention.

---SECTION---803.03(b) Transitional Application -  Generic Claim
Allowable

Whenever claims drawn to an additional species in a transitional
application for which applicant paid the fee set forth in  37 CFR
1.17(s) are no longer withdrawn because they are fully embraced by an
allowed generic claim, applicant should be notified that he or she may
request a refund of the fee paid for that additional species.

The determination of when claims to a nonelected species would no longer
be withdrawn should be made as indicated in MPEP Section  809.02(b), 
Section  809.02(c), or Section  809.02(d).

[GRAPHIC]

---SECTION---803.04 Restriction - Nucleotide Sequences

By statute, "[i]f two or more independent and distinct inventions are
claimed in one application, the Commissioner may require the application
to be restricted to one of the inventions." 35 U.S.C. 121.  Pursuant to
this statute, the rules provide that "[i]f two or more independent and
distinct inventions are claimed in a single application, the examiner in
his action shall require the applicant . . . to elect that invention to
which his claim shall be restricted."  37 CFR 1.l42(a).  See also  37
CFR 1.141(a).

Nucleotide sequences encoding different proteins are structurally
distinct chemical compounds and are unrelated to one another. 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 pursuant to  35 U.S.C. 121 and  37 CFR 1.141  
et seq.  Nevertheless, to further aid the biotechnology industry in
protecting its intellectual property without creating an undue burden on
the Office, the Commissioner has decided sua sponte to partially waive
the requirements of  37 CFR 1.141 et seq. and permit a reasonable number
of such nucleotide sequences to be claimed in a single application. See
Examination of Patent Applications Containing Nucleotide Sequences, 1192
O.G. 68 (November 19, 1996). 

It has been determined that normally ten sequences constitute a
reasonable number for examination purposes.  Accordingly, in most cases,
up to ten independent and distinct nucleotide sequences will be examined
in a single application without restriction. In addition to the
specifically selected sequences, those sequences which are patentably
indistinct from the selected sequences will also be examined.
Furthermore, nucleotide sequences encoding the same protein are not
considered to be independent and distinct inventions and will continue
to be examined together.

In some exceptional cases, the complex nature of the claimed material,
for example a protein amino acid sequence reciting three dimensional
folds, may necessitate that the reasonable number of sequences to be
selected be less than ten. In other cases, applicants may petition
pursuant to  37 CFR 1.181 for examination of additional nucleotide
sequences by providing evidence that the different nucleotide sequences
do not cover independent and distinct inventions.

See MPEP Section  1850 for treatment of claims containing independent
and distinct nucleotide sequences in international applications filed
under the Patent Cooperation Treaty (PCT) and national stage
applications filed under 35 U.S.C. 371.

EXAMPLES OF NUCLEOTIDE SEQUENCE CLAIMS

Examples of typical nucleotide sequence claims impacted by the partial
waiver of  37 CFR 1.141 et seq. (and the partial waiver of  37 CFR 1.475
and 1.499 et seq., see MPEP Section  1850) include:

(A) an isolated and purified DNA fragment comprising DNA having at least
95% identity to a DNA sequence selected from SEQ ID Nos. 1-1,000;

(B) a combination of DNA fragments comprising SEQ ID Nos. 1-1,000; and

(C) a combination of DNA fragments, said combination containing at least
thirty different DNA fragments selected from SEQ ID Nos. 1-1,000.

Applications claiming more than ten individual independent and distinct
nucleotide sequences in alternative form, such as set forth in example
(A), will be subject to a restriction requirement. Only the ten
nucleotide sequences selected in response to the restriction requirement
and any other claimed sequences which are patentably indistinct
therefrom will be examined.

Applications claiming only a combination of nucleotide sequences, such
as set forth in example (B), will generally not be subject to a
restriction requirement. The presence of one novel and nonobvious
sequence within the combination will render the entire combination
allowable.  The combination will be searched until one nucleotide
sequence is found to be allowable. The order of searching will be chosen
by the examiner to maximize the identification of an allowable sequence.
If no individual nucleotide sequence is found to be allowable, the
examiner will consider whether the combination of sequences taken as a
whole renders the claim allowable.

Applications containing only composition claims reciting different
combinations of individual nucleotide sequences, such as set forth in
example (C), will be subject to a restriction requirement. Applicants
will be required to select one combination for examination. If the
selected combination contains ten or fewer sequences, all of the
sequences of the combination will be searched. If the selected
combination contains more than ten sequences, the combination will be
examined following the procedures set forth above for example (B). More
specifically, the combination will be searched until one nucleotide
sequence is found to be allowable with the examiner choosing the order
of search to maximize the identification of an allowable sequence. The
identification of any allowable sequence(s) will cause all combinations
containing the allowed sequence(s) to be allowed. 

In applications containing all three claims set forth in examples
(A)-(C), the Office will require restriction of the application to ten
sequences for initial examination purposes. Based upon the finding of
allowable sequences, claims limited to the allowable sequences as in
example (A), all combinations, such as in examples (B) and (C),
containing the allowable sequences and any patentably indistinct
sequences will be rejoined and allowed.

Rejoinder will be permitted for claims requiring any allowable
sequence(s). Any claims which have been restricted and nonselected and
which are limited to the allowable sequence(s) will be rejoined and
examined.

---SECTION---804 Definition of Double Patenting

35 U.S.C. 101 Inventions Patentable.

Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.

35 U.S.C. 121 Divisional Applications.

If two or more independent and distinct inventions are claimed in one
application, the Commissioner may require the application to be
restricted to one of the inventions. If the other invention is made the
subject of a divisional application which complies with the requirements
of section 120 of this title it shall be entitled to the benefit of the
filing date of the original application. A patent issuing on an
application with respect to which a requirement for restriction under
this section has been made, or on an application filed as a result of
such a requirement, shall not be used as a reference either in the
Patent and Trademark Office or in the courts against a divisional
application or against the original application or any patent issued on
either of them, if the divisional application is filed before the
issuance of the patent on the other application. If a divisional is
directed solely to subject matter described and claimed in the original
application as filed, the Commissioner may dispense with signing and
execution by the inventor. The validity of a patent shall not be
questioned for failure of the Commissioner to require the application to
be restricted to one invention.

The doctrine of double patenting seeks to prevent the unjustified
extension of patent exclusivity beyond the term of a patent. The public
policy behind this doctrine is that:

The public should . . . be able to act on the assumption that upon the
expiration of the patent it will be free to use not only the invention
claimed in the patent but also modifications or variants which would
have been obvious to those of ordinary skill in the art at the time the
invention was made, taking into account the skill in the art and prior
art other than the invention claimed in the issued patent.

In re Zickendraht, 319 F.2d 225, 232, 138 USPQ 22, 27 (CCPA 1963) (Rich,
J., concurring). Double patenting results when the right to exclude
granted by a first patent is unjustly extended by the grant of a later
issued patent or patents. In re Van Ornum, 686 F.2d 937, 214 USPQ 761
(CCPA 1982). 

Before consideration can be given to the issue of double patenting,
there must be some common relationship of inventorship and/or ownership
of two or more patents or applications. Since the doctrine of double
patenting seeks to avoid unjustly extending patent rights at the expense
of the public, the focus of any double patenting analysis necessarily is
on the claims in the multiple patents or patent applications involved in
the analysis.

There are generally two types of double patenting rejections. One is the
"same invention" type double patenting rejection based on  35 U.S.C. 101
which states in the singular that an inventor "may obtain a patent". 
The second is the "nonstatutory-type" double patenting rejection based
on a judicially created doctrine grounded in public policy and which is
primarily intended to prevent prolongation of the patent term by
prohibiting claims in a second patent not patentably distinguishing from
claims in a first patent. Nonstatutory double patenting includes
rejections based on one-way determination of obviousness and on two-way
determination of obviousness. Nonstatutory double patenting could
include a rejection which is not the usual "obviousness-type" double
patenting rejection. This type of double patenting rejection is based on
the fundamental reason to prevent unjustified timewise extension of the
right to exclude granted by a patent no matter how the extension is
sought. In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968).

Refer to Charts I-A, I-B, II-A, and II-B for an overview of the
treatment of applications having conflicting claims.

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I. INSTANCES WHERE DOUBLE PATENTING ISSUE CAN BE RAISED

A double patenting issue may arise between two or more pending
applications, between one or more pending applications and a patent, or
in a reexamination proceeding. Double patenting does not relate to
international applications which have not yet entered the national stage
in the United States.

A. Between Issued Patent and One or More Applications

Double patenting may exist between an issued patent and an application
filed by the same inventive entity, or by an inventive entity having a
common inventor with the patent, and/or by the owner of the patent. 
Since the inventor/patent owner has already secured the issuance of a
first patent, the examiner must determine whether the grant of a second
patent would give rise to an unjustified extension of the rights granted
in the first patent.

B. Between Copending Applications-Provisional Rejections

Occasionally, the examiner becomes aware of two copending applications
filed by the same inventive entity, or by different inventive entities
having a common inventor, and/or that are filed by a common assignee
that would raise an issue of double patenting if one of the applications
became a patent.  Where this issue can be addressed without violating
the confidential status of applications (35 U.S.C. 122), the courts have
sanctioned the practice of making applicant aware of the potential
double patenting problem if one of the applications became a patent by
permitting the examiner to make a "provisional" rejection on the ground
of double patenting. In re Mott, 539 F.2d 1291, 190 USPQ 536 (CCPA
1976);   In re Wetterau, 356 F.2d 556, 148 USPQ 499 (CCPA 1966). The
merits of such a provisional rejection can be addressed by both the
applicant and the examiner without waiting for the first patent to
issue.

The "provisional" double patenting rejection should continue to be made
by the examiner in each application as long as there are conflicting
claims in more than one application unless that "provisional" double
patenting rejection is the only rejection remaining in one of the
applications. If the "provisional" double patenting rejection in one
application is the only rejection remaining in that application, the
examiner should then withdraw that rejection and permit the application
to issue as a patent, thereby converting the "provisional" double
patenting rejection in the other application(s) into a double patenting
rejection at the time the one application issues as a patent.

If the "provisional" double patenting rejections in both applications
are the only rejections remaining in those applications, the examiner
should then withdraw that rejection in one of the applications (e.g.,
the application with the earlier filing date) and permit the application
to issue as a patent. The examiner should maintain the double patenting
rejection in the other application as a "provisional" double patenting
rejection which will be converted into a double patenting rejection when
the one application issues as a patent.

C. Reexamination Proceedings

A double patenting issue may raise a substantial new question of
patentability of a claim of a patent, and thus be addressed in a
reexamination proceeding. In re Lonardo, 119 F.3d 960, 43 USPQ2d 1262,
1266 (Fed. Cir. 1997) (In giving the Commissioner authority under  35
U.S.C. 303(a) in determining the presence of a substantial new question
of patentability, "Congress intended that the phrases `patents and
publications' and `other patents or publications' in section 303(a) not
be limited to prior art patents or printed publications." (emphasis
added)). Accordingly, if the issue of double patenting was not addressed
during original prosecution, it may be considered during reexamination.

II. REQUIREMENTS OF A DOUBLE PATENTING REJECTION (INCLUDING PROVISIONAL
REJECTIONS)

When a double patenting rejection is appropriate, it must be based
either on statutory grounds or nonstatutory grounds. The ground of
rejection employed depends upon the relationship of the inventions being
claimed. Generally, a double patenting rejection is not permitted where
the claimed subject matter is presented in a divisional application as a
result of a restriction requirement made in a parent application under 
35 U.S.C. 121.

Where the claims of an application are substantively the same as those
of a first patent, they are barred under  35 U.S.C. 101 - the statutory
basis for a double patenting rejection. A rejection based on double
patenting of the "same invention" type finds its support in the language
of  35 U.S.C. 101 which states that "whoever invents or discovers any
new and useful process ... may obtain a patent therefor ...." Thus, the
term "same invention," in this context, means an invention drawn to
identical subject matter. Miller v.   Eagle Mfg. Co., 151 U.S. 186
(1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and   In re
Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). Where the claims of an
application are not the "same" as those of a first patent, but the grant
of a patent with the claims in the application would unjustly extend the
rights granted by the first patent, a double patenting rejection under
nonstatutory grounds is proper.

In determining whether a proper basis exists to enter a double patenting
rejection, the examiner must determine the following:

(A) Whether a double patenting rejection is prohibited by the third
sentence of  35 U.S.C. 121 (see MPEP Section  804.01; if such a
prohibition applies, a double patenting rejection cannot be made);

(B) Whether a statutory basis exists; and

(C) Whether a nonstatutory basis exists.

Each determination must be made on the basis of all the facts in the
case before the examiner. Charts I-A, I-B, II-A, and II-B illustrate the
methodology of making such a determination.

Domination and double patenting should not be confused. They are two
separate issues. One patent or application "dominates" a second patent
or application when the first patent or application has a broad or
generic claim which fully encompasses or reads on an invention defined
in a narrower or more specific claim in another patent or application.
Domination by itself, i.e., in the absence of statutory or nonstatutory
double patenting grounds, cannot support a double patenting rejection. 
In re Kaplan, 789 F.2d 1574, 1577-78, 229 USPQ 678, 681 (Fed. Cir.
1986); and   In re Sarrett, 327 F.2d 1005, 1014-15, 140 USPQ 474, 482
(CCPA 1964).  However, the presence of domination does not preclude
double patenting. See, e.g., In re Schneller, 397 F.2d 350, 158 USPQ 210
(CCPA 1968).

A. Statutory Double Patenting - 35 U.S.C. 101

In determining whether a statutory basis for a double patenting
rejection exists, the question to be asked is: Is the same invention
being claimed twice?  35 U.S.C. 101 prevents two patents from issuing on
the same invention. "Same invention" means identical subject matter.
Miller v.   Eagle Mfg. Co., 151 U.S. 186 (1984); In re Vogel, 422 F.2d
438, 164 USPQ 619 (CCPA 1970); and   In re Ockert, 245 F.2d 467, 114
USPQ 330 (CCPA 1957).

A reliable test for double patenting under  35 U.S.C. 101 is whether a
claim in the application could be literally infringed without literally
infringing a corresponding claim in the patent. In re Vogel, 422 F.2d
438, 164 USPQ 619 (CCPA 1970). Is there an embodiment of the invention
that falls within the scope of one claim, but not the other? If there is
such an embodiment, then identical subject matter is not defined by both
claims and statutory double patenting would not exist. For example, the
invention defined by a claim reciting a compound having a "halogen"
substituent is not identical to or substantively the same as a claim
reciting the same compound except having a "chlorine" substituent in
place of the halogen because "halogen" is broader than "chlorine." On
the other hand, claims may be differently worded and still define the
same invention. Thus, a claim reciting a widget having a length of "36
inches" defines the same invention as a claim reciting the same widget
having a length of "3 feet."

If it is determined that the same invention is being claimed twice,  35
U.S.C. 101 precludes the grant of the second patent regardless of the
presence or absence of a terminal disclaimer. Id.

Form Paragraphs 8.30 and 8.31 (between an issued patent and one or more
applications) or 8.32 (provisional rejections) may be used to make
statutory double patenting rejections.

8.30 35 U.S.C. 101, Statutory Basis for Double Patenting "Heading" Only

A rejection based on double patenting of the "same invention" type finds
its support in the language of  35 U.S.C. 101 which states that "whoever
invents or discovers any new and useful process ... may obtain a patent
therefor ..."  (Emphasis added).  Thus, the term "same invention," in
this context, means an invention drawn to identical subject matter.  See
Miller v.   Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d
438, 164 USPQ 619 (CCPA 1970); and   In re Ockert, 245 F.2d 467, 114
USPQ 330 (CCPA 1957).

A statutory type (35 U.S.C. 101) double patenting rejection can be
overcome by canceling or amending the conflicting claims so they are no
longer coextensive in scope.  The filing of a terminal disclaimer cannot
overcome a double patenting rejection based upon  35 U.S.C. 101.

Examiner Note:

The above form paragraph must be used as a heading for all subsequent
double patenting rejections of the statutory (same invention) type using
either of form paragraphs 8.31 or 8.32.

8.31 Rejection, 35 U.S.C. 101, Double Patenting

Claim  [1] rejected under  35 U.S.C. 101 as claiming the same invention
as that of claim  [2] of prior U.S. Patent No. [3].  This is a double
patenting rejection.

Examiner Note:

1. This paragraph must be preceded by form paragraph 8.30 and is used
only for double patenting rejections of the same invention claimed in an
earlier patent; that is, the "scope" of the inventions claimed is
identical.

2. If the conflicting claims are in another copending application, do
not use this paragraph.  A provisional double patenting rejection should
be made using paragraph 8.32.

3. Do not use this paragraph for non-statutory-type double patenting
rejections.  If non-statutory type, use appropriate form paragraphs 8.33
to 8.39.

4. This paragraph may be used where the conflicting patent and the
pending application are:

(a) by the same inventive entity, or

(b) by a different inventive entity and are commonly assigned even
though there is no common inventor, or

(c) not commonly assigned but have at least one common inventor.

5. In bracket 3, insert the number of the conflicting patent.

6. If the patent is to a different inventive entity and is commonly
assigned with the application, paragraph 8.27 should additionally be
used to require the assignee to name the first inventor.

7. If evidence is of record to indicate that the patent is prior art
under either  35 U.S.C. 102(f) or (g), a rejection should also be made
using paragraphs 7.15 and/or 7.19 in addition to this double patenting
rejection.

8. If the patent is to a different inventive entity from the application
and the effective U.S. filing date of the patent antedates the effective
filing date of the application, a rejection under  35 U.S.C. 102(e)
should additionally be made using paragraph 7.15.02.

8.32 Provisional Rejection, 35 U.S.C. 101, Double Patenting

Claim  [1] provisionally rejected under  35 U.S.C. 101 as claiming the
same invention as that of claim  [2] of copending Application No. [3]. 
This is a provisional double patenting rejection since the conflicting
claims have not in fact been patented.

Examiner Note:

1. This paragraph must be preceded by form paragraph 8.30 and is used
only for double patenting rejections of the same invention claimed in
another copending application; that is, the scope of the claimed
inventions is identical.

2. If the conflicting claims are from an issued patent, do not use this
paragraph.  See paragraph 8.31.

3. Do not use this paragraph for non-statutory-type double patenting
rejections.  See paragraphs 8.33 to 8.39.

4. This paragraph may be used where the conflicting claims are in a
copending application that is:

(a) by the same inventive entity, or

(b) by a different inventive entity and is commonly assigned even though
there is no common inventor, or

(c) not commonly assigned but has at least one common inventor.

5. Paragraph 8.28 may be used in place of or along with this paragraph
to resolve any remaining issues relating to priority under  35 U.S.C.
102(f) or (g).

6. In bracket 3, insert the number of the conflicting application.

7. A provisional double patenting rejection should also be made in the
conflicting application.

8. If the copending application is by a different inventive entity and
is commonly assigned, paragraph 8.27 should additionally be used to
require the assignee to name the first inventor.

9. If evidence is also of record to show that either application is
prior art unto the other under  35 U.S.C. 102(f) or (g), a rejection
should also be made in the other application using paragraphs 7.15
and/or 7.19 in addition to this provisional double patenting rejection.

10. If the applications do not have the same inventive entity and
effective U.S. filing date, a provisional 102(e) rejection should
additionally be made in the later-filed application using paragraph
7.15.01.

If the "same invention" is not being claimed twice, an analysis must be
made to determine whether a nonstatutory basis for double patenting
exists.

B. Nonstatutory Double Patenting

A rejection based on nonstatutory double patenting is based on a
judicially created doctrine grounded in public policy so as to prevent
the unjustified or improper timewise extension of the right to exclude
granted by a patent. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
Cir. 1993)  ; In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985);  
In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982);   In re Vogel,
422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528,
163 USPQ 644 (CCPA 1969);   In re White, 405 F.2d 904, 160 USPQ 417
(CCPA 1969); In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968);  
In re Sarett, 327 F.2d 1005, 140 USPQ 474 (CCPA 1964). 

1. Obvious-Type

In determining whether a nonstatutory basis exists for a double
patenting rejection, the first question to be asked is - does any claim
in the application define an invention that is merely an obvious
variation of an invention claimed in the patent? If the answer is yes,
then an "obvious-type" nonstatutory double patenting rejection may be
appropriate.

A double patenting rejection of the obvious-type is "analogous to [a
failure to meet] the nonobviousness requirement of  35 U.S.C. 103"
except that the patent principally underlying the double patenting
rejection is not considered prior art. In re Braithwaite, 379 F.2d 594,
154 USPQ 29 (CCPA 1967). Therefore, any analysis employed in an
obvious-type double patenting rejection parallels the guidelines for
analysis of a  35 U.S.C. 103 obviousness determination. In re Braat, 937
F.2d 589, 19 USPQ2d 1289 (Fed. Cir. 1991); In re Longi, 759 F.2d 887,
225 USPQ 645 (Fed. Cir. 1985).

Since the analysis employed in an obvious-type double patenting
determination parallels the guidelines for a  35 U.S.C. 103(a)
rejection, the factual inquiries set forth in Graham v.   John Deere
Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing
a background for determining obviousness under  35 U.S.C. 103 are
employed when making an obvious-type double patenting analysis. These
factual inquiries are summarized as follows:

(A) Determine the scope and content of a patent claim and the prior art
relative to a claim in the application at issue;

(B) Determine the differences between the scope and content of the
patent claim and the prior art as determined in (A) and the claim in the
application at issue;

(C) Determine the level of ordinary skill in the pertinent 	art; and

(D) Evaluate any objective indicia of nonobviousness.

The conclusion of obvious-type double patenting is made in light of
these factual determinations.

Any obvious-type double patenting rejection should make clear:

(A) The differences between the inventions defined by the conflicting
claims - a claim in the patent compared to a claim in the application;
and

(B) The reasons why a person of ordinary skill in the art would conclude
that the invention defined in the claim in issue is an obvious variation
of the invention defined in a claim in the patent.

When considering whether the invention defined in a claim of an
application is an obvious variation of the invention defined in the
claim of a patent, the disclosure of the patent may not be used as prior
art. This does not mean that one is precluded from all use of the patent
disclosure.

The specification can always be used as a dictionary to learn the
meaning of a term in the patent claim. In re Boylan, 392 F.2d 1017, 157
USPQ 370 (CCPA 1968).  Further, those portions of the specification
which provide support for the patent claims may also be examined and
considered when addressing the issue of whether a claim in the
application defines an obvious variation of an invention claimed in the
patent. In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA
1970).  The court in   Vogel recognized "that it is most difficult, if
not meaningless, to try to say what is or is not an obvious variation of
a claim," but that one can judge whether or not the invention claimed in
an application is an obvious variation of an embodiment disclosed in the
patent which provides support for the patent claim. According to the
court, one must first "determine how much of the patent disclosure
pertains to the invention claimed in the patent" because only "[t]his
portion of the specification supports the patent claims and may be
considered." The court pointed out that "this use of the disclosure is
not in contravention of the cases forbidding its use as prior art, nor
is it applying the patent as a reference under  35 U.S.C. 103, since
only the disclosure of the invention claimed in the patent may be
examined."

(a) One-Way Obviousness

If the application at issue is the later filed application or both are
filed on the same day, only a one-way determination of obviousness is
needed in resolving the issue of double patenting, i.e., whether the
invention defined in a claim in the application is an obvious variation
of the invention defined in a claim in the patent.  See, e.g., In re
Berg, 46 USPQ2d 1226 (Fed. Cir. 1998) (the court applied a one-way test
where both applications were filed the same day).  If a claimed
invention in the application is obvious over a claimed invention in the
patent, there would be an unjustified timewise extension of the patent
and an obvious-type double patenting rejection is proper. Unless a
claimed invention in the application is obvious over a claimed invention
in the patent, no double patenting rejection of the obvious-type should
be made, but this does not necessarily preclude a rejection based on
another type of nonstatutory double patenting (see MPEP Section  804,
paragraph II.B.2. below).

Similarly, even if the application at issue is the earlier filed
application, only a one-way determination of obviousness is needed to
support a double patenting rejection in the absence of a finding of: (A)
administrative delay on the part of the Office causing delay in
prosecution of the earlier filed application; and (B) applicant could
not have filed the conflicting claims in a single (i.e., the earlier
filed) application.  See MPEP Section  804, paragraph II.B.1.(b) below.

Form Paragraph 8.33 and the appropriate one of Form Paragraphs 8.34 -
8.37 may be used to make nonstatutory rejections of the obvious-type.

(b) Two-Way Obviousness

If the patent is the later filed application, the question of whether
the timewise extension of the right to exclude granted by a patent is
justified or unjustified must be addressed. A two-way test is to be
applied only when the applicant could not have filed the claims in a
single application and there is administrative delay. In re Berg, 46
USPQ2d 1226 (Fed. Cir. 1998) ("The two-way exception can only apply when
the applicant could not avoid separate filings, and even then, only if
the PTO controlled the rates of prosecution to cause the later filed
species claims to issue before the claims for a genus in an earlier
application . . . In Berg's case, the two applications could have been
filed as one, so it is irrelevant to our disposition who actually
controlled the respective rates of prosecution."). In the absence of
administrative delay, a one-way test is appropriate. In re Goodman, 11
F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993) (applicant's voluntary
decision to obtain early issuance of claims directed to a species and to
pursue prosecution of previously rejected genus claims in a continuation
is a considered election to postpone by the applicant and not
administrative delay). Unless the record clearly shows administrative
delay by the Office and that applicant could not have avoided filing
separate applications, the examiner may use the one-way obviousness
determination and shift the burden to applicant to show why a two-way
obviousness determination is required.

When making a two-way obviousness determination where appropriate, it is
necessary to apply the Graham obviousness analysis twice, once with the
application claims as the claims in issue, and once with the patent
claims as the claims in issue. Where a two-way obviousness determination
is required, an obvious-type double patenting rejection is appropriate
only where each analysis compels a conclusion that the invention defined
in the claims in issue is an obvious variation of the invention defined
in a claim in the other application/patent. If either analysis does not
compel a conclusion of obviousness, no double patenting rejection of the
obvious-type is made, but this does not necessarily preclude a
nonstatutory double patenting rejection based on the fundamental reason
to prevent unjustified timewise extension of the right to exclude
granted by a patent. In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA
1968).

Although a delay in the processing of applications before the Office
that would cause patents to issue in an order different from the order
in which the applications were filed is a factor to be considered in
determining whether a one-way or two-way obviousness determination is
necessary to support a double patenting rejection, it may be very
difficult to assess whether an applicant or the administrative process
is primarily responsible for a delay in the issuance of a patent. On the
one hand, it is applicant who presents claims for examination and pays
the issue fee. On the other hand, the resolution of legitimate
differences of opinion that must be resolved in an appeal process or the
time spent in an interference proceeding can significantly delay the
issuance of a patent. Nevertheless, the reasons for the delay in issuing
a patent have been considered in assessing the propriety of a double
patenting rejection. Thus, in Pierce v.   Allen B. DuMont Laboratories,
Inc., 297 F.2d 323, 131 USPQ 340 (3d. Cir. 1961), the court found that
administrative delay may justify the extension of patent rights beyond
17 years but "a considered election to postpone acquisition of the
broader [patent after the issuance of the later filed application]
should not be tolerated." In Pierce, the patentee elected to participate
in an interference proceeding [after all claims in the application had
been determined to be patentable] whereby the issuance of the broader
patent was delayed by more than 7 years after the issuance of the
narrower patent. The court determined that the second issued patent was
invalid on the ground of double patenting. Similarly, in In re Emert,
124 F.3d 1458, 44 USPQ2d 1149 (Fed. Cir. 1997), the court found that the
one-way test is appropriate where applicants, rather than the Office,
had significant control over the rate of prosecution of the application
at issue.  In support of its finding that the applicants were
responsible for delaying prosecution of the application during the
critical period, the court noted that the applicants had requested and
received numerous time extensions in various filings.  More importantly,
the court noted, after initially receiving an obviousness rejection of
all claims, applicants had waited the maximum period to reply (6
months), then abandoned the application in favor of a substantially
identical continuation application, then received another obviousness
rejection of all claims, again waited the maximum period to reply, and
then again abandoned the application in favor of a second continuation
application substantially identical to the original filing. On the other
hand, in General Foods Corp. v.   Studiengesellschaft Kohle mbH, 972
F.2d 1272, 23 USPQ2d 1839 (Fed. Cir. 1992), the court elected not to
hold the patentee accountable for a delay in issuing the first filed
application until after the second filed application issued as a patent,
even where the patentee had intentionally refiled the first filed
application as a continuation-in-part after receiving a Notice of
Allowance indicating that all claims presented were patentable.
Similarly, where, through no fault of the applicant, the claims in a
later filed application issue first, an obvious-type double patenting
rejection is improper, in the absence of a two-way obviousness
determination, because the applicant does not have complete control over
the rate of progress of a patent application through the Office. In re
Braat, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir. 1991). While
acknowledging that allowance of the claims in the earlier filed
application would result in the timewise extension of an invention
claimed in the patent, the court was of the view that the extension was
justified under the circumstances in this case, indicating that a double
patenting rejection would be proper only if the claimed inventions were
obvious over each other - a two-way obviousness determination.

Form Paragraph 8.33 and the appropriate one of Form Paragraphs 8.34-8.37
may be used to make nonstatutory rejections of the obvious type.

8.33 Basis for Nonstatutory Double Patenting, "Heading" Only

The nonstatutory double patenting rejection is based on a judicially
created doctrine grounded in public policy (a policy reflected in the
statute) so as to prevent the unjustified or improper timewise extension
of the "right to exclude" granted by a patent and to prevent possible
harassment by multiple assignees.  See In re Goodman, 11 F.3d 1046, 29
USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645
(Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA
1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and   In re
Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).

A timely filed terminal disclaimer in compliance with  37 CFR 1.321(c)
may be used to overcome an actual or provisional rejection based on a
nonstatutory double patenting ground provided the conflicting
application or patent is shown to be commonly owned with this
application.  See  37 CFR 1.130(b).

Effective January 1, 1994, a registered attorney or agent of record may
sign a terminal disclaimer.  A terminal disclaimer signed by the
assignee must fully comply with  37 CFR 3.73(b).

Examiner Note:

This form paragraph is to be used as a heading before a nonstatutory
double patenting rejection using any of form paragraphs 8.34 - 8.39.

8.34 Rejection, Obviousness Type Double Patenting - No Secondary
Reference(s)

Claim  [1] rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claim  [2]
of U.S. Patent No. [3].  Although the conflicting claims are not
identical, they are not patentably distinct from each other because [4].

Examiner Note:

1. This paragraph is used for obviousness-type double patenting
rejections based upon a patent.

2. If the obviousness-type double patenting rejection is based upon
another application, do not use this paragraph.  A provisional double
patenting rejection should be made using form paragraphs 8.33 and 8.35
or 8.37.

3. This paragraph may be used where the conflicting invention is claimed
in a patent which is:

(a) by the same inventive entity, or

(b) by a different inventive entity and is commonly assigned even though
there is no common inventor, or

(c) not commonly assigned but has at least one inventor in common.

4. Form paragraph 8.33 must precede any one of paragraphs 8.34 to 8.39
and must be used only ONCE in an Office action.

5. In bracket 3, insert the number of the patent.

6. If evidence indicates that the conflicting patent is prior art under 
35 U.S.C. 102(f) or (g), a rejection should additionally be made under
102(f)/103(a) or 102(g)/103(a) using paragraph 7.21.

7. If the patent is to another inventive entity and has an earlier U.S.
filing date, a rejection under  35 U.S.C. 102(e) or 102(e)/103(a) may be
made using paragraphs 7.15.02 or 7.21.02

8. In bracket 4, provide appropriate rationale of obviousness for any
claims being rejected over the claims of the cited patent.

8.35 Provisional Rejection, Obviousness Type Double Patenting - No
Secondary Reference(s)

Claim  [1] provisionally rejected under the judicially created doctrine
of obviousness-type double patenting as being unpatentable over claim 
[2] of copending Application No.   [3].  Although the conflicting claims
are not identical, they are not patentably distinct from each other
because   [4].

This is a provisional obviousness-type double patenting rejection
because the conflicting claims have not in fact been patented.

Examiner Note:

1. This paragraph should be used when the conflicting claims are in
another copending application.

2. If the conflicting claims are in a patent, do not use this paragraph.
Use form paragraphs 8.33 and 8.34.

3. This paragraph may be used where the conflicting claims are in a
copending application that is:

(a) by the same inventive entity, or

(b) is commonly assigned even though there is no common inventor,  or

(c) not commonly assigned but has at least one common inventor.

4. Form paragraph 8.33 must precede any one of paragraphs 8.34 to 8.39
and must be used only ONCE in an office action.

5. If the conflicting application is currently commonly assigned but the
file does not establish that the conflicting inventions were commonly
owned at the time the later invention was made, form paragraph 8.28 may
be used in place of or in addition to this form paragraph to also
resolve any issues relating to priority under 102(f) and/or (g).

6. In bracket 3, insert the number of the conflicting application.

7. A provisional double patenting rejection should also be made in the
conflicting application.

8. If evidence shows that either application is prior art unto the other
under  35 U.S.C. 102(f) or (g) and the copending application has not
been disqualified as prior art in a 103 rejection based on common
ownership), a rejection should additionally be made in the other
application under  35 U.S.C. 102(f)/103(a) or 102(g)/103(a) using
paragraph 7.21.

9. If the   disclosure of one application may be used to support a
rejection of the other and the applications have different inventive
entities and different U.S. filing dates, use paragraph 7.21.01 to
additionally make a rejection under  35 U.S.C. 102(e)/103(a) rejection
in the other application.

10. In bracket 4, provide appropriate rationale for obviousness of
claims being rejected over the claims of the cited patent.

8.36 Rejection, Obviousness Type Double Patenting - With Secondary
Reference(s)

Claim  [1] rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claim  [2]
of U.S. Patent No. [3] in view of [4]. [5]

Examiner Note:

1. This paragraph is used for obviousness-type double patenting
rejections where the primary reference is a conflicting patent.

2. If the obviousness double patenting rejection is based on another
application, do not use this paragraph.  A provisional obviousness-type
double patenting rejection should be made using form paragraphs 8.33 and
8.35 or 8.37.

3. This paragraph may be used where the prior invention is claimed in a
patent which is:

(a) by the same inventive entity, or

(b) by a different inventive entity and is commonly assigned even though
there is no common inventor, or

(c) not commonly assigned but has at least one common inventor.

4. Form paragraph 8.33 must precede any one of paragraphs 8.34 to 8.39
and must be used only ONCE in an office action.

5. In bracket 3, insert the number of the conflicting patent.

6. In bracket 4, insert the secondary reference.

7. In bracket 5, insert an explanation of the obviousness-type
rejection.

8. If evidence shows that the conflicting patent is prior art under  35
U.S.C. 102(f) or (g), a rejection should additionally be made under  35
U.S.C. 102(f)/103(a) or 102(g)/103(a) using paragraph 7.21.

9. If the patent issued to a different inventive entity and has an
earlier U.S. filing date, a rejection under  35 U.S.C. 102(e) or
102(e)/103(a) may be made using paragraphs 7.15.02 or 7.21.02.

8.37 Provisional Rejection, Obviousness Type Double Patenting - With
Secondary Reference(s)

Claim  [1] provisionally rejected under the judicially created doctrine
of obviousness-type double patenting as being unpatentable over claim 
[2] of copending Application No.   [3] in view of   [4]. [5]

This is a provisional obviousness-type double patenting rejection.

Examiner Note:

1. This paragraph is used for obviousness-type double patenting
rejections where the primary reference is a conflicting application.

2. If the conflicting claims are in a patent, do not use this paragraph, 
use form paragraph 8.34.

3. This paragraph may be used where the conflicting claims are in a
copending application that is:

(a) by the same inventive entity, or

(b) is commonly assigned even though there is no common inventor,  or

(c) not commonly assigned but has at least one common inventor.

4. Form paragraph 8.33 must precede any one of paragraphs 8.34 to 8.39
and must be used only ONCE in an office action.

5. If the conflicting cases are currently commonly assigned but the file
does not establish that the conflicting inventions were commonly owned
at the time the later invention was made, form paragraph 8.28 may be
used in place of or in addition to this form paragraph to also resolve
any issues relating to priority under 102(f) and/or (g).

6. In bracket 3, insert the number of the conflicting application.

7. In bracket 4, insert the secondary reference.

8. In bracket 5, insert an explanation of the obviousness-type
rejection.

9. A provisional double patenting rejection should also be made in the
conflicting application.

10. If evidence shows that either application is prior art unto the
other under  35 U.S.C. 102(f) or (g) and the copending application has
not been disqualified as prior art in a  35 U.S.C. 103(a) rejection
based on common ownership, a rejection should additionally be made under 
35 U.S.C. 102(f)/103(a) or 102(g)/103(a) using paragraph 7.21.

11. If the disclosure of one application may be used to support a
rejection of the other and the applications have different inventive
entities and different U.S. filing dates, use paragraph 7.21.01 to
additionally make a rejection under  35 U.S.C. 102(e)/103(a).

2. Another Type of Nonstatutory Double Patenting Rejection

There are some unique circumstances where it has been recognized that
another type of nonstatutory double patenting rejection is applicable
even where the inventions claimed in two or more applications/patents
are considered nonobvious over each other. These circumstances are
illustrated by the facts before the court in In re Schneller, 397 F.2d
350, 158 USPQ 210 (CCPA 1968). In affirming the double patenting
rejection, the court summed up the situation:

in appellant's own terms: The combination ABC was old. He made two
improvements on it, (1) adding X and (2) adding Y, the result still
being a unitary clip of enhanced utility. While his invention can be
practiced in the forms ABCX or ABCY, the greatest advantage and best
mode of practicing the invention as disclosed is obtained by using both
inventions in the combination ABCXY. His first application disclosed
ABCXY and other matters. He obtained a patent claiming [a clip
comprising] BCX and ABCX, . . . so claiming these combinations as to
cover them no matter what other feature is incorporated in them, thus
covering effectively ABCXY. He now, many years later, seeks more claims
directed to ABCY and ABCXY.  Thus, protection he already had would be
extended, albeit in somewhat different form, for several years beyond
the expiration of his patent, were we to reverse.   397 F.2d at 355-56,
158 USPQ at 216 (emphasis in original).

The court recognized that "there is no double patenting in the sense of
claiming the same invention because ABCX and ABCY are, in the technical
patent law sense, different inventions. The rule against `double
patenting,' however, is not so circumscribed. The fundamental reason for
the rule is to prevent unjustified timewise extension of the right to
exclude granted by a patent no matter how the extension is brought
about.  To . . . prevail here, appellant has the burden of establishing
that the invention claimed in his patent is `independent and distinct'
from the invention of the appealed claims."  397 F.2d at 354, 158 USPQ
at 214 (emphasis in original). The court observed:

The controlling fact is that patent protection for the clips, fully
disclosed in and covered by the claims of the patent, would be extended
by allowance of the appealed claims. Under the circumstance of the
instant case, wherein we find no valid excuse or mitigating
circumstances making it either reasonable or equitable to make an
exception, and wherein there is no terminal disclaimer, the rule against
"double patenting" must be applied.   397 F.2d at 355, 158 USPQ at 215.

In determining whether to make this type of nonstatutory double
patenting rejection, the examiner should do a side by side comparison of
the reference and application claims, keeping in mind that "only the
claims of the patent can be considered as support for the rejection, its
disclosure being looked to only to determine the meaning of the claims,
which are to be read in the light of the specification."  397 F.2d at
352, 158 USPQ at 213.  A rejection is appropriate where:

(A) patent protection for the invention, fully disclosed in and covered
by the claims of the reference, would be extended by the allowance of
the claims in the later filed application;

(B) there was no valid excuse or mitigating circumstances making it
either reasonable or equitable to make an exception (e.g., the Office
required restriction, or the claimed inventions were invented by
different inventive entities); and

(C) no terminal disclaimer has been filed.   397 F.2d at 355, 158 USPQ
at 215.  However, if the applicant has met "the burden of establishing
that the invention claimed in [the reference] is `independent and
distinct' from the invention of the . . .claims" at issue, a
nonstatutory double patenting rejection of this type should not be made
or, if already made, should be withdrawn.  397 F.2d at 354, 158 USPQ at
214.

A fact situation similar to that in Schneller was presented to a Federal
Circuit panel in In re Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed. Cir.
1986). Kaplan had been issued a patent on a process of making chemicals
in the presence of an organic solvent. Among the organic solvents
disclosed and claimed as being useful were tetraglyme and sulfolane. One
unclaimed example in the patent was specifically directed to a mixture
of these two solvents. The claims in the application to Kaplan and
Walker, the application before the Office, were directed to essentially
the same chemical process, but requiring the use of the solvent mixture
of tetraglyme and sulfolane. In reversing the double patenting
rejection, the court stated that the mere fact that the broad process
claim of the patent requiring an organic solvent reads on or "dominates"
the narrower claim directed to basically the same process using a
specific solvent mixture does not, per se, justify a double patenting
rejection. The court also pointed out that the double patenting
rejection improperly used the disclosure of the joint invention (solvent
mixture) in the Kaplan patent specification as though it were prior art.

A significant factor in the Kaplan case was that the broad invention was
invented by Kaplan, and the narrow invention (i.e., using a specific
combination of solvents) was invented by Kaplan and Walker. Since these
applications (as the applications in Braat) were filed before the Patent
Law Amendments Act of 1984 (Pub. Law 98-622, November 8, 1984) amending 
35 U.S.C. 116 to expressly authorize filing a patent application in the
names of joint inventors who did not necessarily make a contribution to
the invention defined in each claim in the patent, it was necessary to
file multiple applications to claim both the broad and narrow
inventions. Accordingly, there was a valid reason, driven by statute,
why the claims to the specific solvent mixture were not presented for
examination in the Kaplan patent application.

Each double patenting situation must be decided on its own facts.

Form Paragraph 8.33 and the appropriate one of Form Paragraphs 8.38
(between an issued patent and one or more applications) and 8.39
(provisional rejections) may be used to make this type of nonstatutory
double patenting rejection.

8.38 Double Patenting - Non-Statutory (Based Solely on Improper Timewise
Extension of Patent Rights) With a Patent

Claim  [1] rejected under the judicially created doctrine of double
patenting over claim  [2] of U. S. Patent No. [3] since the claims, if
allowed, would improperly extend the "right to exclude" already granted
in the patent.

The subject matter claimed in the instant application is fully disclosed
in the patent and is covered by the patent since the patent and the
application are claiming common subject matter, as follows: [4]

Furthermore, there is no apparent reason why applicant was prevented
from presenting claims corresponding to those of the instant application
during prosecution of the application which matured into a patent.  See
In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968).  See also MPEP
Section  804.

Examiner Note:

1. Use this form paragraph only when the subject matter of the claim(s)
is fully disclosed in, and covered by at least one claim of, an issued
U.S. Patent which is commonly owned or where there is common
inventorship (one or more inventors in common).

2. In bracket 3, insert the number of the patent.

3. In bracket 4, insert a description of the subject matter being
claimed which is covered in the patent.

4. Form paragraph 8.33 must precede any one of paragraphs 8.34 to 8.39
and must be used only ONCE in an Office action.

5. If evidence indicates that the conflicting patent is prior art under 
35 U.S.C. 102(f) or (g), a rejection should additionally be made under 
35 U.S.C. 102(f)/103(a) or 102(g)/103(a) using paragraph 7.21.

6. If the patent is to another inventive entity and has an earlier U.S.
filing date, a rejection under  35 U.S.C. 102(e) or 102(e)/103(a) may be
made using paragraphs 7.15.02 or 7.21.02.

8.39 Double Patenting - Non-Statutory (Based Solely on Improper Timewise
Extension of Patent Rights) With Another Application

Claim  [1] provisionally rejected under the judicially created doctrine
of double patenting over claim  [2] of copending Application No. [3]. 
This is a provisional double patenting rejection because the conflicting
claims have not in fact been patented.

The subject matter claimed in the instant application is fully disclosed
in the referenced copending application and would be covered by any
patent granted on that copending application since the referenced
copending application and the instant application are claiming common
subject matter, as follows:   [4]

Furthermore, there is no apparent reason why applicant would be
prevented from presenting claims corresponding to those of the instant
application in the other copending application.  See In re Schneller,
397 F.2d 350, 158 USPQ 210 (CCPA 1968).  See also MPEP Section  804.

Examiner Note:

1. Use this form paragraph only when the subject matter of the claim(s)
is fully disclosed in, and covered by at least one claim of, another
copending application which is commonly owned or where there is common
inventorship (one or more inventors in common).

2. In bracket 3, insert the number of the conflicting application.

3. In bracket 4, insert a description of the subject matter being
claimed which is covered in the copending application.

4. Paragraph 8.33 must precede any one of paragraphs 8.34 to 8.39 and
must be used only ONCE in an office action.

5. If the conflicting application is currently commonly assigned but the
file does not establish that the conflicting inventions were commonly
owned at the time the later invention was made, form paragraph 8.28 may
be used in place of or in addition to this form paragraph to also
resolve any issues relating to priority under  35 U.S.C. 102(f) and/or
(g).

6. A provisional double patenting rejection should also be made in the
conflicting application.

7. If evidence shows that either application is prior art unto the other
under  35 U.S.C. 102(f) or (g) and the copending application has not
been disqualified (as prior art in a 103 rejection based on common
ownership), a rejection should additionally be made in the other
application under  35 U.S.C. 102(f)/103(a) or 102(g)/103(a) using
paragraph 7.21.

8. If the disclosure of one application may be used to support a
rejection of the other and the applications have different inventive
entities and different U.S. filing dates, use paragraph 7.21.01 to
additionally make a rejection under  35 U.S.C. 102(e)/103(a).

3. Design/Plant - Utility Situations

Double patenting issues may be raised where an applicant has filed both
a utility patent application (35 U.S.C. 111) and either an application
for a plant patent (35 U.S.C. 161) or an application for a design patent
(35 U.S.C. 171). In general, the same double patenting principles and
criteria that are applied in utility-utility situations are applied to
utility-plant or utility-design situations. Double patenting rejections
in utility-plant situations may be made in appropriate circumstances.

Although double patenting is rare in the context of utility versus
design patents, a double patenting rejection of a pending design or
utility application can be made on the basis of a previously issued
utility or design patent, respectively. Carman Indus. Inc. v. Wahl, 724
F.2d 932, 220 USPQ 481 (Fed. Cir. 1983). The rejection is based on the
public policy preventing the extension of the term of a patent. Double
patenting may be found in a design-utility situation irrespective of
whether the claims in the patent relied on in the rejection and the
claims in issue involve the same invention, or whether they involve
inventions which are obvious variations of one another. In re
Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).

In Carman Indus., the court held that no double patenting existed
between a design and utility patent since the claims in the utility
patent, drawn to the interior construction of a flow promoter, were not
directed to the same invention or an obvious variation of the invention
claimed in a design patent directed to the visible external surface
configuration of a storage bin flow promoter. The majority opinion in
this decision appears to indicate that a two-way obviousness
determination is necessary in design-utility cases.  724 F.2d at 940-41,
220 USPQ at 487-88.  But see Carman Indus. (J. Nies, concurring).

In Thorington, the court affirmed a double patenting rejection of claims
for a fluorescent light bulb in a utility patent application in view of
a previously issued design patent for the same bulb. In another case, a
double patenting rejection of utility claims for a finger ring was
affirmed in view of an earlier issued design patent, where the drawing
in both the design patent and the utility application illustrated the
same article. In re Phelan, 205 F.2d 183, 98 USPQ 156 (CCPA 1953). A
double patenting rejection of a design claim for a flashlight cap and
hanger ring was affirmed over an earlier issued utility patent. In re
Barber, 81 F.2d 231, 28 USPQ 187 (CCPA 1936). A double patenting
rejection of claims in a utility patent application directed to a
balloon tire construction was affirmed over an earlier issued design
patent. In re Hargraves, 53 F.2d 900, 11 USPQ 240 (CCPA 1931).

III. CONTRAST BETWEEN DOUBLE PATENTING REJECTION AND REJECTIONS BASED ON
PRIOR ART

Rejections over a patent or another copending application based on
double patenting or  35 U.S.C. 103(a) are similar in the sense that both
require comparison of the claimed subject matter with at least part of
the content of another patent or application, and both may require that
an obviousness analysis be made. However, there are significant
differences between a rejection based on double patenting and one based
on  35 U.S.C. 102(e) prior art under  35 U.S.C. 103(a). In re Bartfeld,
925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).

One significant difference is that a double patenting rejection must
rely on a comparison with the claims in an issued or to be issued
patent, whereas an obviousness rejection based on the same patent under 
35 U.S.C. 102(e)/103(a) relies on a comparison with what is disclosed
(whether or not claimed) in the same issued or to be issued patent. In a 
35 U.S.C. 102(e)/103(a) rejection over a prior art patent, the reference
patent is available for all that it fairly discloses to one of ordinary
skill in the art, regardless of what is claimed. In re Bowers, 359 F.2d
886, 149 USPQ 570 (CCPA 1966).

A second significant difference is that a terminal disclaimer cannot be
used to obviate a rejection based on  35 U.S.C. 102(e)/103(a) prior art.
In re Fong, 378 F.2d 977, 154 USPQ 25 (CCPA 1967). The purpose of a
terminal disclaimer is to obviate a double patenting rejection by
removing the potential harm to the public by issuing a second patent,
and not to remove a patent as prior art.

Where the inventions are made by inventors that have assigned their
rights to a common assignee, the assignee can take some preemptive
measures to avoid having a copending application become prior art under 
35 U.S.C. 102(e). The applications can be filed on the same day, or
copending applications can be merged into a single continuation-in-part
application and the parent applications abandoned. If these steps are
undesirable or the first patent has issued, the prior art effect of the
first patent may be avoided by a showing under  37 CFR 1.132 that any
unclaimed invention disclosed in the first patent was derived from the
inventor of the application before the examiner in which the  35 U.S.C.
102(e)/103(a) rejection was made. In re Katz, 687 F.2d 450, 215 USPQ 14
(CCPA 1982).  See also MPEP Section  716.10.  It may also be possible
for applicant to respond to a  35 U.S.C. 102(e)/103(a) rejection by
showing, under  37 CFR 1.131, that the date of invention of the claimed
subject matter was prior to the effective filing date of the reference
patent which has been relied upon for its unclaimed disclosure. See MPEP
Section  715. See also  37 CFR 1.130 and MPEP Section  718 for
affidavits or declarations to disqualify a commonly owned patent as
prior art under  35 U.S.C. 103.

Because there are significant differences between a rejection based on
double patenting and one based on prior art under  35 U.S.C. 102(e)/103
over the same issued patent, it is both appropriate and necessary that
an examiner make both rejections when the facts support both rejections.
A prior art reference that renders claimed subject matter obvious under 
35 U.S.C. 102(e)/103(a) does not create a double patenting situation
where that subject matter is not claimed in the reference patent. Where
the subject matter that renders a claim obvious is both claimed and
disclosed in a U.S. patent which satisfies the criteria of  35 U.S.C.
102(e), the examiner should make rejections based both on double
patenting and  35 U.S.C. 103(a).

---SECTION---804.01 Prohibition of Double Patenting Rejections Under 35
U.S.C. 121

35 U.S.C. 121 authorizes the Commissioner to restrict the claims in a
patent application to a single invention when independent and distinct
inventions are presented for examination. The third sentence of  35
U.S.C. 121 prohibits the use of a patent issuing on an application with
respect to which a requirement for restriction has been made, or on an
application filed as a result of such a requirement, as a reference
against any divisional application, if the divisional application is
filed before the issuance of the patent. The  35 U.S.C. 121 prohibition
applies only where the Office has made a requirement for restriction.
The prohibition does not apply where the divisional application was
voluntarily filed by the applicant and not in response to an Office
requirement for restriction. This apparent nullification of double
patenting as a ground of rejection or invalidity in such cases imposes a
heavy burden on the Office to guard against erroneous requirements for
restrictions where the claims define essentially the same invention in
different language and which, if acquiesced in, might result in the
issuance of several patents for the same invention.

The prohibition against holdings of double patenting applies to
requirements for restriction between the related subjects treated in
MPEP Section  806.04 through Section  806.05(i), namely, between
combination and subcombination thereof, between subcombinations
disclosed as usable together, between process and apparatus for its
practice, between process and product made by such process and between
apparatus and product made by such apparatus, etc., so long as the
claims in each case are filed as a result of such requirement.

The following are situations where the prohibition of double patenting
rejections under  35 U.S.C. 121 does not apply:

(A) The applicant voluntarily files two or more cases without a
restriction requirement by the examiner. In re Schneller, 397 F.2d 350,
158 USPQ 210 (CCPA 1968).

(B) The claims of the different applications or patents are not
consonant with the restriction requirement made by the examiner, since
the claims have been changed in material respects from the claims at the
time the requirement was made. For example, the divisional application
filed includes additional claims not consonant in scope to the original
claims subject to restriction in the parent. Symbol Technologies, Inc.
v.   Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991) and  
Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 916 F.2d 683,
16 USPQ2d 1436 (Fed. Cir. 1990). In order for consonance to exist, the
line of demarcation between the independent and distinct inventions
identified by the examiner in the requirement for restriction must be
maintained. 916 F.2d at 688, 16 USPQ2d  .

(C) The restriction requirement was written in a manner which made it
clear to applicant that the requirement was made subject to the
nonallowance of generic or other linking claims and such generic or
linking claims are subsequently allowed. Therefore, if a generic or
linking claim is subsequently allowed, the restriction requirement must
be withdrawn.

(D) The requirement for restriction (holding of lack of unity of
invention) was only made in an international application by the
International Searching Authority or the International Preliminary
Examining Authority.

(E) The requirement for restriction was withdrawn by the examiner before
the patent issues. In re Ziegler, 443 F.2d 1211, 170 USPQ 129 (CCPA
1971).

(F) The claims of the second application are drawn to the "same
invention" as the first application or patent. Studiengesellschaft Kohle
mbH v.   Northern Petrochemical Co., 784 F.2d 351, 228 USPQ 837 (Fed.
Cir. 1986).

While the situation should not arise where appropriate care is exercised
in defining the independent and distinct inventions in a restriction
requirement, the issue might arise as to whether  35 U.S.C. 121 prevents
the use of a double patenting rejection when the identical invention is
claimed in both the patent and the pending application. Under these
circumstances, the Office will make the double patenting rejection
because the patentee is entitled only to a single patent for an
invention. As expressed in Studiengesellschaft Kohle, 784 F.2d at 361,
228 USPQ at 844, (J. Newman, concurring), " 35 U.S.C. 121 of course does
not provide that multiple patents may be granted on the identical
invention."

---SECTION---804.02 Avoiding a Double Patenting Rejection

I. STATUTORY

A rejection based on the statutory type of double patenting can be
avoided by canceling the conflicting claims in all but one of the
pending application(s) or patent, or by amending the conflicting claims
so that they are not coextensive in scope. A terminal disclaimer is not
effective in overcoming a statutory double patenting rejection.

The use of a  37 CFR 1.131 affidavit in overcoming a statutory double
patenting rejection is inappropriate. In re Dunn, 349 F.2d 433, 146 USPQ
479 (CCPA 1965). Knell v. Muller, 174 USPQ 460 (Comm'r. Pat. 1971),
citing the CCPA decisions in In re Ward, 236 F.2d 428, 111 USPQ 101
(CCPA 1956); In re Teague, 254 F.2d 145, 117 USPQ 284 (CCPA 1958); and
In re Hidy, 303 F.2d 954, 133 USPQ 650 (CCPA 1962).

II. NONSTATUTORY

37 CFR 1.130 Affidavit or declaration to disqualify commonly owned
patent as prior art.

                  +++    

(b) When an application or a patent under reexamination claims an
invention which is not patentably distinct from an invention claimed in
a commonly owned patent with the same or a different inventive entity, a
double patenting rejection will be made in the application or a patent
under reexamination. A judicially created double patenting rejection may
be obviated by filing a terminal disclaimer in accordance with Section 
1.321(c).

A rejection based on a nonstatutory type of double patenting can be
avoided by filing a terminal disclaimer in the application or proceeding
in which the rejection is made. In re Vogel, 422 F.2d 438, 164 USPQ 619
(CCPA 1970); In re Knohl, 386 F.2d 476, 155 USPQ 586 (CCPA 1967); and  
In re Griswold, 365 F.2d 834, 150 USPQ 804 (CCPA 1966). The use of a
terminal disclaimer in overcoming a nonstatutory double patenting
rejection is in the public interest because it encourages the disclosure
of additional developments, the earlier filing of applications, and the
earlier expiration of patents whereby the inventions covered become
freely available to the public. In re Jentoft, 392 F.2d 633, 157 USPQ
363 (CCPA 1968); In re Eckel, 393 F.2d 848, 157 USPQ 415 (CCPA 1968);
and   In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967).

The use of a  37 CFR 1.131 affidavit in overcoming a double patenting
rejection is inappropriate because the claim or claims in the
application are being rejected over a patent which claims the rejected
invention. In re Dunn, 349 F.2d 433, 146 USPQ 479 (CCPA 1965).  37 CFR
1.131 is inapplicable if the claims of the application and the patent
are "directed to substantially the same invention".  It is also
inapplicable if there is a lack of "patentable distinctness" between the
claimed subject matter. Knell v.   Muller, 174 USPQ 460 (Comm'r. Pat.
1971), citing the court decisions in In re Ward, 236 F.2d 428, 111 USPQ
101 (CCPA 1956); In re Teague, 254 F.2d 145, 117 USPQ 284 (CCPA 1958);
and In re Hidy, 303 F.2d 954, 133 USPQ 65 (CCPA 1962).

The Office cannot ensure that two or more applications will have a
common issue date. Applicants are cautioned that reliance upon a common
issue date cannot effectively substitute for the filing of one or more
terminal disclaimers in order to overcome a proper double patenting
rejection, particularly since a common issue date alone does not avoid
the potential problem of dual ownership of patents to patentably
indistinct inventions.

A patentee or applicant may disclaim or dedicate to the public the
entire term, or any terminal part of the term of a patent.  35 U.S.C.
253. The statute does not provide for a terminal disclaimer of only a
specified claim or claims. The terminal disclaimer must operate with
respect to all claims in the patent.

The filing of a terminal disclaimer to obviate a rejection based on
nonstatutory double patenting is not an admission of the propriety of
the rejection. Quad Environmental Technologies Corp. v. Union Sanitary
District, 946 F.2d 870, 20 USPQ2d 1392 (Fed. Cir. 1991). The court
indicated that the "filing of a terminal disclaimer simply serves the
statutory function of removing the rejection of double patenting, and
raises neither a presumption nor estoppel on the merits of the
rejection."

A terminal disclaimer filed to obviate a double patenting rejection is
effective only with respect to the application identified in the
disclaimer, unless by its terms it extends to continuing applications.
If an appropriate double patenting rejection of the nonstatutory type is
made in two or more pending applications, an appropriate terminal
disclaimer must be filed in each application.

Claims that differ from each other (aside from minor differences in
language, punctuation, etc.), whether or not the difference is obvious,
are not considered to be drawn to the same invention for double
patenting purposes under  35 U.S.C. 101. In cases where the difference
in claims is obvious, terminal disclaimers are effective to overcome
double patenting rejections. However, such terminal disclaimers must
include a provision that the patent shall be unenforceable if it ceases
to be commonly owned with the other application or patent. Note  37 CFR
1.321(c). It should be emphasized that a terminal disclaimer cannot be
used to overcome a rejection under  35 U.S.C. 102(e)/103(a).

III. REQUIREMENTS OF A TERMINAL DISCLAIMER

A terminal disclaimer is a statement filed by an owner (in whole or in
part) of a patent or a patent to be granted that is used to disclaim or
dedicate a portion of the entire term of all the claims of a patent. The
requirements for a terminal disclaimer are set forth in  37 CFR 1.321.
Sample forms of a terminal disclaimer are provided in MPEP Section 
1490.

IV. TERMINAL DISCLAIMERS REQUIRED TO OVERCOME JUDICIALLY CREATED DOUBLE
PATENTING REJECTIONS IN APPLICATIONS FILED ON OR AFTER JUNE 8, 1995

Public Law 103-465 (1994) amended  35 U.S.C. 154(a)(2) to provide that
any patent issuing on a utility or plant application filed on or after
June 8, 1995 will expire 20 years from its filing date, or, if the
application claims the benefit of an earlier filed application under  35
U.S.C. 120, 121, or 365(c), 20 years from the earliest filing date for
which a benefit under  35 U.S.C. 120, 121, or 365(c) is claimed.
Therefore, any patent issuing on a continuing utility or plant
application filed on or after June 8, 1995 will expire 20 years from the
earliest filing date for which a benefit is claimed under  35 U.S.C.
120, 121, or 365(c), subject to the provisions of  35 U.S.C. 154(b).

There are at least two reasons for insisting upon a terminal disclaimer
to overcome a judicially created double patenting rejection in a
continuing application subject to a 20-year term under  35 U.S.C.
154(a)(2). First,  35 U.S.C. 154(b) includes provisions for patent term
extension based upon prosecution delays during the application process.
Thus,  35 U.S.C. 154 does not ensure that any patent issuing on a
continuing utility or plant application filed on or after June 8, 1995
will necessarily expire 20 years from the earliest filing date for which
a benefit is claimed under  35 U.S.C. 120, 121, or 365(c).  Second,  37
CFR 1.321(c)(3) requires that a terminal disclaimer filed to obviate a
double patenting rejection include a provision that any patent granted
on that application be enforceable only for and during the period that
the patent is commonly owned with the application or patent which formed
the basis for the rejection.  This requirement serves to avoid the
potential for harassment of an accused infringer by multiple parties
with patents covering the same patentable invention (37 CFR 1.601(n)). 
See, e.g., In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70
(CCPA 1982).  Not insisting upon a terminal disclaimer to overcome a
judicially created double patenting rejection in an application subject
to a 20-year term under  35 U.S.C. 154(a)(2) would result in the
potential for the problem that  37 CFR 1.321(c)(3) was promulgated to
avoid. 

Accordingly, a terminal disclaimer under  37 CFR 1.321 is required in an
application to overcome a judicially created double patenting rejection,
even if the application was filed on or after June 8, 1995 and claims
the benefit under  35 U.S.C. 120, 121, or 365(c) of the filing date of
the patent or application which forms the basis for the rejection.
Examiners should respond to arguments that a terminal disclaimer under 
37 CFR 1.321 should not be required in a continuing application filed on
or after June 8, 1995 to overcome a judicially created double patenting
rejection due to the change to  35 U.S.C. 154 by citing to this section
of the MPEP or to the Official Gazette notice at 1202 O.G. 112 (Sept.
30, 1997).

---SECTION---804.03 Treatment of Commonly Owned Cases of Different
Inventive Entities

37 CFR 1.78 Claiming benefit of earlier filing date and cross references
to other applications.

                  +++    

(c) Where an application or a patent under reexamination and at least
one other application naming different inventors are owned by the same
party and contain conflicting claims, and there is no statement of
record indicating that the claimed inventions were commonly owned or
subject to an obligation of assignment to the same person at the time
the later invention was made, the assignee may be called upon to state
whether the claimed inventions were commonly owned or subject to an
obligation of assignment to the same person at the time the later
invention was made, and if not, indicate which named inventor is the
prior inventor.

37 CFR 1.130 Affidavit or declaration to disqualify commonly owned
patent as prior art.

                  +++    

(b) When an application or a patent under reexamination claims an
invention which is not patentably distinct from an invention claimed in
a commonly owned patent with the same or a different inventive entity, a
double patenting rejection will be made in the application or a patent
under reexamination. A judicially created double patenting rejection may
be obviated by filing a terminal disclaimer in accordance with Section 
1.321(c).

I. DOUBLE PATENTING

The Office has withdrawn the Commissioner's Notice of January 9, 1967,
Double Patenting, 834 O.G. 1615 (Jan. 31, 1967), to the extent that it
does not authorize a double patenting rejection where different
inventive entities are present. The examiner may reject claims in
commonly owned applications of different inventive entities on the
ground of double patenting. This is in accordance with existing case law
and prevents an organization from obtaining two or more patents with
different expiration dates covering nearly identical subject matter. See
In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963) (the doctrine
is well established that claims in different applications need be more
than merely different in form or content and that patentable distinction
must exist to entitle applicants to a second patent) and   In re
Christensen, 330 F.2d 652, 141 USPQ 295 (CCPA 1964).

Double patenting rejections can be overcome in certain circumstances by
disclaiming, pursuant to the provisions of  37 CFR 1.321, the terminal
portion of the term of the later patent and including in the disclaimer
a provision that the patent shall be enforceable only for and during the
period the patent is commonly owned with the application or patent which
formed the basis for the rejection, thereby eliminating the problem of
extending patent life.  37 CFR 1.130(b).

II. DETERMINING PRIORITY; REJECTIONS UNDER 35 U.S.C. 102 AND 103

A determination of priority is not required when two inventions come
within the provisions of  35 U.S.C. 103(c). Two inventions of different
inventive entities come within the provisions of  35 U.S.C. 103(c) when:

(A) the later invention is not anticipated by the earlier invention
under  35 U.S.C. 102;

(B) the earlier invention qualifies as prior art against the later
invention only under subsection (f) or (g) of  35 U.S.C. 102; and

(C) the inventions were, at the time the later invention was made, owned
by the same person or subject to an obligation of assignment to the same
person. If the two inventions come within the provisions of  35 U.S.C.
103(c), it is not necessary to determine priority of invention since the
earlier invention is disqualified as prior art against the later
invention and since double patenting rejections can be used to ensure
that the patent terms expire together. In circumstances where the
inventions of different inventive entities come within the provisions of 
35 U.S.C. 103(c), no inquiry under  37 CFR 1.78(c) should be made since
it is unnecessary to determine the prior inventor. However, if there is
no evidence that claims of applications of different inventive entities
come within the provisions of  35 U.S.C. 103(c) and if the applications
are owned by the same party and contain conflicting claims, it is
necessary to determine the prior inventor unless the conflicting claims
by all but one inventive entity are eliminated.

Form Paragraphs 8.27, 8.28, and 8.28.01 may be used to require the
applicant to name the prior inventor under  37 CFR 1.78(c).

Before making the requirement to state the prior inventor under  37 CFR
1.78(c), with its threat to hold the case abandoned if the statement is
not made by the assignee, the examiner must make sure that claims are
present in each case which are conflicting as defined in MPEP Section 
804. See In re Rekers, 203 USPQ 1034 (Comm'r Pat. 1979).

In some situations the application file wrappers may reflect which
invention is the prior invention, e.g., by reciting that one invention
is an improvement of the other invention. See Margolis v. Banner, 599
F.2d 435, 202 USPQ 365 (CCPA 1979) (Court refused to uphold a holding of
abandonment for failure to name the prior inventor since the record
showed what was invented by the different inventive entities and who was
the prior inventor.).

An application in which a requirement to name the prior inventor has
been made will not be held abandoned where a timely response indicates
that the other application is abandoned or will be permitted to become
abandoned and will not be filed as a continuing application. Such a
response will be considered sufficient since it renders the requirement
to identify the prior inventor moot because the existence of conflicting
claims is eliminated.

If, after taking out a patent, a common assignee presents claims for the
first time in a copending application by different inventive entities
not patentably distinct from the claims in the patent, the claims of the
application should be rejected on the ground that the assignee, by
taking out the patent at a time when the application was not claiming
the patented invention, is estopped to contend that the patentee is not
the prior inventor. This rejection could be overcome if the requirements
of  35 U.S.C. 103(c) are met.

8.27 Different Inventors, Common Assignee, Same Invention

Claim  [1] directed to the same invention as that of claim  [2] of
commonly assigned [3].  The issue of priority under  35 U.S.C. 102(g)
and possibly  35 U.S.C. 102(f) of this single invention must be
resolved.

Since the Patent and Trademark Office normally will not institute an
interference between applications or a patent and an application of
common ownership (see MPEP Section  2302), the assignee is required to
state which entity is the prior inventor of the conflicting subject
matter.  A terminal disclaimer has no effect in this situation since the
basis for refusing more than one patent is priority of invention under 
35 U.S.C. 102(f) or (g) and not an extension of monopoly.

Failure to comply with this requirement will result in a holding of
abandonment of this application.

Examiner Note:

1. In bracket 3, insert the U.S. patent number or the copending
application number.

2. The claims listed in brackets 1 and 2 must be for the same invention. 
If one invention is obvious in view of the other, do not use this
paragraph; see form paragraph 8.28.

3. A provisional or actual statutory double patenting rejection may also
be made using form paragraphs 8.31 or 8.32.

4. If the commonly assigned application or patent has an earlier U.S.
filing date, a rejection under  35 U.S.C. 102(e) may also be made using
form paragraph 7.15.01 or 7.15.02.

8.28 Different Inventors, Common Assignee, Obvious Inventions, No
Evidence of Common Ownership at Time of Invention

Claim  [1] directed to an invention not patentably distinct from claim 
[2] of commonly assigned   [3].  Specifically, [4].

Examiner Note:

1. This paragraph should be used when the application being examined is
commonly assigned with a conflicting application or patent, but there is
no indication that they were commonly assigned at the time the invention
was actually made.

2. If the conflicting claims are in a patent with an earlier U.S. filing
date, make a rejection under  35 U.S.C. 102(e)/103(a) using paragraph
7.21 in addition to this paragraph.

3. If the conflicting claims are in a commonly assigned, copending
application with an earlier filing date, make a provisional
102(e)/103(a) rejection using paragraph 7.20 and 7.21.01 in addition to
this para graph.

4. In bracket 3, insert the number of the conflicting patent or appli
cation.

5. An obviousness double patenting rejection may also be included in the
action using paragraphs 8.34 to 8.36.

6. In bracket 4, explain why the claims in the conflicting cases are not
considered to be distinct.

7. Form paragraph 8.28.01 MUST follow this paragraph.

A showing the the inventions were commonly owned at the time the
invention in this application was made will preclude a rejection under 
35 U.S.C. 103(a) based upon the commonly assigned case as a reference
under  35 U.S.C. 102(f) or (g).

8.28.01 Advisory Information Relating to Paragraph 8.28

Commonly assigned [1], discussed above, would form the basis for a
rejection of the noted claims under  35 U.S.C. 103(a) if the commonly
assigned case qualifies as prior art under  35 U.S.C. 102(f) or (g) and
the conflicting inventions were not commonly owned at the time the
invention in this application was made.  In order for the examiner to
resolve this issue, the assignee is required under  37 CFR 1.78(c) and 
35 U.S.C. 132 to either show that the conflicting inventions were
commonly owned at the time the invention in this application was made or
to name the prior inventor of the conflicting subject matter.  Failure
to comply with this requirement will result in a holding of abandonment
of the application.

A showing that the inventions were commonly owned at the time the
invention in this application was made will preclude a rejection under 
35 U.S.C. 103(a) based upon the commonly assigned case as a reference
under  35 U.S.C. 102(f) or (g).

Examiner Note:

This form paragraph should follow paragraph 8.28 and should only be used
ONCE in an Office action.

If evidence is of record to indicate that one patent or application is
prior art under  35 U.S.C. 102(f) or (g) or 102(f)/103(a) or
102(g)/103(a) to another application, and the inventions do not fall
within  35 U.S.C. 103(c), the examiner should also reject the claims of
the other application under  35 U.S.C. 102(f), 102(g), 102(f)/103(a) or
102(g)/103(a) using the appropriate one(s) of Form Paragraphs 7.15,
7.19, 7.21 and 7.21.01. Rejections under  35 U.S.C. 102 or 103 cannot be
obviated solely by filing a terminal disclaimer.

7.15 Rejection, 35 U.S.C. 102(a), (b) Patent or Publication, and (g)

Claim[1] rejected under  35 U.S.C. 102([2]) as being [3] by [4].

Examiner Note:

1. In bracket 2, insert the appropriate paragraph letter or letters of
35 U.S.C 102 in parentheses. If paragraph (e) of  35 U.S.C. 102 is
applicable, use form paragraph 7.15.02.

2. In bracket 3, insert either "anticipated" or "clearly anticipated"
with an explanation at the end of the paragraph.

3. In bracket 4, insert the prior art relied upon.

4. This rejection must be preceded either by paragraph 7.07 and
paragraphs 7.08, 7.09, and 7.14 as appropriate, or by paragraph 7.103.

5. If  35 U.S.C. 102(e) is also being applied, this paragraph must be
followed by either form paragraph 7.15.02 or 7.15.03.

7.19 Rejection, 35 U.S.C. 102(f), Applicant Not the Inventor

Claim [1] rejected under  35 U.S.C. 102(f) because the applicant did not
invent the claimed subject matter. [2].

Examiner Note:

1. This paragraph must be preceded either by paragraphs 7.07 and 7.13 or
by paragraph 7.103.

2. In bracket 2, insert an explanation of the supporting evidence
establishing that applicant was not the inventor.  See MPEP Section 
2137.

7.21 Rejection, 35 U.S.C. 103(a)

Claim  [1] rejected under  35 U.S.C. 103(a) as being unpatentable over  
[2].

Examiner Note:

1. This paragraph must be preceded by either form paragraph 7.20 or form
paragraph 7.103.

2. An explanation of the rejection applying the Graham v. Deere test
must follow this form paragraph.

3. If this rejection relies upon art that is disqualified under  35
U.S.C. 102(f) or (g) based upon the common ownership of the invention,
paragraph 7.20.01 must follow this paragraph.

4. If this rejection is a provisional  35 U.S.C. 103(a) rejection based
upon a copending application that would comprise prior art under  35
U.S.C. 102(e) if patented, use paragraph 7.21.01 instead of this
paragraph.

7.21.01 Provisional Rejection, 35 U.S.C. 103(a), Common Assignee or At
Least One Common Inventor Only

Claim[1] provisionally rejected under  35 U.S.C. 103(a) as being obvious
over copending Application No. [2] which has a common [3] with the
instant application. Based upon the earlier effective U.S. filing date
of the copending application, it would constitute prior art under  35
U.S.C. 102(e) if patented. This provisional rejection under  35 U.S.C.
103 is based upon a presumption of future patenting of the conflicting
application. [4].

This provisional rejection might be overcome either by a showing under 
37 CFR 1.132 that any invention disclosed but not claimed in the
copending application was derived from the inventor of this application
and is thus not the invention "by another", or by a showing of a date of
invention for the instant application prior to the effective U.S. filing
date of the copending application under  37 CFR 1.131.

Examiner Note:

1. This paragraph is used to provisionally reject claims not patentably
distinct from the disclosure in a copending application having an
earlier U.S. filing date and also having either a common assignee or at
least one common inventor.

2. If the claimed invention is fully disclosed in the copending
application, use paragraph 7.15.01.

3. In bracket 3, insert either "assignee" or "inventor".

4. In bracket 4, insert explanation of obviousness.

5. If the claimed invention is also claimed in the copending
application, a provisional obviousness double patenting rejection should
additionally be made using paragraph 8.33 and 8.37.

6. If evidence indicates that the copending application is also prior
art under  35 U.S.C. 102(f) or (g) and the copending application has not
been disqualified as prior art in a  35 U.S.C. 103(a) rejection based
upon common ownership, a rejection should additionally be made under  35
U.S.C. 103(a) using paragraph 7.21 (e.g., applicant has named the prior
inventor in response to a requirement made using paragraph 8.28).

Further, if the conflicting applications have different effective U.S.
filing dates, the examiner should consider making a provisional
rejection in the later filed application, based on the earlier filed
application, under  35 U.S.C. 102(e) or 102(e)/103(a), using Form
Paragraph 7.15.01 or 7.21.01. Similarly, if an application has a later
effective U.S. filing date than a conflicting issued patent, the
examiner should consider making a rejection in the application, based on
the patent, under  35 U.S.C. 102(e) or 102(e)/103(a), using Form
Paragraph 7.15.02 or 7.21.02.  Rejections under  35 U.S.C. 102 or 103
cannot be obviated solely by the filing of a terminal disclaimer.

7.15.01 Provisional Rejection, 35 U.S.C. 102(e) - Common Assignee or At
Least One Common Inventor

Claim  [1] provisionally rejected under  35 U.S.C. 102(e) as being
anticipated by copending Application No. [2] which has a common [3] with
the instant application.

Based upon the earlier effective U.S. filing date of the copending
application, it would constitute prior art under  35 U.S.C. 102(e), if
patented.  This provisional rejection under  35 U.S.C. 102(e) is based
upon a presumption of future patenting of the copending application.
[4].

This provisional rejection under  35 U.S.C. 102(e) might be overcome
either by a showing under  37 CFR 1.132 that any invention disclosed but
not claimed in the copending application was derived from the inventor
of this application and is thus not the invention "by another," or by an
appropriate showing under  37 CFR 1.131. 

This rejection may not be overcome by the filing of a terminal
disclaimer.  See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed.
Cir. 1991).

Examiner Note:

1. This paragraph is used to provisionally reject over a copending
application with an earlier filing date that discloses the claimed
invention.  The copending application must have either a common assignee
or at least one common inventor.

2. If the claims are obvious over the invention disclosed in the other
copending application, use paragraph 7.21.01.

3. In bracket 3, insert either --assignee--  or --inventor--.

4. In bracket 4, an appropriate explanation may be provided in support
of the examiner's position on anticipation, if necessary.

5. If the claims of the copending application conflict with the claims
of the instant application, a provisional double patenting rejection
should also be given using paragraphs 8.30 and 8.32.

6. If evidence is additionally of record to show that either invention
is prior art unto the other under  35 U.S.C. 102(f) or (g), a rejection
using paragraphs 7.13 and/or 7.14 should also be made.

7.15.02 Rejection, 35 U.S.C. 102(e), Common Assignee or Inventor(s)

Claim  [1] rejected under  35 U.S.C. 102(e) as being anticipated by [2].

The applied reference has a common [3] with the instant application. 
Based upon the earlier effective U.S. filing date of the reference, it
constitutes prior art under  35 U.S.C. 102(e). This rejection under  35
U.S.C. 102(e) might be overcome either by a showing under  37 CFR 1.132
that any invention disclosed but not claimed in the reference was
derived from the inventor of this application and is thus not the
invention "by another," or by an appropriate showing under  37 CFR
1.131.

Examiner Note:

1. This paragraph is used to reject over a patent with an earlier filing
date that discloses but does not claim the same invention.  The patent
must have either a common assignee or a common inventor.

2. In bracket 3, insert either --assignee--  or  --inventor--.

7.21.02 Rejection, 35 U.S.C. 103(a), Common Assignee or At Least One
Common Inventor

Claim  [1] rejected under  35 U.S.C. 103(a) as being obvious over [2].

The applied reference has a common [3] with the instant application. 
Based upon the earlier effective U.S. filing date of the reference, it
constitutes prior art under  35 U.S.C. 102(e).  This rejection under  35
U.S.C. 103(a) might be overcome by: (1) a showing under  37 CFR 1.132
that any invention disclosed but not claimed in the reference was
derived from the inventor of this application and is thus not an
invention "by another"; (2) a showing of a date of invention for the
claimed subject matter of the application which corresponds to subject
matter disclosed but not claimed in the reference, prior to the
effective U.S. filing date of the reference under  37 CFR 1.131; or (3)
an oath or declaration under  37 CFR 1.130 stating that the application
and reference are currently owned by the same party and that the
inventor named in the application is the prior inventor under  35 U.S.C.
104, together with a terminal disclaimer in accordance with  37 CFR
1.321(c). [4]

Examiner Note:

1. This paragraph is used to reject over a patent with an earlier filing
date that discloses the claimed invention.  The patent must have either
a common assignee or at least one common inventor.

2. In bracket 3, insert either --assignee-- or --inventor--.

3. In bracket 4, insert explanation of obviousness.

---SECTION---804.04 Submission to Group Director

In order to promote uniform practice, every Office action containing a
rejection on the ground of double patenting which relies on the parent
application rejecting the claims in a divisional or continuing
application where the divisional or continuing application was filed
because of a requirement to restrict made by the examiner under  35
U.S.C. 121, including a requirement to elect species, must be submitted
to the Group Director for approval prior to mailing. If the rejection on
the ground of double patenting is disapproved, it shall not be mailed
but other appropriate action shall be taken.  Note MPEP Section  1003.

---SECTION---805 Effect of Improper Joinder in Patent

35 U.S.C. 121, last sentence, provides "the validity of a patent shall
not be questioned for failure of the Commissioner to require the
application to be restricted to one invention."  In other words, under
this statute, no patent can be held void for improper joinder of
inventions claimed therein.

---SECTION---806 Determination of Distinctness or Independence of
Claimed Inventions

The general principles relating to distinctness or independence may be
summarized as follows:

(A) Where inventions are independent (i.e., no disclosed relation
therebetween), restriction to one thereof is ordinarily proper,  MPEP
Section  806.04 -  Section  806.04(i), though a reasonable number of
species may be claimed when there is an allowed (novel and unobvious)
claim generic thereto.  37 CFR 1.141,  MPEP Section  809.02 -  Section 
809.02(e).

(B) Where inventions are related as disclosed but are distinct as
claimed, restriction may be proper.

(C) Where inventions are related as disclosed but are not distinct as
claimed, restriction is never proper.

Where restriction is required by the Office double patenting cannot be
held, and thus, it is imperative the requirement should never be made
where related inventions as claimed are not distinct.  For (B) and (C)
see MPEP Section  806.05 -  Section  806.05(i) and Section  809.03. See
MPEP Section  802.01 for criteria for patentably distinct inventions.

---SECTION---806.01 Compare Claimed Subject Matter

In passing upon questions of double patenting and restriction, it is the
claimed subject matter that is considered and such claimed subject
matter must be compared in order to determine the question of
distinctness or independence.

---SECTION---806.02 Patentability Over the Prior Art Not Considered

For the purpose of a decision on the question of restriction, and for
this purpose only, the claims are ordinarily assumed to be in proper
form and patentable (novel and unobvious) over the prior art.

This assumption, of course, is not continued after the question of
restriction is settled and the question of patentability of the several
claims in view of prior art is taken up.

---SECTION---806.03 Single Embodiment, Claims Defining Same Essential
Features

Where the claims of an application define the same essential
characteristics of a single disclosed embodiment of an invention,
restriction therebetween should never be required. This is because the
claims are but different definitions of the same disclosed subject
matter, varying in breadth or scope of definition.

Where such claims appear in different applications optionally filed by
the same inventor, disclosing the same embodiments, see MPEP Section 
804 -  Section  804.02.

---SECTION---806.04 Independent Inventions

If it can be shown that the two or more inventions are in fact
independent, applicant should be required to restrict the claims
presented to but one of such independent inventions. For example:

(A) Two different combinations, not disclosed as capable of use
together, having different modes of operation, different functions or
different effects are independent. An article of apparel such as a shoe,
and a locomotive bearing would be an example. A process of painting a
house and a process of boring a well would be a second example.

(B) Where the two inventions are process and apparatus, and the
apparatus cannot be used to practice the process or any part thereof,
they are independent. A specific process of molding is independent from
a molding apparatus which cannot be used to practice the specific
process.

(C) Where species under a genus are independent, for example, a genus of
paper clips having species differing in the manner in which a section of
the wire is formed in order to achieve a greater increase in its holding
power.

SPECIES ARE TREATED EXTENSIVELY IN THE FOLLOWING SECTIONS.

---SECTION---806.04(a) Species - Genus

35 U.S.C. 121 provides that restriction may be required to one of two or
more independent and distinct inventions.  However,  37 CFR 1.141
provides that a reasonable number of species may still be claimed in one
application if the other conditions of the rule are met.

---SECTION---806.04(b) Species May Be Related Inventions

Species, while usually independent, may be related under the particular
disclosure. Where inventions as disclosed and claimed are both (A)
species under a claimed genus and (B) related, then the question of
restriction must be determined by both the practice applicable to
election of species and the practice applicable to other types of
restrictions such as those covered in MPEP Section  806.05 -  Section 
806.05(i). If restriction is improper under either practice, it should
not be required.

For example, two different subcombinations usable with each other may
each be a species of some common generic invention. In Ex parte Healy,
1898 C.D. 157, 84 O.G. 1281 (Comm'r Pat. 1898), a clamp for a handle bar
stem and a specifically different clamp for a seat post both usable
together on a bicycle were claimed. In his decision, the Commissioner
considered both the restriction practice under election of species and
the practice applicable to restriction between combination and
subcombinations.

As a further example, species of carbon compounds may be related to each
other as intermediate and final product. Thus, these species are not
independent and in order to sustain a restriction requirement,
distinctness must be shown. Distinctness is proven if it can be shown
that the intermediate product is useful other than to make the final
product. Otherwise, the disclosed relationship would preclude their
being issued in separate patents.

Form Paragraph 8.14 may be used in intermediate -  final product
restriction requirements.

8.14 Intermediate-Final Product

Inventions [1] and   [2] are related as mutually exclusive species in an
intermediate-final product relationship.  Distinctness is proven for
claims in this relationship if the intermediate product is useful to
make other than the final product (MPEP Section  806.04(b), 3rd
paragraph), and the species are patentably distinct (MPEP Section 
806.04(h)).  In the instant case, the intermediate product is deemed to
be useful as   [3] and the inventions are deemed patentably distinct
since there is nothing on this record to show them to be obvious
variants.  Should applicant traverse on the ground that the species are
not patentably distinct, applicant should submit evidence or identify
such evidence now of record showing the species to be obvious variants
or clearly admit on the record that this is the case.  In either
instance, if the examiner finds one of the inventions anticipated by the
prior art, the evidence or admission may be used in a rejection under 
35 U.S.C. 103(a) of the other invention.

Examiner Note:

1. This form paragraph is to be used when claims are presented to both
an intermediate and final product (MPEP Section  806.04(b)).

2. Conclude restriction requirement with one of form paragraphs 8.21.01
through 8.21.03.

The intermediate and final product must have a mutually exclusive
species relationship and as with all species restrictions, must be
patentably distinct.

Typically, the intermediate loses its identity in the final product.

Additionally, the intermediate must be shown to be useful to make other
than the final product. The examiner must give an example of an
alternative use but need not provide documentation. Applicant then has
the burden to prove or provide a convincing argument that the
intermediate does not have the suggested use.

---SECTION---806.04(c) Subcombination Not Generic to Combination

The situation is frequently presented where two different combinations
are disclosed, having a subcombination common to each. It is frequently
puzzling to determine whether a claim readable on two different
combinations is generic thereto.

This was recognized in Ex parte Smith, 1888 C.D. 131, 44 O.G.1183
(Comm'r Pat. 1888), where it was held that a subcombination was not
generic to the different combinations in which it was used.

To exemplify, a claim that defines only the subcombination, e.g., the
mechanical structure of a joint, is not a generic or genus claim to two
different combinations, e.g., a doughnut cooker and an automobile
transmission, each of which utilizes the same form of joint.

---SECTION---806.04(d) Definition of a Generic Claim

In an application presenting three species illustrated, for example, in
Figures 1, 2, and 3, respectively, a generic claim should read on each
of these views; but the fact that a claim does so read is not conclusive
that it is generic. It may define only an element or subcombination
common to the several species.

It is not possible to define a generic claim with that precision
existing in the case of a geometrical term. In general, a generic claim
should include no material element additional to those recited in the
species claims, and must comprehend within its confines the organization
covered in each of the species.

For the purpose of obtaining claims to more than one species in the same
case, the generic claim cannot include limitations not present in each
of the added species claims. Otherwise stated, the claims to the species
which can be included in a case in addition to a single species must
contain all the limitations of the generic claim.

Once a claim that is determined to be generic is allowed, all of the
claims drawn to species in addition to the elected species which include
all the limitations of the generic claim will ordinarily be obviously
allowable in view of the allowance of the generic claim, since the
additional species will depend thereon or otherwise include all of the
limitations thereof. When all or some of the claims directed to one of
the species in addition to the elected species do not include all the
limitations of the generic claim, then that species cannot be claimed in
the same case with the other species. See MPEP Section  809.02(c).

---SECTION---806.04(e) Claims Restricted to Species

Claims are definitions of inventions. Claims are never species. Claims
may be restricted to a single disclosed embodiment (i.e., a single
species, and thus be designated a specific species claim), or a claim
may include two or more of the disclosed embodiments within the breadth
and scope of definition (and thus be designated a generic or genus
claim).

Species are always the specifically different embodiments.

Species are usually but not always independent as disclosed (see MPEP
Section  806.04(b)) since there is usually no disclosure of relationship
therebetween. The fact that a genus for two different embodiments is
capable of being conceived and defined, does not affect the independence
of the embodiments, where the case under consideration contains no
disclosure of any commonality of operation, function or effect.

---SECTION---806.04(f) Claims Restricted to Species, by Mutually
Exclusive Characteristics

Claims to be restricted to different species must be mutually exclusive.
The general test as to when claims are restricted, respectively, to
different species is the fact that one claim recites limitations which
under the disclosure are found in a first species but not in a second,
while a second claim recites limitations disclosed only for the second
species and not the first. This is frequently expressed by saying that
claims to be restricted to different species must recite the mutually
exclusive characteristics of such species.

---SECTION---806.04(h) Species Must Be Patentably Distinct From Each
Other

Where an applicant files a divisional application claiming a species
previously claimed but nonelected in the parent case, pursuant to and
consonant with a requirement to restrict, there should be no
determination of whether or not the species claimed in the divisional
application is patentable over the species retained in the parent case
since such a determination was made before the requirement to restrict
was made.

In a national application containing claims directed to more than a
reasonable number of species, the examiner should not require
restriction to a reasonable number of species unless he or she is
satisfied that he or she would be prepared to allow claims to each of
the claimed species over the parent case, if presented in a divisional
application filed according to the requirement. Restriction should not
be required if the species claimed are considered clearly unpatentable
over each other.

In making a requirement for restriction in an application claiming
plural species, the examiner should group together species considered
clearly unpatentable over each other, with the statement that
restriction as between those species is not required.

Where generic claims are allowed in a national application, applicant
may claim in the same application additional species as provided by  37
CFR 1.141.

Where, however, an applicant optionally files another national
application with claims to a different species, or for a species
disclosed but not claimed in a parent case as filed and first acted upon
by the examiner, there should be close investigation to determine the
presence or absence of patentable difference. See MPEP Section  804.01
and Section  804.02.

---SECTION---806.04(i) Generic Claims Presented for First Time After
Issue of Species

The Office no longer follows the practice of prohibiting the allowance
of generic claims that are presented for the first time after the
issuance of a copending application claiming plural species. Instead,
the Office may reject the generic claims on the grounds of
obviousness-type double patenting. Applicant may overcome such a
rejection by filing a terminal disclaimer. See In re Braithwaite, 379
F.2d 594, 154 USPQ 29 (CCPA 1967).

---SECTION---806.05 Related Inventions

Where two or more related inventions are being claimed, the principal
question to be determined in connection with a requirement to restrict
or a rejection on the ground of double patenting is whether or not the
inventions as claimed are distinct. If they are distinct, restriction
may be proper. If they are not distinct, restriction is never proper. If
nondistinct inventions are claimed in separate applications or patents,
double patenting must be held, except where the additional applications
were filed consonant with a requirement to restrict in a national
application.

The various pairs of related inventions are noted in the following
sections.

---SECTION---806.05(a) Combination and Subcombination or Element

A combination is an organization of which a subcombination or element is
a part.

Relative to questions of restriction where a combination is alleged, the
claim thereto must be assumed to be allowable (novel and unobvious) as
pointed out in MPEP Section  806.02, in the absence of a holding by the
examiner to the contrary. When a claim is found in a patent, it has
already been found by the Office to be allowable and must be treated on
that basis.

---SECTION---806.05(b) Old Combination - Novel Subcombination

Restriction is ordinarily not proper between a combination (AB) that the
examiner holds to be old and unpatentable and the subcombination (B) in
which the examiner holds the novelty, if any, to reside.   Ex parte
Donnell, 1923 C.D. 54, 315 O.G. 398 (Comm'r Pat.1923). See MPEP Section 
820.01.

---SECTION---806.05(c) Criteria of Distinctness for Combination,
Subcombination, or Element of a Combination

In order to establish that combination and subcombination inventions are
distinct, two-way distinctness must be demonstrated.

To support a requirement for restriction, both two-way distinctness and
reasons for insisting on restriction are necessary, i.e., separate
classification, status, or field of search. See MPEP Section  808.02.

The inventions are distinct if it can be shown that a combination as
claimed:

(A) does not require the particulars of the subcombination as claimed
for patentability (to show novelty and unobviousness), and

(B) the subcombination can be shown to have utility either by itself or
in other and different relations.  When these factors cannot be shown,
such inventions are not distinct.

The following examples are included for general guidance.

I. SUBCOMBINATION NOT ESSENTIAL TO COMBINATION

AB br/B sp Restriction Proper

Where a combination as claimed does not set forth the details of the
subcombination as separately claimed and the subcombination has separate
utility, the inventions are distinct and restriction is proper if
reasons exist for insisting upon the restriction; i.e., separate
classification, status, or field of search.

This situation can be diagramed as combination ABbr ("br" is an
abbreviation for "broad"), and subcombination Bsp ("sp" is an
abbreviation for "specific"). Bbr indicates that in the combination the
subcombination is broadly recited and that the specific characteristics
set forth in the subcombination claim Bsp are not set forth in the
combination claim.

Since claims to both the subcombination and combination are presented
and assumed to be patentable, the omission of details of the claimed
subcombination Bsp in the combination claim ABbr is evidence that the
patentability of the combination does not rely on the details of the
specific subcombination.

II. SUBCOMBINATION ESSENTIAL TO COMBINATION

AB sp/B sp No Restriction

If there is no evidence that combination ABsp is patentable without the
details of Bsp, restriction should not be required. Where the
relationship between the claims is such that the separately claimed
subcombination Bsp constitutes the essential distinguishing feature of
the combination ABsp as claimed, the inventions are not distinct and a
requirement for restriction must not be made, even though the
subcombination has separate utility.

III. SOME COMBINATION CLAIMS RECITE SPECIFIC FEATURES OF THE
SUBCOMBINATION BUT OTHER COMBINATION CLAIMS GIVE EVIDENCE THAT THE
SUBCOMBINATION IS NOT ESSENTIAL TO THE COMBINATION.

AB sp/AB br (Evidence Claim)/B sp Restriction Proper

Claim ABbr is an evidence claim which indicates that the combination
does not rely upon the specific details of the subcombination for its
patentability. If claim ABbr is subsequently found to be unallowable,
the question of rejoinder of the inventions restricted must be
considered and the letter to the applicant should so state. Therefore,
where the combination evidence claim ABbr does not set forth the details
of the subcombination Bsp and the subcombination Bsp has separate
utility, the inventions are distinct and restriction is proper if
reasons exist for insisting upon the restriction.

In applications claiming plural inventions capable of being viewed as
related in two ways, for example, as both combination-subcombination and
also as different statutory categories, both applicable criteria for
distinctness must be demonstrated to support a restriction requirement. 
See also MPEP Section  806.04(b).

Form Paragraph 8.15 may be used in combination-subcombination
restriction requirements.

8.15 Combination-Subcombination

Inventions   [1] and   [2] are related as combination and
subcombination.  Inventions in this relationship are distinct if it can
be shown that (1) the combination as claimed does not require the
particulars of the subcombination as claimed for patentability, and (2)
that the subcombination has utility by itself or in other combinations
(MPEP Section  806.05(c)).  In the instant case, the combination as
claimed does not require the particulars of the subcombination as
claimed because   [3].  The subcombination has separate utility such as  
[4].

Examiner Note:

1. This form paragraph is to be used when claims are presented to both
combination(s) and subcombination(s) (MPEP Section  806.05(c)).

2. In situations involving evidence claims, see MPEP Section  806.05(c),
example 3, and explain in bracket 3.

3. In bracket 4, suggest utility other than used in the combination.

4. Conclude restriction requirement with one of form paragraphs 8.21.01
through 8.21.03.

The burden is on the examiner to suggest an example of separate utility.

If applicant proves or provides an argument supported by facts, that the
other utility, suggested by the examiner, cannot be accomplished, the
burden shifts to the examiner to document a viable separate utility or
withdraw the requirement.

---SECTION---806.05(d) Subcombinations Usable Together

Two or more claimed subcombinations, disclosed as usable together in a
single combination, and which can be shown to be separately usable, are
usually distinct from each other.

Care should always be exercised in this situation to determine if the
several subcombinations are generically claimed.  See MPEP Section 
806.04(b).

Form Paragraph 8.16 may be used in restriction requirements between
subcombinations.

8.16 Subcombinations, Usable Together

Inventions [1] and [2] are related as subcombinations disclosed as
usable together in a single combination. The subcombinations are
distinct from each other if they are shown to be separately usable. In
the instant case invention [3] has separate utility such as [4]. See
MPEP Section  806.05(d).

Examiner Note:

1. This form paragraph is to be used when claims are presented to
subcombinations usable together (MPEP Section  806.05(d)).

2. In bracket 3, insert the appropriate group number or identify the
invention.

3. In bracket 4, suggest utility other than with the other invention.

4. Conclude restriction requirement with one of form paragraphs 8.21.01
through 8.21.03.

Only one-way distinctness is required.

The examiner must show, by way of example, that one of the
subcombinations has utility other than in the disclosed combination.

Care must be taken to determine if the subcombinations are generically
claimed.

Where subcombinations as disclosed and claimed are both (a) species
under a claimed genus and (b) related, then the question of restriction
must be determined by both the practice applicable to election of
species and the practice applicable to related inventions. If
restriction is improper under either practice, it should not be required
(MPEP Section  806.04(b)).

The burden is on the examiner to provide an example.

If applicant proves or provides an argument, supported by facts, that
the other use, suggested by the examiner, cannot be accomplished or is
not reasonable, the burden is on the examiner to document a viable
alternative use or withdraw the requirement.

---SECTION---806.05(e) Process and Apparatus for Its Practice -
Distinctness

In applications claiming inventions in different statutory categories,
only one-way distinctness is generally needed to support a restriction
requirement. See MPEP Section  806.05(c).

Process and apparatus for its practice can be shown to be distinct
inventions, if either or both of the following can be shown: (1) that
the process as claimed can be practiced by another materially different
apparatus or by hand, or (2) that the apparatus as claimed can be used
to practice another and materially different process.

If the apparatus claims include a claim to "means" for practicing the
process, the claim is a linking claim and must be examined with the
elected invention. If it is ultimately allowed, rejoinder is required.
See MPEP Section  809.04.

Form Paragraph 8.17 may be used to make restriction requirements between
process and apparatus.

8.17 Process and Apparatus

Inventions   [1] and [2] are related as process and apparatus for its
practice.  The inventions are distinct if it can be shown that either:
(1) the process as claimed can be practiced by another materially
different apparatus or by hand, or (2) the apparatus as claimed can be
used to practice another and materially different process.  (MPEP
Section  806.05(e)).  In this case   [3].

Examiner Note:

1. This form paragraph is to be used when claims are presented to both a
process and apparatus for its practice (MPEP Section  806.05(e)).

2. In bracket 3, use one or more of the following reasons:

(a) --the process as claimed can be practiced by another and materially
different apparatus such as ......--,

(b) --the process as claimed can be practiced by hand--,

(c) --the apparatus as claimed can be used to practice another and
materially different process such as ......--.

3. Conclude restriction requirement with one of form paragraphs 8.21.01
through 8.21.03.

The burden is on the examiner to provide reasonable examples that recite
material differences.

If the apparatus claims include a claim to "means" for practicing the
process, this claim is a linking claim (except for the presence of this
claim restriction between apparatus and process claims would be proper).
The linking claim must be examined with the elected invention, but only
to the extent necessary to determine if the linking claim is
unpatentable.  If the linking claim is unpatentable, restriction is
proper.

It should be noted that a claim such as, "An apparatus for the practice
of the process of claim 1, comprising ...." and then the claim continues
with purely apparatus limitations, is not a linking claim. This is
merely a preamble similar to a statement of intended use and should be
treated as any preamble.

If applicant proves or provides convincing argument that there is no
material difference or in the case of a process that cannot be performed
by hand (if examiner so argued), the burden is on the examiner to
document another materially different process or apparatus or withdraw
the requirement.

---SECTION---806.05(f) Process of Making and Product Made - Distinctness

A process of making and a product made by the process can be shown to be
distinct inventions if either or both of the following can be shown: (1)
that the process as claimed is not an obvious process of making the
product and the process as claimed can be used to make other and
different products, or (2) that the product as claimed can be made by
another and materially different process.

Allegations of different processes or products need not be documented.

A product defined by the process by which it can be made is still a
product claim (In re Bridgeford, 357 F.2d 679, 149 USPQ 55 (CCPA 1966))
and can be restricted from the process if the examiner can demonstrate
that the product as claimed can be made by another materially different
process; defining the product in terms of a process by which it is made
is nothing more than a permissible technique that applicant may use to
define the invention.

If applicant convincingly traverses the requirement, the burden shifts
to the examiner to document a viable alternative process or product, or
withdraw the requirement.

Form Paragraph 8.18 may be used in restriction requirements between
product and process of making.

8.18 Product and Process of Making

Inventions [1] and [2] are related as process of making and product
made.  The inventions are distinct if either or both of the following
can be shown: (1) that the process as claimed can be used to make other
and materially different product or (2) that the product as claimed can
be made by another and materially different process (MPEP Section 
806.05(f)).  In the instant case   [3].

Examiner Note:

1. This form paragraph is to be used when claims are presented to both a
product and the process of making the product (MPEP Section  806.05(f)).

2. In bracket 3, use one or more of the following reasons:

(a) --the process as claimed can be used to make a materially different
product such as ......--,

(b) --the product as claimed can be made by a materially different
process such as ......--.

3. Conclude restriction requirement with one of form paragraphs 8.21.01
through 8.21.03.

---SECTION---806.05(g) Apparatus and Product Made -  Distinctness

An apparatus and a product made by the apparatus can be shown to be
distinct inventions if either or both of the following can be shown: (1)
that the apparatus as claimed is not an obvious apparatus for making the
product and the apparatus as claimed can be used to make other and
different products, or (2) that the product as claimed can be made by
another and materially different apparatus.

Form Paragraph 8.19 may be used for restriction requirements between
apparatus and product made.

8.19 Apparatus and Product Made

Inventions   [1] and [2] are related as apparatus and product made.  The
inventions in this relationship are distinct if either or both of the
following can be shown: (1) that the apparatus as claimed is not an
obvious apparatus for making the product and the apparatus can be used
for making a different product or (2) that the product as claimed can be
made by another and materially different apparatus (MPEP Section 
806.05(g)).  In this case [3].

Examiner Note:

1. This form paragraph is to be used when claims are presented to both
the apparatus and product made (MPEP Section  806.05(g)).

2. In bracket 3, use one or more of the following reasons:

(a) --the apparatus as claimed is not an obvious apparatus for making
the product and the apparatus as claimed can be used to make a different
product such as ......--,

(b) --the product can be made by a materially different apparatus such
as ......--.

3. Conclude restriction requirement with one of form paragraphs 8.21.01
through 8.21.03.

ONLY ONE-WAY DISTINCTNESS IS REQUIRED

The examiner must show by way of example either (A) that the apparatus
as claimed is not an obvious apparatus for making the product and the
apparatus as claimed can be used to make other and different products or
(B) that the product as claimed can be made by another and materially
different apparatus.

The burden is on the examiner to provide an example, but the example
need not be documented.

If applicant either proves or provides convincing argument that the
alternative example suggested by the examiner is not workable, the
burden is on the examiner to suggest another viable example or withdraw
the restriction requirement.

---SECTION---806.05(h) Product and Process of Using

A product and a process of using the product can be shown to be distinct
inventions if either or both of the following can be shown: (A) the
process of using as claimed can be practiced with another materially
different product, or (B) the product as claimed can be used in a
materially different process.

The burden is on the examiner to provide an example, but the example
need not be documented.

If the applicant either proves or provides a convincing argument that
the alternative use suggested by the examiner cannot be accomplished,
the burden is on the examiner to support a viable alternative use or
withdraw the requirement.

Form Paragraph 8.20 may be used in restriction requirements between the
product and method of using.

8.20 Product and Process of Using

Inventions [1] and   [2] are related as product and process of use.  The
inventions can be shown to be distinct if either or both of the
following can be shown: (1) the process for using the product as claimed
can be practiced with another materially different product or (2) the
product as claimed can be used in a materially different process of
using that product (MPEP Section  806.05(h)).  In the instant case  
[3].

Examiner Note:

1. This form paragraph is to be used when claims are presented to both
the product and process of using the product (MPEP Section  806.05(h)).

2. In bracket 3, use one or more of the following reasons:

(a) --the process as claimed can be practiced with another materially
different product such as ......--,

(b) --the product as claimed can be used in a materially different
process such as ......--.

3. Conclude restriction requirement with one of form paragraphs 8.21.01
through 8.21.03.

---SECTION---806.05(i) Product, Process of Making, and Process of Using
- Product Claim Not Allowable 

37 CFR 1.141 Different inventions in one national application.

                  +++    

(b) Where claims to all three categories, product, process of making,
and process of use, are included in a national application, a three way
requirement for restriction can only be made where the process of making
is distinct from the product. If the process of making and the product
are not distinct, the process of using may be joined with the claims
directed to the product and the process of making the product even
though a showing of distinctness between the product and process of
using the product can be made.

Where an application contains claims to a product, claims to a process
specially adapted for (i.e., not patentably distinct from, as defined in
MPEP Section  806.05(f)) making the product, and claims to a process of
using the product, and the product claims are not allowable (i.e., not
novel and nonobvious), restriction is proper between the process of
making and the process of using. In this instance, applicant may be
required to elect either (1) the product and process of making it, or
(2) the process of using. Unless the examiner can make a showing of
distinctness between the process of using and the product (MPEP Section 
806.05(h)), the product must also be joined with the process of using in
grouping (2).

Where the product claims are allowable (i.e., novel and nonobvious),
restriction may be required only where the process of making and the
product made are distinct (MPEP Section  806.05(f)); otherwise, the
process of using must be joined with the process of making and product
made, even if a showing of distinctness can be made between the product
and process of using (MPEP Section  806.05(h)).

Determination of patentability of the product need not be made prior to
making a requirement for restriction unless the requirement is based on
a determination that the product claims are not allowable.

Form paragraph 8.20.01 may be used in product, process of making and
process of using situations where the product is not allowable.

8.20.01 Product, Process of Making and Process of Using-Product Not
Allowable

Inventions   [1] and   [2] are related as process of making and process
of using the product. The use as claimed cannot be practiced with a
materially different product. Since the product is not allowable,
restriction is proper between said method of making and method of using. 
The product claim will be examined along with the elected invention
(MPEP Section  806.05(i)).

Examiner Note:

This form paragraph is to be used when claims are presented to the
product, process of making and process of using where the product
claim(s) are not allowable (MPEP Section  806.05(i)).

---SECTION---807 Patentability Report Practice Has No Effect on
Restriction Practice

Patentability report practice (MPEP Section  705), has no effect upon,
and does not modify in any way, the practice of restriction, being
designed merely to facilitate the handling of cases in which restriction
cannot properly be required.

---SECTION---808 Reasons for Insisting Upon Restriction

Every requirement to restrict has two aspects: (1) the reasons (as
distinguished from the mere statement of conclusion) why the inventions
as claimed are either independent or distinct, and (2) the reasons for
insisting upon restriction therebetween as set forth in the following
sections.

---SECTION---808.01 Independent Inventions

Where the inventions claimed are independent, i.e., where they are not
connected in design, operation, or effect under the disclosure of the
particular application under consideration (MPEP Section  806.04), the
facts relied on for this conclusion are in essence the reasons for
insisting upon restriction. This situation, except for species, is but
rarely presented, since persons will seldom file an application
containing disclosures of independent things.

Form Paragraph 8.20.02 may be used when claims are directed to
independent, unrelated inventions.

8.20.02 Unrelated Inventions

Inventions   [1] and   [2] are unrelated.  Inventions are unrelated if
it can be shown that they are not disclosed as capable of use together
and they have different modes of operation, different functions, or
different effects.  (MPEP Section  806.04,  MPEP Section  808.01).  In
the instant case the different inventions [3].

Examiner Note:

1. This form paragraph is to be used only when claims are presented to
unrelated inventions, e. g., a necktie and a locomotive bearing.

2. In bracket 3, insert reasons for concluding that the inventions are
unrelated.

---SECTION---808.01(a) Species

Where there is no disclosure of relationship between species (see MPEP
Section  806.04(b)), they are independent inventions and election of one
invention following a requirement for restriction is mandatory even
though applicant disagrees with the examiner. There must be a patentable
difference between the species as claimed. See MPEP Section  806.04(h).
Since the claims are directed to independent inventions, restriction is
proper pursuant to  35 U.S.C. 121, and it is not necessary to show a
separate status in the art or separate classification.

A single disclosed species must be elected as a prerequisite to applying
the provisions of  37 CFR 1.141 to additional species if a generic claim
is allowed.

Even if the examiner rejects the generic claims, and even if the
applicant cancels the same and admits that the genus is unpatentable,
where there is a relationship disclosed between species, such disclosed
relation must be discussed and reasons advanced leading to the
conclusion that the disclosed relation does not prevent restriction, in
order to establish the propriety of restriction.

Election of species should not be required if the species claimed are
considered clearly unpatentable (obvious) over each other.  In making a
requirement for restriction in an application claiming plural species,
the examiner should group together species considered clearly
unpatentable over each other, with the statement that restriction as
between those species is not required.

Election of species should be required prior to a search on the merits
(1) in all applications containing claims to a plurality of species with
no generic claims, and (2) in all applications containing both species
claims and generic or Markush claims.

In all applications in which no species claims are present and a generic
claim recites such a multiplicity of species that an unduly extensive
and burdensome search is required, a requirement for an election of
species should be made prior to a search of the generic claim.

In all applications where a generic claim is found allowable, the
application should be treated as indicated in MPEP Section  809.02 (b), 
Section  809.02 (c), or Section  809.02 (e).  If an election is made
pursuant to a telephone requirement, the next action should include a
full and complete action on the elected species as well as on any
generic claim that may be present.

---SECTION---808.02 Related Inventions

Where, as disclosed in the application, the several inventions claimed
are related, and such related inventions are not patentably distinct as
claimed, restriction under  35 U.S.C. 121 is never proper (MPEP Section 
806.05). If applicant optionally restricts, double patenting may be
held.

Where the related inventions as claimed are shown to be distinct under
the criteria of MPEP Section  806.05(c) -  Section  806.05(i), the
examiner, in order to establish reasons for insisting upon restriction,
must show by appropriate explanation one of the following:

(A) Separate classification thereof:  This shows that each distinct
subject has attained recognition in the art as a separate subject for
inventive effort, and also a separate field of search. Patents need not
be cited to show separate classification.

(B) A separate status in the art when they are classifiable together: 
Even though they are classified together, each subject can be shown to
have formed a separate subject for inventive effort when an explanation
indicates a recognition of separate inventive effort by inventors. 
Separate status in the art may be shown by citing patents which are
evidence of such separate status, and also of a separate field of
search.

(C) A different field of search:  Where it is necessary to search for
one of the distinct subjects in places where no pertinent art to the
other subject exists, a different field of search is shown, even though
the two are classified together. The indicated different field of search
must in fact be pertinent to the type of subject matter covered by the
claims. Patents need not be cited to show different fields of search.

Where, however, the classification is the same and the field of search
is the same and there is no clear indication of separate future
classification and field of search, no reasons exist for dividing among
related inventions.

---SECTION---809 Claims Linking Distinct Inventions

Where, upon examination of an application containing claims to distinct
inventions, linking claims are found, restriction can nevertheless be
required. See MPEP Section  809.03 for definition of linking claims.

A letter including only a restriction requirement or a telephoned
requirement to restrict (the latter being encouraged) will be effected,
specifying which claims are considered linking. See MPEP Section  812.01
for telephone practice in restriction requirements.

No art will be indicated for this type of linking claim and no rejection
of these claims made.

A 1-month (not less than 30 days) shortened statutory period will be set
for reply to a written requirement. Such action will not be an "action
on the merits" for the purpose of the second action final program.

To be complete, a reply to a requirement made according to this section
need only include a proper election.

The linking claims must be examined with the invention elected, and
should any linking claim be allowed, the restriction requirement must be
withdrawn. Any claim(s) directed to the nonelected invention(s),
previously withdrawn from consideration, which depends from or includes
all the limitations of the allowable linking claim must be rejoined and
will be fully examined for patentability. Where such withdrawn claims
have been canceled by applicant pursuant to the restriction requirement,
upon the allowance of the linking claim(s), the examiner must notify
applicant that any canceled, nonelected claim(s) which depends from or
includes all the limitations of the allowable linking claim may be
reinstated by submitting the claim(s) in an amendment. Upon entry of the
amendment, the amended claim(s) will be fully examined for
patentability.

---SECTION---809.02 Generic Claim Linking Species

Under  37 CFR 1.141, an allowed generic claim may link a reasonable
number of species embraced thereby.

The practice is stated in  37 CFR 1.146 as follows:

37 CFR 1.146 Election of species.

In the first action on an application containing a generic claim and
claims restricted separately to each of more than one species embraced
thereby, the examiner may require the applicant in his response to that
action to elect that species of his or her invention to which his or her
claim shall be restricted if no generic claim is held allowable.
However, if such application contains claims directed to more than a
reasonable number of species, the examiner may require restriction of
the claims to not more than a reasonable number of species before taking
further action in the case.

---SECTION---809.02(a) Election Required

Where generic claims are present, the examiner should send a letter
including only a restriction requirement or place a telephone
requirement to restrict (the latter being encouraged). See MPEP Section 
812.01 for telephone practice in restriction requirements.

Action as follows should be taken:

(A) Identify generic claims or indicate that no generic claims are
present. See MPEP Section  806.04(d) for definition of a generic claim.

(B) Clearly identify each (or in aggravated cases at least exemplary
ones) of the disclosed species,   to which claims are restricted. The
species are preferably identified as the species of figures 1, 2, and 3
or the species of examples I, II, and III, respectively. In the absence
of distinct figures or examples to identify the several species, the
mechanical means, the particular material, or other distinguishing
characteristic of the species should be stated for each species
identified. If the species cannot be conveniently identified, the claims
may be grouped in accordance with the species to which they are
restricted.

(C) Applicant should then be required to elect a single disclosed
species under  35 U.S.C. 121, and advised as to the requisites of a
complete reply and his or her rights under  37 CFR 1.141.

For generic claims, a search should not be made and art should not be
cited.

A 1-month (not less than 30 days) shortened statutory period will be set
for reply when a written requirement is made without an action on the
merits. This period may be extended under the provisions of  37 CFR
1.136(a). Such action will not be an "action on the merits" for purposes
of the second action final program.

To be complete, a reply to a requirement made according to this section
should include a proper election along with a listing of all claims
readable thereon, including any claims subsequently added.

In those applications wherein a requirement for restriction is
accompanied by an action on all claims, such action will be considered
to be an action on the merits and the next action should be made final.

8.01 Election of Species

This application contains claims directed to the following patentably
distinct species of the claimed invention: [1].

Applicant is required under  35 U.S.C. 121 to elect a single disclosed
species for prosecution on the merits to which the claims shall be
restricted if no generic claim is finally held to be allowable. 
Currently, [2] generic.

Applicant is advised that a reply to this requirement must include an
identification of the species that is elected consonant with this
requirement, and a listing of all claims readable thereon, including any
claims subsequently added.  An argument that a claim is allowable or
that all claims are generic is considered nonresponsive unless
accompanied by an election.

Upon the allowance of a generic claim, applicant will be entitled to
consideration of claims to additional species which are written in
dependent form or otherwise include all the limitations of an allowed
generic claim as provided by  37 CFR 1.141.  If claims are added after
the election, applicant must indicate which are readable upon the
elected species. MPEP Section  809.02(a).

Should applicant traverse on the ground that the species are not
patentably distinct, applicant should submit evidence or identify such
evidence now of record showing the species to be obvious variants or
clearly admit on the record that this is the case.  In either instance,
if the examiner finds one of the inventions unpatentable over the prior
art, the evidence or admission may be used in a rejection under  35
U.S.C. 103(a) of the other invention.

Examiner Note:

In bracket 2, insert the appropriate generic claim information.

8.02 Election When Claims Are Not Restricted to Species

Claim  [1] generic to a plurality of disclosed patentably distinct
species comprising [2].  Applicant is required under  35 U.S.C. 121 to
elect a single disclosed species, even though this requirement is
traversed.

Should applicant traverse on the ground that the species are not
patentably distinct, applicant should submit evidence or identify such
evidence now of record showing the species to be obvious variants or
clearly admit on the record that this is the case.  In either instance,
if the examiner finds one of the inventions unpatentable over the prior
art, the evidence or admission may be used in a rejection under  35
U.S.C. 103(a) of the other invention.

Examiner Note:

1. This paragraph should be used for the election of requirement
described in MPEP Section  803.02 (Markush group) and Section  809.02(d)
(burdensome search necessary).

2. In bracket 2, clearly identify the species from which an election is
to be made.

If claims are added after the election, applicant must indicate which
are readable on the elected species.

It is necessary to (A) identify generic claims or state that none are
present, and (B) clearly identify each species involved.

---SECTION---809.02(b) Election Required - Generic Claim Allowable

When a claim generic to two or more claimed species is found to be
allowable on the first or any subsequent action on the merits   and
election of a single species has not been made, applicant should be
informed that the claim is allowable and generic, and a requirement
should be made that applicant elect a single species embraced by the
allowed genus unless the species claims are all in the form required by 
37 CFR 1.141 and no more than a reasonable number of species are
claimed. Form Paragraph 8.48 may be used.

8.48 Generic Claim(s) Allowable, No Election of Single Species

Allowed claim  [1] generic to a plurality of disclosed patentably
distinct species comprising [2].  Applicant is required under  35 U.S.C.
121 to elect a single disclosed species embraced by the allowed genus.

Applicant is advised that a complete reply to this requirement must
include an identification of the species that is elected and a listing
of all claims readable thereon.  Applicant is entitled to consideration
of claims to a reasonable number of disclosed species in addition to the
elected species provided all the claims to each additional species are
written in dependent form or otherwise include all the limitations of an
allowed generic claim as provided by  37 CFR 1.141.  Applicant's reply
must include an identification of such additional species along with a
listing of the claims readable on each additional species.

Examiner Note:

1. This form paragraph is to be used whenever a claim generic to two or
more species is found to be allowable and election of a single disclosed
species embraced thereby has not been made of record.

2. In bracket 1, identify the claim(s) found to be generic and
allowable.

3. In bracket 2, identify the plurality of species embraced by the
allowed generic claim(s).

---SECTION---809.02(c) Action Following Election

An examiner's action subsequent to an election of species should include
a complete action on the merits of all claims readable on the elected
species.

(A) When the generic claims are rejected, or there is no generic claim,
all claims not readable on the elected species should be treated using
Form Paragraphs 8.05 and 8.06, as appropriate.

8.05 Claims Stand Withdrawn With Traverse

Claim  [1] withdrawn from further consideration pursuant to 37 CFR
1.142(b), as being drawn to a nonelected [2], there being no (allowable)
generic or linking claim.  Applicant timely traversed the restriction
(election) requirement in Paper No.   [3].

Examiner Note:

In bracket 2, insert --invention-- or --species--.

8.06 Claims Stand Withdrawn Without Traverse

Claim  [1] withdrawn from further consideration pursuant to  37 CFR
1.142(b) as being drawn to a nonelected [2], there being no allowable
generic or linking claim.  Election was made without traverse in Paper
No.   [3].

Examiner Note:

In bracket 2, insert --invention--, or --species--.

(B) When a generic claim is subsequently found to be allowable, and not
more than a reasonable number of additional species are claimed,
treatment shall be as follows:

(1) When all claims to each of the additional species are embraced by an
allowable generic claim as provided by  37 CFR 1.141, applicant must be
advised of the allowable generic claim and that claims drawn to the
nonelected species are no longer withdrawn since they are fully embraced
by the allowed generic claim.

(2) When any claim directed to one of said additional species embraced
by an allowed generic claim is not in the required form, all claims to
that species should be held to be withdrawn from further consideration
by the examiner. The holding should be worded as set forth in Form
Paragraph 8.49.

8.49 Allowance of Generic Claim(s), Claims Stand Withdrawn as Not In
Required Form

Claim  [1], directed to the species of [2] withdrawn from further
consideration since [3] depend upon or otherwise include each of the
limitations of an allowed generic claim as required by  37 CFR 1.141.

Examiner Note:

1. In bracket 2, insert identification of species followed by --, is--
or --, are--.

2. In bracket 3, insert --it does not-- or --they do not all--.

Note that each additional species is handled separately. When all of the
claims to one nonelected species are embraced by an allowable generic
claim but each of the claims to another nonelected species is not
embraced by an allowable generic claim, applicant must be advised that
the claims to the one nonelected species are no longer withdrawn from
further consideration but that the claims to the other nonelected
species remain withdrawn from further consideration since all of the
claims to this other species do not depend upon or fully include all of
the limitations of an allowed generic claim as required by  37 CFR
1.141. This holding should be worded as set forth in Form Paragraph
8.50.

8.50 Allowance of Generic Claim(s), Some Claims No Longer Considered
Withdrawn

Claim  [1] generic and allowable.  Accordingly, the restriction
requirement as to the encompassed species is hereby withdrawn and claim 
[2], directed to the species of [3] no longer withdrawn from
consideration since all of the claims to this species depend from or
otherwise include each of the limitations of an allowed generic claim. 
However, claim  [4], directed to the species of [5] remain withdrawn
from consideration since [6] depend upon or otherwise include all the
limitations of an allowed generic claim as required by  37 CFR 1.141.

In view of the above noted withdrawal of the restriction requirement as
to the linked species, applicant(s) are advised that if any claim(s)
depending from or including all the limitations of the allowable generic
linking claim(s) be presented in a continuation or divisional
application, such claims may be subject to provisional statutory and/or
nonstatutory double patenting rejections over the claims of the instant
application.  Once a restriction requirement is withdrawn, the
provisions of  35 U.S.C. 121 are no longer applicable.  See In re
Ziegler, 44 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971).  See also
MPEP Section  804.01.

Examiner Note:

1. In bracket 3, insert an identification of species followed by --,
is-- or --, are--.

2. In bracket 5, insert an identification of species.

3. In bracket 6, insert --it does not-- or --they do not all--.

4. If all of the pending claims are in proper form, i.e., they include
all the limitations of an allowed generic or linking claim, one of form
paragraphs 8.45, 8.46 or 8.47 must be used.

When the application is otherwise ready for issue and there is an
allowed generic claim, and applicant has not been previously notified as
to the allowance of a generic claim, applicant must be advised of the
allowance of a generic claim and given a time limit of 1 month (not less
than 30 days) to conform all of the claims to the nonelected species to
fully embrace an allowed generic claim or the examiner will cancel the
claims to each nonconforming species by examiner's amendment and pass
the application to issue. If the election is traversed, an additional
paragraph worded as Form Paragraph 8.03 should be added to the holding.

8.03 In Condition for Allowance, Non-elected Claims

This application is in condition for allowance except for the presence
of claim [1] to an invention non-elected with traverse in Paper no. [2].
Applicant is given ONE MONTH or THIRTY DAYS from the date of this
letter, whichever is longer, to cancel the noted claims or take other
appropriate action (37 CFR 1.144). Failure to take action during this
period will be treated as authorization to cancel the noted claims by
Examiner's Amendment and pass the case to issue. Extensions of time
under  37 CFR 1.136(a) will not be permitted since this application will
be passed to issue.

The prosecution of this case is closed except for consideration of the
above matter.

---SECTION---809.02(d) No Species Claims

Where only generic claims are presented, no restriction can be required
except in those applications where the generic claims recite such a
multiplicity of species that an unduly extensive and burdensome search
is necessary.  See MPEP Section  808.01(a).  If after an action on only
generic claims with no restriction requirement, applicant presents
species claims to more than one species of the invention, he or she must
at that time indicate an election of a single species.

---SECTION---809.02(e) Generic Claim Allowable in Substance

Whenever a generic claim is found to be allowable in substance, even
though it is objected to or rejected on merely formal grounds, action on
the species claims shall thereupon be given as if the generic claim were
allowed.

The treatment of the application should be as indicated in MPEP Section 
809.02(b),  Section  809.02(c), or Section  809.02(d).

---SECTION---809.03 Linking Claims

There are a number of situations which arise in which an application has
claims to two or more properly divisible inventions, so that a
requirement to restrict the application to one would be proper, but
presented in the same case are one or more claims (generally called
"linking" claims) inseparable therefrom and thus linking together the
inventions otherwise divisible.

The most common types of linking claims which, if allowed, act to
prevent restriction between inventions that can otherwise be shown to be
divisible, are

(A) genus claims linking species claims;

(B) a claim to the necessary process of making a product linking proper
process and product claims;

(C) a claim to "means" for practicing a process linking proper apparatus
and process claims; and

(D) a claim to the product linking a process of making and a use
(process of using).

Where linking claims exist, a letter including a restriction requirement
only or a telephoned requirement to restrict (the latter being
encouraged) will be effected, specifying which claims are considered to
be linking. Examiners should use Form Paragraph 8.12 to make
restrictions involving linking claims.

8.12 Restriction, Linking Claims

Claim  [1] link(s) inventions   [2] and [3].  The restriction
requirement [4] the linked inventions is subject to the nonallowance of
the linking claim(s), claim  [5].  Upon the allowance of the linking
claim(s), the restriction requirement as to the linked inventions shall
be withdrawn and any claim(s) depending from or otherwise including all
the limitations of the allowable linking claim(s) will be entitled to
examination in the instant application.  Applicant(s) are advised that
if any such claim(s) depending from or including all the limitations of
the allowable linking claim(s) is/are presented in a continuation or
divisional application, the claims of the continuation or divisional
application may be subject to provisional statutory and/or nonstatutory
double patenting rejections over the claims of the instant application. 
Where a restriction requirement is withdrawn, the provisions of  35
U.S.C. 121 are no longer applicable. In re Ziegler, 44 F.2d 1211, 1215,
170 USPQ 129, 131-32 (CCPA 1971).  See also MPEP Section  804.01.

Examiner Note:

1. This form paragraph must be included in any restriction requirement
with at least one linking claim present.

2. In bracket 4, insert either --between-- or --among--.

3. In bracket 5, insert the claim number(s) of the linking claims.

4. See related form paragraphs 8.45, 8.46 and 8.47.

For traverse of rejection of linking claim in applications, see MPEP
Section  818.03(d).

---SECTION---809.04 Retention of Claims to Nonelected Invention

Where the requirement for restriction in an application is predicated
upon the nonallowability of generic or other type of linking claims,
applicant is entitled to retain in the case claims to the nonelected
invention or inventions.

If a linking claim is allowed, the examiner must thereafter examine
species if the linking claim is generic thereto, or he or she must
examine the claims to the nonelected inventions that are linked to the
elected invention by such allowed linking claim.

Form Paragraph 8.45 should be used to notify applicant of the allowance
of a linking claim and that the nonelected claim(s) depending from or
including all the limitations of the allowable linking claim, previously
withdrawn from consideration, is/are rejoined and fully examined for
patentability under  37 CFR 1.104.

8.45 Allowance of Linking Claim(s), Nonelected Claims Not Canceled

Linking claim  [1] allowed.  Since the restriction requirement [2]
inventions [3], as set forth in Paper No. [4] mailed on [5], was
conditioned on the nonallowance of the linking claim(s), the restriction
requirement as to the linked inventions is hereby withdrawn.  Claim 
[6], previously withdrawn from consideration as a result of the
restriction requirement, [7] hereby rejoined and fully examined for
patentability under  37 CFR 1.104.  In view of the withdrawal of the
restriction requirement as to the linked inventions, applicant(s) are
advised that if any claim(s) depending from or including all the
limitations of the allowable linking claim(s) be presented in a
continuation or divisional application, such claims may be subject to
provisional statutory and/or nonstatutory double patenting rejections
over the claims of the instant application. Once the restriction
requirement is withdrawn, the provisions of  35 U.S.C. 121 are no longer
applicable.  See In re Ziegler, 44 F.2d 1211, 1215, 170 USPQ 129, 131-32
(CCPA 1971). See also MPEP Section  804.01.

Examiner Note:

1. This form paragraph must be used upon the allowance of a linking
claim following a restriction requirement with at least one linking
claim present and wherein the nonelected claims have NOT been canceled. 
Use form paragraph 8.46 where the nonelected claims HAVE BEEN canceled.

2. In bracket 2, insert either --between-- or --among--.

3. In bracket 7, insert either --is-- or --are--.

Form Paragraph 8.46 (or Form Paragraph 8.47 if appropriate) must be used
to notify applicant of the allowance of a linking claim and that the
nonelected claim(s) which depended from or included all the limitations
of the allowable linking claim canceled by applicant may be reinstated
by submitting the claim(s) in an amendment.

8.46 Allowance of Linking Claim(s), Nonelected Claims Canceled, Other
Issues Remain Outstanding

Linking claim  [1] allowed.  Since the restriction requirement [2]
inventions [3], as set forth in Paper No. [4] mailed on [5], was
conditioned on the nonallowance of the linking claim(s), the restriction
requirement as to the linked inventions is hereby withdrawn.  Claim 
[6], which depended from or included all the limitations of the
allowable linking claim(s), previously withdrawn from consideration as a
result of the restriction requirement, [7] canceled by applicant in
Paper No. [8].  The canceled, nonelected claim(s) may be reinstated by
applicant if submitted in a timely filed amendment in reply to this
action.  Upon entry of the amendment, such amended claim(s) will be
examined for patentability under  37 CFR 1.104.

In view of the withdrawal of the restriction requirement as to the
linked inventions, applicant(s) are advised that if any claim(s)
depending from or including all the limitations of the allowable linking
claim(s) be presented in a continuation or divisional application, such
claims may be subject to provisional statutory and/or nonstatutory
double patenting rejections over the claims of the instant application. 
Once the restriction requirement is withdrawn, the provisions of  35
U.S.C. 121 are no longer applicable.  See In re Ziegler, 44 F.2d 1211,
1215, 170 USPQ 129, 131-32 (CCPA 1971).  See also MPEP Section  804.01.

Examiner Note:

1. This form paragraph (or form paragraph 8.47) must be used upon the
allowance of a linking claim following a restriction requirement with at
least one linking claim present and wherein the nonelected claims HAVE
BEEN canceled.  Use form paragraph 8.45 where the nonelected claims have
NOT been canceled.

2. If no issues remain outstanding and application is otherwise ready
for allowance, use form paragraph 8.47 instead of this form paragraph.

3. In bracket 2, insert either --between-- or --among--.

4. In bracket 7, insert either --was-- or --were--.

8.47 Allowance of Linking Claim(s), Nonelected Claims Canceled, No
Outstanding Issues Remaining

Linking claim  [1] allowed.  Since the restriction requirement [2]
inventions [3], as set forth in Paper No. [4] mailed on [5], was
conditioned on the nonallowance of the linking claim(s), the restriction
requirement as to the linked inventions is hereby withdrawn. Claim  [6],
which depended from or included all the limitations of the allowable
linking claim(s), previously withdrawn from consideration as a result of
the restriction requirement, [7] canceled by applicant in Paper No. [8]. 
The canceled, nonelected claim(s) may be reinstated by applicant if
submitted in an amendment, limited to the addition of such claim(s),
filed within a time period of ONE MONTH, or THIRTY DAYS, whichever is
longer, from the mailing date of this letter.  Upon entry of the
amendment, such amended claim(s) will be examined for patentability
under  37 CFR 1.104.  If NO such amendment is submitted within the set
time period, the application will be passed to issue.  PROSECUTION ON
THE MERITS IS OTHERWISE CLOSED.

In view of the withdrawal of the restriction requirement as to the
linked inventions, applicant(s) are advised that if any claim(s)
depending from or including all the limitations of the allowable linking
claim(s) be presented in a continuation or divisional application, such
claims may be subject to provisional statutory and/or nonstatutory
double patenting rejections over the claims of the instant application. 
Once the restriction requirement is withdrawn, the provisions of  35
U.S.C. 121 are no longer applicable.  See In re Ziegler, 44 F.2d 1211,
1215, 170 USPQ 129, 131-32 (CCPA 1971).  See also MPEP Section  804.01.

Examiner Note:

1. This form paragraph (or form paragraph 8.46) must be used upon the
allowance of a linking claim following a restriction requirement with at
least one linking claim present and wherein the nonelected claims HAVE
BEEN canceled.  Use form paragraph 8.45 where the nonelected claims have
NOT been canceled.

2. This form paragraph should be used only when there are no outstanding
issues remaining and is to be used with only a PTO-90C cover sheet.

3. In bracket 2, insert either --between-- or --among--.

4. In bracket 7, insert either --was-- or --were--.

When a final requirement is contingent on the nonallowability of the
linking claims, applicant may petition from the requirement under  37
CFR 1.144 without waiting for a final action on the merits of the
linking claims or applicant may defer his or her petition until the
linking claims have been finally rejected, but not later than appeal. 
See  37 CFR 1.144 and MPEP Section  818.03(c).

---SECTION---810 Action on the Merits

In general, in an application when only a written requirement to
restrict is made, no action on the merits is given.

---SECTION---810.01 Not Objectionable When Coupled With Requirement

A basic policy of the present examining program is that the second
action on the merits should be made final whenever proper.  See MPEP
Section  706.07(a). In those applications wherein a requirement for
restriction or election is accompanied by a complete action on the
merits of all the claims, such action will be considered to be an action
on the merits and the next action by the examiner should be made final.
When preparing a final action in an application where applicant has
traversed the restriction requirement, see MPEP Section  821.01.

Although an action on the merits is not necessary to a requirement, it
is not objectionable.   Ex parte Lantzke, 1910 C.D. 100, 156 O.G. 257
(Comm'r Pat. 1910).  However, note that a question may arise as to
whether there is a serious burden on the examiner.

However, except as noted in MPEP Section  809 and Section  812.01, if an
action is given on the merits, it must be given on all claims.

---SECTION---810.02 Usually Deferred

The Office policy is to usually defer action on the merits until after
the requirement for restriction is complied with, or withdrawn. Ex parte
Pickles, 1904 C.D. 126, 109 O.G. 1888 (Comm'r Pat. 1904); Ex parte
Snyder, 1904 C.D. 242, 110 O.G. 2636 (Comm'r Pat. 1904); and   Ex parte
Weston, 1911 C.D. 218, 173 O.G. 285 (Comm'r Pat. 1911).

---SECTION---810.03 Given on Elected Invention When Requirement Is Made
Final

37 CFR 1.143 last sentence states: "[i]f the requirement is repeated and
made final, the examiner will at the same time act on the claims to the
invention elected." Thus, action is ordinarily given on the elected
invention in the action making the requirement final.

---SECTION---811 Time for Making Requirement

37 CFR 1.142(a), second sentence states: "[i]f the distinctness and
independence of the invention be clear, such requirement will be made
before any action upon the merits; however, it may be made at any time
before final action in the case at the discretion of the examiner." 
This means the examiner should make a proper requirement as early as
possible in the prosecution, in the first action if possible, otherwise,
as soon as the need for a proper requirement develops.

Before making a restriction requirement after the first action on the
merits, the examiner will consider whether there will be a serious
burden if restriction is not required.

---SECTION---811.02 Even After Compliance With Preceding Requirement

	Since  37 CFR 1.142(a) provides that restriction is proper at any stage
of prosecution up to final action, a second requirement may be made when
it becomes proper, even though there was a prior requirement with which
applicant complied. Ex parte Benke, 1904 C.D. 63, 108 O.G. 1588 (Comm'r
Pat. 1904).

---SECTION---811.03 Repeating After Withdrawal Proper

Where a requirement to restrict is made and withdrawn, because it was
improper, when it becomes proper at a later stage in the prosecution,
restriction may again be required.

---SECTION---811.04 Proper Even Though Grouped Together in Parent
Application

Even though inventions are grouped together in a requirement in a parent
application, restriction or election among the inventions may be
required in the divisional applications, if proper.

---SECTION---812 Who Should Make the Requirement

The requirement should be made by an examiner who would examine at least
one of the inventions.

An examiner should not require restriction in an application if none of
the claimed subject matter is classifiable in his or her group. Such an
application should be transferred to a group to which at least some of
the subject matter belongs.

---SECTION---812.01 Telephone Restriction Practice

If an examiner determines that a requirement for restriction should be
made in an application, the examiner should formulate a draft of such
restriction requirement including an indication of those claims
considered to be linking or generic. No search or rejection of the
linking claims should be made. Thereupon, the examiner should telephone
the attorney or agent of record and request an oral election, with or
without traverse if desired, after the attorney or agent has had time to
consider the restriction requirement. However, no telephone
communication need be made where the requirement for restriction is
complex, the application is being prosecuted by the applicant pro se, or
the examiner knows from past experience that an election will not be
made by telephone. The examiner should arrange for a second telephone
call within a reasonable time, generally within 3 working days. If the
attorney or agent objects to making an oral election, or fails to
respond, the usual restriction letter will be mailed, and this letter
should contain reference to the unsuccessful telephone call. (See MPEP
Section  809 and Section  809.02(a)). When an oral election is made, the
examiner will then proceed to incorporate into the Office action a
formal restriction requirement including the date of the election, the
attorney's or agent's name,  and a complete record of the telephone
interview, followed by a complete action on the elected claims including
linking or generic claims if present.

Form Paragraphs 8.23 or 8.23.01 should be used to make a telephone
election of record.

8.23 Requirement, When Elected by Telephone

During a telephone conversation with [1] on [2] a provisional election
was made   [3] traverse to prosecute the invention of   [4], claim  [5]. 
Affirmation of this election must be made by applicant in replying to
this Office action.  Claim  [6] withdrawn from further consideration by
the examiner,  37 CFR 1.142(b), as being drawn to a non-elected
invention.

Examiner Note:

1. In bracket 3, insert --with-- or --without--, whichever is
applicable.

2. In bracket 4, insert either the elected group or species.

3. An action on the merits of the claims should follow.

8.23.01 Requirement, No Election by Telephone

A telephone call was made to [1] on   [2] to request an oral election to
the above restriction requirement, but did not result in an election
being made.

Examiner Note:

1. In bracket 1, insert the name of the applicant or attorney or agent
contacted.

2. In bracket 2, insert the date(s) of the telephone contact(s).

3. This paragraph should be used in all instances where a telephone
election was attempted and the applicant's representative did not or
would not make an election.

4. This paragraph should not be used if no contact was made with
applicant or applicant's representative.

If, on examination, the examiner finds the elected claims to be
allowable and no traverse was made, the letter should be attached to the
Notice of Allowability form PTOL-37 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, using Office Action Summary
form PTOL-326.

Should the elected claims be found allowable in the first action, and an
oral traverse was noted, the examiner should include in his or her
action a statement under MPEP Section  821.01, making the restriction
final and giving applicant 1 month to either cancel the nonelected
claims or take other appropriate action. (37 CFR 1.144). Failure to take
action will be treated as an authorization to cancel the nonelected
claims by an examiner's amendment and pass the application to issue.
Prosecution of the application is otherwise closed.

In either situation (traverse or no traverse), caution should be
exercised to determine if any of the allowed claims are linking or
generic claims before canceling the nonelected claims.

Where the respective inventions are located in different groups, the
requirement for restriction should be made only after consultation with
and approval by all groups involved. If an oral election would cause the
application to be examined in another group, the initiating group should
transfer the application with a signed memorandum of the restriction
requirement and a record of the interview. The receiving group will
incorporate the substance of this memorandum in its official letter as
indicated above. Differences as to restriction should be settled by the
existing chain of command, e.g., supervisory patent examiner or group
director.

This practice is limited to use by examiners who have at least
negotiation authority. Other examiners must have the prior approval of
their supervisory patent examiner.

---SECTION---814 Indicate Exactly How Application Is To Be Restricted

SPECIES

The mode of indicating how to require restriction between species is set
forth in MPEP Section  809.02(a).

As pointed out in Ex parte Ljungstrom, 1905 C.D. 541, 119 O.G. 2335
(Comm'r Pat. 1905), the particular limitations in the claims and the
reasons why such limitations are considered to restrict the claims to a
particular disclosed species should be mentioned if necessary to make
the requirement clear.

INVENTIONS OTHER THAN SPECIES

It is necessary to read all of the claims in order to determine what the
claims cover. When doing this, the claims directed to each separate
subject should be noted along with a statement of the subject matter to
which they are drawn.

This is the best way to most clearly and precisely indicate to applicant
how the application should be restricted. It consists in identifying
each separate subject amongst which restriction is required, and
grouping each claim with its subject.

The separate inventions should be identified by a grouping of the claims
with a short description of the total extent of the invention claimed in
each group, specifying the type or relationship of each group as by
stating the group is drawn to a process, or to a subcombination, or to a
product, etc., and should indicate the classification or separate status
of each group, as for example, by class and subclass.

While every claim should be accounted for, the omission to group a
claim, or placing a claim in the wrong group will not affect the
propriety of a final requirement where the requirement is otherwise
proper and the correct disposition of the omitted or erroneously grouped
claim is clear.

LINKING CLAIMS

The generic or other linking claims should not be associated with any
one of the linked inventions since such claims must be examined with any
one of the linked inventions that may be elected. This fact should be
clearly stated.

---SECTION---815 Make Requirement Complete

When making a requirement every effort should be made to have the
requirement complete. If some of the claimed inventions are classifiable
in another art unit and the examiner has any doubt as to the proper line
among the same, the application should be referred to the examiner of
the other art unit for information on that point and such examiner
should render the necessary assistance.

---SECTION---816 Give Reasons for Holding of Independence or
Distinctness

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.

For example, relative to combination and a subcombination thereof, the
examiner should point out the reasons why he or she considers the
subcombination to have utility by itself or in other combinations, and
why he or she considers that the combination as claimed does not rely on
the subcombination as its essential distinguishing part.

Each other relationship of claimed invention should be similarly treated
and the reasons for the conclusions of distinctness of invention as
claimed set forth.

The separate inventions should be identified by a grouping of the claims
with a short description of the total extent of the invention claimed in
each group, specifying the type or relationship of each group as by
stating the group is drawn to a process, or to subcombination, or to
product, etc., and should indicate the classification or separate status
of each group, as for example, by class and subclass. See MPEP Section 
809.

Note Form Paragraph 8.13.

8.13 Distinctness (Heading)

The inventions are distinct, each from the other because:

Examiner Note:

This paragraph should be followed by one of paragraphs 8.14-8.20.02 to
show distinctness. 

---SECTION---817 Outline of Letter for Restriction Requirement Between
Distinct Inventions

The statement in MPEP Section  809.02 through Section  809.02(d) is
adequate indication of the form of letter when election of species is
required.

No outline of a letter is given for other types of independent
inventions since they rarely occur.

The following outline of a letter for a requirement to restrict is
intended to cover every type of original restriction requirement between
related inventions including those having linking claims.

OUTLINE OF LETTER

(A) Statement of the requirement to restrict and that it is being made
under  35 U.S.C. 121

(1) Identify each group by Roman numeral.

(2) List claims in each group.  Check accuracy of numbering of the
claims; look for same claims in two groups; and look for omitted claims.

(3) Give short description of total extent of the subject matter claimed
in each group, pointing out critical claims of different scope and
identifying whether the claims are directed to a combination,
subcombination, process, apparatus, or product.

(4) Classify each group.

Form Paragraphs 8.08-8.11 should be used to group inventions.

8.08 Restriction, Two Groupings

Restriction to one of the following inventions is required under  35
U.S.C. 121:

I.	Claim  [1], drawn to   [2], classified in class   [3], subclass  
[4].

II.	Claim  [5], drawn to [6], classified in class [7], subclass   [8].

8.09 Restriction, 3rd Grouping

III.	Claim  [1], drawn to   [2], classified in class [3], subclass  
[4].

8.10 Restriction, 4th Grouping

IV.	Claim  [1], drawn to   [2], classified in class [3], subclass   [4].

8.11 Restriction, Additional Groupings

[1].	Claim[2], drawn to [3], classified in class [4], subclass [5].

Examiner Note:

In bracket 1, insert the appropriate roman numeral, e.g., --V--, --VI--,
etc.

(B) Take into account claims not grouped, indicating their disposition.

(1) Linking claims

(i) Indicate (make no action)

(ii) Statement of groups to which linking claims may be assigned for
examination

(2) Other ungrouped claims

(3) Indicate disposition, e.g., previously nonelected, nonstatutory,
canceled, etc.

(C) Allegation of distinctness

(1) Point out facts which show distinctness

(2) Treat the inventions as claimed, don't merely state your conclusion
that inventions in fact are distinct

(i) Subcombination - Subcombination disclosed as usable together

Each usable alone or in other identified combination

Demonstrate by examiner's suggestion

(ii) Combination - Subcombination

Combination as claimed does not require subcombination

AND

Subcombination usable alone or in other combination

Demonstrate by examiner's suggestion

(iii) Process - Apparatus

Process can be carried out by hand or by other apparatus

Demonstrate by examiner's suggestion

OR

Demonstrate apparatus can be used in other process (rare).

(iv) Process of making and/or Apparatus for making  - Product made

Claimed product can be made by other process (or apparatus)

Demonstrate by examiner's suggestion

OR

Demonstrate process of making (or apparatus for making) can produce
other product (rare)

(D) Provide reasons for insisting upon restriction

(1) Separate status in the art

(2) Different classification

(3) Same classification but recognition of divergent subject matter

(4) Divergent fields of search

(5) Search required for one group not required for the other

(E) Summary statement

(1) Summarize (1) distinctness and (2) reasons for insisting upon
restriction, if applicable

(2) Include paragraph advising as to reply required.

(3) Indicate effect of allowances of linking claims, if any present

(4) Indicate effect of cancellation or nonallowance of evidence claims
(see MPEP Section  806.05(c))

One of Form Paragraphs 8.21.01 through 8.21.03 must be used at the
conclusion of each restriction requirement.

8.21.01 Conclusion to All Restriction Requirements: Different
Classification

Because these inventions are distinct for the reasons given above and
have acquired a separate status in the art as shown by their different
classification, restriction for examination purposes as indicated is
proper.

Examiner Note:

THIS FORM PARAGRAPH (OR ONE OF FORM PARAGRAPHS 8.21.02 OR 8.21.03) MUST
BE ADDED AS A CONCLUSION TO ALL RESTRICTION REQUIREMENTS employing any
of form paragraphs 8.14 to 8.20.02.

8.21.02 Conclusion to All Restriction Requirements: Recognized Divergent
Subject Matter

Because these inventions are distinct for the reasons given above and
have acquired a separate status in the art because of their recognized
divergent subject matter, restriction for examination purposes as
indicated is proper.

Examiner Note:

THIS FORM PARAGRAPH (OR ONE OF FORM PARAGRAPHS 8.21.01 OR 8.21.03) MUST
BE ADDED AS A CONCLUSION TO ALL RESTRICTION REQUIREMENTS employing any
of form paragraphs 8.14 to 8.20.02.

8.21.03 Conclusion to All Restriction Requirements: Different Search

Because these inventions are distinct for the reasons given above and
the search required for Group [1] is not required for Group [2],
restriction for examination purposes as indicated is proper.

Examiner Note:

THIS FORM PARAGRAPH (OR ONE OF FORM PARAGRAPHS 8.21.01 OR 8.21.02) MUST
BE ADDED AS A CONCLUSION TO ALL RESTRICTION REQUIREMENTS employing any
of form paragraphs 8.14 to 8.20.02.

Form Paragraph 8.23.02 must be included in all restriction requirements
for applications having joint inventors.

8.23.02 Joint Inventors, Correction of Inventorship

Applicant is reminded that upon the cancellation of claims to a
non-elected invention, the inventorship must be amended in compliance
with  37 CFR 1.48(b) if one or more of the currently named inventors is
no longer an inventor of at least one claim remaining in the
application.  Any amendment of inventorship must be accompanied by a
petition under  37 CFR 1.48(b) and by the fee required under  37 CFR
1.17(i).

Examiner Note:

This paragraph must be included in all restriction requirements for
applications having joint inventors.

---SECTION---818 Election and Reply

Election is the designation of the particular one of two or more
disclosed inventions that will be prosecuted in the application.

A reply should be made to each point raised by the examiner's action,
and may include a traverse or compliance.

A traverse of a requirement to restrict is a statement of the reasons
upon which the applicant relies for his or her conclusion that the
requirement is in error.

To be complete, a reply to a requirement which merely specifies the
linking claims need only include a proper election.

Where a rejection or objection is included with a restriction
requirement, applicant, besides making a proper election must also
distinctly and specifically point out the supposed errors in the
examiner's rejection or objection.  See  37 CFR 1.111.

---SECTION---818.01 Election Fixed by Action on Claims

Election becomes fixed when the claims in an application have received
an action on their merits by the Office.

---SECTION---818.02 Election Other Than Express

Election may be made in other ways than expressly in reply to a
requirement as set forth in MPEP Section  818.02(a) and Section 
818.02(c).

---SECTION---818.02(a) By Originally Presented Claims

Where claims to another invention are properly added and entered in the
application before an action is given, they are treated as original
claims for purposes of restriction only.

The claims originally presented and acted upon by the Office on their
merits determine the invention elected by an applicant, and subsequently
presented claims to an invention other than that acted upon should be
treated as provided in MPEP Section  821.03.

---SECTION---818.02(b) Generic Claims Only - No Election of Species

Where only generic claims are first presented and prosecuted in an
application in which no election of a single invention has been made,
and applicant later presents species claims to more than one species of
the invention, he or she must at that time indicate an election of a
single species. The practice of requiring election of species in cases
with only generic claims of the unduly extensive and burdensome search
type is set forth in MPEP Section  808.01(a).

---SECTION---818.02(c) By Optional Cancellation of Claims

Where applicant is claiming two or more inventions (which may be species
or various types of related inventions) and as a result of action on the
claims, he or she cancels the claims to one or more of such inventions,
leaving claims to one invention, and such claims are acted upon by the
examiner, the claimed invention thus acted upon is elected.

---SECTION---818.03 Express Election and Traverse

37 CFR 1.143 Reconsideration of requirement.

If the applicant disagrees with the requirement for restriction, he may
request reconsideration and withdrawal or modification of the
requirement, giving the reasons therefor (see Section  1.111). In
requesting reconsideration the applicant must indicate a provisional
election of one invention for prosecution, which invention shall be the
one elected in the event the requirement becomes final. The requirement
for restriction will be reconsidered on such a request. If the
requirement is repeated and made final, the examiner will at the same
time act on the claims to the invention elected.

Election in reply to a requirement may be made either with or without an
accompanying traverse of the requirement.

---SECTION---818.03(a) Reply Must Be Complete

As shown by the first sentence of  37 CFR 1.143, the traverse to a
requirement must be complete as required by  37 CFR 1.111(b) which reads
in part: "In order to be entitled to reconsideration or further
examination, the applicant or patent owner must reply to the Office
action.  The reply by the applicant or patent owner must be reduced to a
writing which distinctly and specifically points out the supposed errors
in the examiner's action and must reply to every ground of objection and
rejection in the prior Office action. . . . The applicant's or patent
owner's reply must appear throughout to be a bona fide attempt to
advance the application or the reexamination proceeding to final action.
. . ."

Under this rule, the applicant is required to specifically point out the
reasons on which he or she bases his or her conclusions that a
requirement to restrict is in error. A mere broad allegation that the
requirement is in error does not comply with the requirement of 37 CFR
Section  1.111. Thus the required provisional election (see MPEP Section 
818.03(b)) becomes an election without traverse.

---SECTION---818.03(b) Must Elect, Even When Requirement Is Traversed

As noted in the second sentence of  37 CFR 1.143, a provisional election
must be made even though the requirement is traversed.

All requirements for restriction should include Form Paragraph 8.22.

8.22 Requirement, Election, Mailed

Applicant is advised that the reply to this requirement to be complete
must include an election of the invention to be examined even though the
requirement be traversed (37 CFR 1.143).

Examiner Note:

This paragraph can be used in Office actions with or without an action
on the merits.

---SECTION---818.03(c) Must Traverse To Preserve Right of Petition

37 CFR 1.144 Petition from requirement for restriction.

After a final requirement for restriction, the applicant, in addition to
making any response due on the remainder of the action, may petition the
Commissioner to review the requirement. Petition may be deferred until
after final action on or allowance of claims to the invention elected,
but must be filed not later than appeal. A petition will not be
considered if reconsideration of the requirement was not requested. (See
Section  1.181.)

If applicant does not distinctly and specifically point out supposed
errors in the restriction requirement, the election should be treated as
an election without traverse and be so indicated to the applicant by use
of Form Paragraph 8.25.02.

8.25.02 Election Without Traverse Based on Incomplete Reply

Applicant's election of   [1] in Paper No.   [2] is acknowledged. 
Because applicant did not distinctly and specifically point out the
supposed errors in the restriction requirement, the election has been
treated as an election without traverse (MPEP Section  818.03(a)).

---SECTION---818.03(d) Traverse of Nonallowance of Linking Claims

A traverse of the nonallowance of the linking claims is not a traverse
of the requirement to restrict; it is a traverse of a holding of
nonallowance.

Election combined with a traverse of the nonallowance of the linking
claims only is an agreement with the position taken by the Office that
restriction is proper if the linking-type claim is not allowable and
improper if they are allowable. If the Office allows such a claim, it is
bound to withdraw the requirement and to act on all linked inventions.
But once all linking claims are canceled  37 CFR 1.144 would not apply,
since the record would be one of agreement as to the propriety of
restriction.

Where, however, there is a traverse on the ground that there is some
relationship (other than and in addition to the linking-type claim) that
also prevents restriction, the merits of the requirement are contested
and not admitted. Assume a particular situation of process of making and
product made where the claim held linking is a claim to product limited
by the process of making it. The traverse may set forth particular
reasons justifying the conclusion that restriction is improper where the
process necessarily makes the product and there is no other present
known process by which the product can be made. If restriction is made
final in spite of such traverse, the right to petition is preserved even
though all linking claims are canceled.

---SECTION---818.03(e) Applicant Must Make Own Election

Applicant must make his or her own election. The examiner will not make
the election for the applicant.  37 CFR 1.142,  37 CFR 1.143, second
sentence.

---SECTION---819 Office Generally Does Not Permit Shift

The general policy of the Office is not to permit the applicant to shift
to claiming another invention after an election is once made and action
given on the elected subject matter. When claims are presented which the
examiner holds are drawn to an invention other than the one elected, he
or she should treat the claims as outlined in MPEP Section  821.03.

Where the inventions are distinct and of such a nature that the Office
compels restriction, an election is not waived even though the examiner
gives action upon the patentability of the claims to the nonelected
invention. Ex parte Loewenbach, 1904 C.D. 170, 110 O.G. 857 (Comm'r Pat.
1904) and In re Waugh, 135 F.2d 627, 57 USPQ 371 (CCPA 1943).

Where an application filed under  37 CFR 1.53(d), a continued
prosecution application (CPA), is a continuation and not a divisional,
or where an application filed under former  37 CFR 1.62, File Wrapper
Continuation (FWC), is a continuation and not a divisional or C-I-P, an
express election made in the prior application in reply to a restriction
requirement carries over to the CPA or FWC application unless otherwise
indicated by applicant. Where there is no indication in the CPA or FWC
application that a change in election is desired, the examiner's first
action should include a repetition of the restriction requirement made
in the prior application to the extent it is still applicable in the CPA
or FWC application and a statement that prosecution is being continued
on the invention elected and prosecuted by applicant in the prior
application.  Examples of what is meant by the phrase "otherwise
indicated by applicant" would be where the CPA or FWC is filed as (1) a
divisional or (2) a continuation and includes an amendment filed prior
to first action in the CPA or FWC adding claims to an invention not
previously elected. In each of these examples the examiner should make a
new restriction requirement in the first action.

---SECTION---819.01 Office May Waive Election and Permit Shift

While applicant, as a matter of right, may not shift from claiming one
invention to claiming another, the Office is not precluded from
permitting a shift. It may do so where the shift results in no
additional work or expense, and particularly where the shift reduces
work as by simplifying the issues. Ex parte Heritage, Pat. No. 2,375,414
decided January 26, 1944. If the examiner has accepted a shift from
claiming one invention to claiming another, the case is not abandoned.
Meden v.   Curtis, 1905 C.D.272, 117 O.G. 1795 (Comm'r Pat. 1905).

---SECTION---820 Not an Election; Permissible Shift

Where the Office rejects on the ground that the process is obvious, the
only invention being in the product made, presenting claims to the
product is not a shift: Ex parte Trevette, 1901 C.D. 170, 97 O.G. 1173
(Comm'r Pat. 1901).

Where a product is elected, there is no shift where examiner holds
invention to be in process.   Ex parte Grier, 1923 C.D. 27, 309 O.G. 223
(Comm'r Pat. 1923).

Where a genus is allowed, applicant may prosecute a reasonable number of
additional species thereunder, in accordance with  37 CFR 1.141. This
does not constitute a shift  .  Ex parte Sharp, Patent No. 2,232,739.

---SECTION---820.01 Old Combination Claimed - Not an Election

Where an application originally presents claims to a combination (AB)
and the examiner holds the novelty, if any, to reside only in the
subcombination (B) per se  (see MPEP Section  806.05(b)), and the claims
directed to the combination are rejected, subsequently presented claims
to subcombination (B) of the originally claimed combination should not
be held constructively nonelected on the ground of previous election of
the combination. See MPEP Section  821.03. Ex parte Donnell, 1923 C.D.
54, 315 O.G. 398 (Comm'r Pat. 1923). The combination and subcombination
as defined by the claims under this special situation are not for
distinct inventions.  (See MPEP Section  806.05(c).)

---SECTION---820.02 Interference Issues - Not an Election

Where an interference is instituted prior to an applicant's election,
the subject matter of the interference issues is not elected. An
applicant may, after the termination of the interference, elect any one
of the inventions claimed.

---SECTION---821 Treatment of Claims Held To Be Drawn to Nonelected
Inventions

Claims held to be drawn to nonelected inventions, including claims to
nonelected species, are treated as indicated in MPEP Section  821.01
through Section  821.03.

The propriety of a requirement to restrict, if traversed, is reviewable
by petition under  37 CFR 1.144  . In re Hengehold, 440 F.2d 1395, 169
USPQ 473 (CCPA 1971).

All claims that the examiner holds as not being directed to the elected
subject matter should be withdrawn from further consideration by the
examiner as set forth in MPEP Section  809.02(c) and Section  821.01
through Section  821.03.  As to one or more of such claims the applicant
may traverse the examiner's holding that they are not directed to the
elected subject matter. The propriety of this holding, if traversed, is
appealable. Thus, if the examiner adheres to his or her position after
such traverse, he or she should reject the claims to which the traverse
applies on the ground that they are not directed to the elected subject
matter. Because applicant believes the claims are readable on the
elected invention and the examiner disagrees, the metes and bounds of
the claim(s) cannot be readily ascertained, rendering the claim(s) vague
and indefinite within the meaning of  35 U.S.C. 112, second paragraph.

---SECTION---821.01 After Election With Traverse

Where the initial requirement is traversed, it should be reconsidered.
If, upon reconsideration, the examiner is still of the opinion that
restriction is proper, it should be repeated and made final in the next
Office action. (See MPEP Section  803.01.) In doing so, the examiner
should reply to the reasons or arguments advanced by applicant in the
traverse. Form Paragraph 8.25 should be used to make a restriction
requirement final.

8.25 Answer to Arguments With Traverse

Applicant's election with traverse of   [1] in Paper No.   [2] is
acknowledged.  The traversal is on the ground(s) that   [3].  This is
not found persuasive because   [4].

The requirement is still deemed proper and is therefore made FINAL.

Examiner Note:

1. In bracket 1, insert the invention elected.

2. In bracket 3, insert in summary form, the ground(s) on which
traversal is based.

3. In bracket 4, insert the reasons why the traversal was not found to
be persuasive.

If the examiner, upon reconsideration, is of the opinion that the
requirement for restriction is improper, he or she should state in the
next Office action that the requirement for restriction is withdrawn and
give an action on all the claims.

If the requirement is repeated and made final, in that and in each
subsequent action, the claims to the nonelected invention should be
treated by using Form Paragraph 8.05.

8.05 Claims Stand Withdrawn With Traverse

Claim  [1] withdrawn from further consideration pursuant to 37 CFR
1.142(b), as being drawn to a non-elected [2], there being no
(allowable) generic or linking claim.  Applicant timely traversed the
restriction (election) requirement in Paper No.   [3].

Examiner Note:

In bracket 2, insert --invention-- or --species--.

This will show that applicant has retained the right to petition from
the requirement under  37 CFR 1.144. (See MPEP Section  818.03(c).)

When the case is otherwise ready for issue, and has not received a final
action, the examiner should treat the case by using Form Paragraph 8.03.
(See MPEP Section  809.02(c)).

When preparing a final action in an application where there has been a
traversal of a requirement for restriction, the examiner should indicate
in the Office action that a complete reply must include cancellation of
the claims drawn to the nonelected invention, or other appropriate
action (37 CFR 1.144). See Form Paragraph 8.24.

8.24 Reply to Final Must Include Cancellation

This application contains claim  [1] drawn to an invention nonelected
with traverse in Paper No. [2].  A complete reply to the final rejection
must include cancelation of nonelected claims or other appropriate
action (37 CFR 1.144).  See MPEP Section  821.01.

Examiner Note:

For use in FINAL rejections of applications containing claims nonelected
with traverse.

Where a reply to a final action has otherwise placed the application in
condition for allowance, the failure to cancel claims drawn to the
nonelected invention or to take appropriate action will be construed as
authorization to cancel these claims by examiner's amendment and pass
the application to issue after the expiration of the period for reply.

Note that the petition under  37 CFR 1.144 must be filed not later than
appeal. This is construed to mean appeal to the Board of Patent Appeals
and Interferences. If the application is ready for allowance after
appeal and no petition has been filed, the examiner should simply cancel
the nonelected claims by examiner's amendment, calling attention to the
provisions of  37 CFR 1.144.

---SECTION---821.02 After Election Without Traverse

Where the initial requirement is not traversed, if adhered to,
appropriate action should be given on the elected claims. Form
Paragraphs 8.25.01 or 8.25.02 should be used by the examiner to
acknowledge the election without traverse.

8.25.01 Election Without Traverse

Applicant's election without traverse of [1] in Paper No.   [2] is
acknowledged.

8.25.02 Election Without Traverse Based on Incomplete Reply

Applicant's election of   [1] in Paper No.   [2] is acknowledged. 
Because applicant did not distinctly and specifically point out the
supposed errors in the restriction requirement, the election has been
treated as an election without traverse (MPEP Section  818.03(a)).

Claims to the nonelected invention should be treated by using Form
Paragraph 8.06.

8.06 Claims Stand Withdrawn Without Traverse

Claim  [1] withdrawn from further consideration pursuant to  37 CFR
1.142(b) as being drawn to a nonelected [2], there being no allowable
generic or linking claim.  Election was made without traverse in Paper
No.   [3].

Examiner Note:

In bracket 2, insert --invention--, or --species--.

This will show that applicant has not retained the right to petition
from the requirement under  37 CFR 1.144.

Under these circumstances, when the application is otherwise ready for
issue, the claims to the nonelected invention, including nonelected
species, may be canceled by an examiner's amendment, and the application
passed to issue. However, where the application contains an allowed
generic claim, and applicant has not been previously notified as to the
allowance of a generic claim, the examiner must, prior to canceling the
nonelected claims, notify applicant of the allowance of a generic claim
and give applicant a time limit of 1-month (not less than 30 days) to
conform all of the claims to the nonelected species to fully embrace an
allowed generic claim.  See MPEP Section  809.02(c). The examiner's
amendment should include Form Paragraph 8.07.

8.07 Ready for Allowance Without Traverse

This application is in condition for allowance except for the presence
of claim  [1] to [2] nonelected without traverse.  Accordingly, claim 
[3] been canceled.

Examiner Note:

In bracket 2, insert --an invention--, --inventions--, --a species--, or
--species--.

---SECTION---821.03 Claims for Different Invention Added After an Office
Action

Claims added by amendment following action by the examiner,  MPEP
Section  818.01,  Section  818.02(a), to an invention other than
previously claimed, should be treated as indicated by  37 CFR 1.145.

37 CFR 1.145 Subsequent presentation of claims for different invention.

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 Section
Section  1.143 and 1.144.

	The action should include Form Paragraph 8.04.

8.04 Election by Original Presentation

Newly submitted claim  [1] directed to an invention that is independent
or distinct from the invention originally claimed for the following
reasons: [2]

Since applicant has received an action on the merits for the originally
presented invention, this invention has been constructively elected by
original presentation for prosecution on the merits.  Accordingly, claim
[3] withdrawn from consideration as being directed to a non-elected
invention.  See  37 CFR  1.142(b) and MPEP Section  821.03.

Of course, a complete action on all claims to the elected invention
should be given.

Note that the above practice is intended to have no effect on the
practice stated in MPEP Section  2303.

An amendment canceling all claims drawn to the elected invention and
presenting only claims drawn to the nonelected invention should not be
entered. Such an amendment is nonresponsive. Applicant should be
notified by using Form Paragraph 8.26.

8.26 Canceled Elected Claims, Non-Responsive

The amendment filed on [1] canceling all claims drawn to the elected
invention and presenting only claims drawn to a non-elected invention is
non-responsive (MPEP Section  821.03). The remaining claims are not
readable on the elected invention because [2].

Since the above-mentioned amendment appears to be a bona fide attempt to
reply, applicant is given a TIME PERIOD of ONE (1) MONTH or THIRTY (30)
DAYS, whichever is longer, from the mailing date of this notice within
which to supply the omission or correction in order to avoid
abandonment. EXTENSIONS OF THIS TIME PERIOD UNDER  37 CFR 1.136(a) ARE
AVAILABLE.

---SECTION---821.04 Rejoinder

Where product and process claims drawn to independent and distinct
inventions 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 process. See MPEP Section  806.05(f) and Section  806.05(h). The
claims to the nonelected invention will be withdrawn from further
consideration under  37 CFR 1.142. See MPEP Section  809.02(c) and
Section  821 through Section  821.03.  However, if applicant elects
claims directed to the product, and a product claim is subsequently
found allowable, withdrawn process claims which depend from or otherwise
include all the limitations of the allowable product claim will be
rejoined.

Where the application as originally filed discloses the product and the
process for making and/or using the product, and only claims directed to
the product are presented for examination, when a product claim is found
allowable, applicant may present claims directed to the process of
making and/or using the patentable product by way of amendment pursuant
to  37 CFR 1.121.  In view of the rejoinder procedure, and in order to
expedite prosecution, applicants are encouraged to present such process
claims, preferably as dependent claims, in the application at an early
stage of prosecution. Process claims which depend from or otherwise
include all the limitations of the patentable product will be entered as
a matter of right if the amendment is presented prior to final rejection
or allowance. Amendments submitted after final rejection are governed by 
37 CFR 1.116.  Process claims which do not depend from or otherwise
include the limitations of the patentable product will be withdrawn from
consideration, via an election by original presentation (see MPEP
Section  821.03). Amendments submitted after allowance are governed by 
37 CFR 1.312. Process claims which depend from or otherwise include all
the limitations of an allowed product claim and which meet the
requirements of  35 U.S.C. 101, 102, 103, and 112 may be entered.

Where applicant voluntarily presents claims to the product and process
in separate applications (i.e., no restriction requirement was made by
the Office), and one of the applications issues as a patent, the
remaining application may be rejected under the doctrine of
obviousness-type double patenting, where appropriate (see MPEP Section 
804 -  Section  804.03), and applicant may overcome the rejection by the
filing of a terminal disclaimer under  37 CFR 1.321(c) where
appropriate. Similarly, if copending applications separately present
product and process claims, provisional obviousness-type double
patenting rejections should be made where appropriate. However, once a
determination as to the patentability of the product has been reached
any process claim which contains limitations identical to the
allowed/allowable product should not be rejected over prior art without
consultation with a Group Director. 

Where product and process claims are presented in a single application
and that application qualifies under the transitional restriction
practice pursuant to  37 CFR 1.129(b), applicant may either: (1) elect
the invention to be searched and examined and pay the fee set forth in 
37 CFR 1.17(s) and have the additional inventions searched and examined
under  37 CFR 1.129(b)(2); or (2) elect the invention to be searched and
examined and not pay the additional fee (37 CFR 1.129(b)(3)).  Where no
additional fee is paid, if the elected invention is directed to the
product and the claims directed to the product are subsequently found
patentable, process claims which either depend from or include all the
limitations of the allowable product will be rejoined. If applicant
chooses to pay the fees to have the additional inventions searched and
examined pursuant to  37 CFR 1.129(b)(2) even if the product is found
allowable, applicant would not be entitled to a refund of the fees paid
under  37 CFR 1.129(b) by arguing that the process claims could have
been rejoined. 37 CFR 1.26 states that "[a]ny fee paid by actual mistake
or in excess of that required will be refunded, but a mere change of
purpose after the payment of money...will not entitle a party to demand
such a return..."  In this case, the fees paid under  37 CFR 1.129(b)
were not paid by actual mistake nor paid in excess, therefore, applicant
would not be entitled to a refund.

In the event of rejoinder, the rejoined process claims will be fully
examined for patentability in accordance with  37 CFR 1.104.  Thus, to
be allowable, the rejoined claims must meet all criteria for
patentability including the requirements of  35 U.S.C. 101, 102, 103,
and 112.  If the application containing the rejoined claims is not in
condition for allowance, the subsequent Office action may be made final,
or, if the application was already under final rejection, the next
Office action may be an advisory action. 

Form Paragraphs 8.42 through 8.44 should be used to notify applicant of
the rejoinder of process claims which depend from or otherwise include
all the limitations of an allowable product claim.

8.42 Rejoinder of Less Than All Process Claims

Claim  [1] directed to an allowable product.  Pursuant to the procedures
set forth in the Official Gazette notice dated March 26, 1996 (1184 O.G.
86), claim  [2], directed to the process of making or using the
patentable product, previously withdrawn from consideration as a result
of a restriction requirement, [3] now subject to being rejoined. 
Process claim  [4] hereby rejoined and fully examined for patentability
under  37 CFR 1.104. In accordance with the Official Gazette notice,
supra, process claim  [5], which [6] not depend from or otherwise
include all the limitations of the allowable product, [7] NOT been
rejoined.

Examiner Note:

1. If ALL previously withdrawn claims are being rejoined, then form
paragraph 8.43 should be used instead of this form paragraph.

2. If other non-process claims are present and are NOT being rejoined,
use form paragraph 8.44 instead of this form paragraph.

3. In bracket 1, insert the claim number(s) of the allowable product
claims followed by either -- is-- or -- are--.

4. In bracket 2, insert the claim number(s) of ALL process claims
previously withdrawn from consideration.

5. In bracket 3, insert either --is-- or --are--.

6. In bracket 4 , insert the number(s) of the rejoined process claims.

7. In bracket 5, insert the number(s) of the process claims NOT being
rejoined followed by either -- is-- or -- are--.

8. In bracket 6, insert --do-- or --does--.

9. In bracket 7, insert --has-- or --have--.

10. If rejoinder occurs after the first Office action on the merits and
if any of the rejoined claims are unpatentable, e.g., if a rejection
under  35 U.S.C. 112, first paragraph is made, then the next Office
action may be made final since the new ground of rejection was
necessitated by applicant's reply.

8.43 Rejoinder of All Previously Withdrawn Claims

Claim  [1] directed to an allowable product. Pursuant to the procedures
set forth in the Official Gazette notice dated March 26, 1996 (1184 O.G.
86), claim  [2], directed to the process of making or using the
patentable product, previously withdrawn from consideration as a result
of a restriction requirement, [3] now subject to being rejoined.  Claim 
[4] hereby rejoined and fully examined for patentability under  37 CFR
1.104.

Since all claims previously withdrawn from consideration under  37 CFR
1.142 have been rejoined, the restriction requirement made in the Paper
No. [5] is hereby withdrawn.

Examiner Note:

1. If LESS THAN ALL previously withdrawn process claims are being
rejoined, then form paragraph 8.42 should be used instead of this form
paragraph. If LESS THAN ALL previously withdrawn claims are being
rejoined, then form paragraph 8.44 should be used instead of this form
paragraph.

2. In bracket 1, insert the claim number(s) of the allowable product
claim(s) followed by either -- is-- or -- are--.

3. In bracket 2, insert the claim number(s) of the process claim(s)
previously withdrawn from consideration. 

4. In bracket 3, insert either --is-- or --are--.

5. In bracket 4, insert the number(s) of the process claims being
rejoined (should correspond to bracket 2 insert).

6. If rejoinder occurs after the first Office action on the merits and
if any of the rejoined claims are unpatentable, e.g., if a rejection
under  35 U.S.C. 112, first paragraph is made, then the next Office
action may be made final since the new ground of rejection was
necessitated by applicant's reply.

8.44 Rejoinder of Process Claims, Other Claims Present and Not Rejoined

Claim  [1] directed to an allowable product. Pursuant to the procedures
set forth in the Official Gazette notice dated March 26, 1996 (1184 O.G.
86), claim  [2], directed to the process of making or using the
patentable product, previously withdrawn from consideration as a result
of a restriction requirement, [3] now subject to being rejoined. 
Process claim  [4] hereby rejoined and fully examined for patentability
under  37 CFR 1.104.  Claim  [5], not directed to the process of making
or using the patentable product, will not be rejoined.

Examiner Note:

1. If LESS THAN ALL previously withdrawn process claims are being
rejoined, then form paragraph 8.42 should be used instead of this form
paragraph.  If ALL previously withdrawn claims are being rejoined then
form paragraph 8.43 should be used instead of this form paragraph.

2. In bracket 1, insert the claim number(s) of the allowable product
claim(s) followed by either -- is-- or -- are--.

3. In bracket 2, insert the claim number(s) of the process claim(s)
previously withdrawn from consideration. 

4. In bracket 3, insert either --is-- or --are--.

5. In bracket 4, insert the number(s) of the process claims being
rejoined (should correspond to bracket 2 insert).

6. In bracket 5, insert the number(s) of all previously withdrawn claims
which are not being rejoined.

7. If rejoinder occurs after the first Office action on the merits and
if any of the rejoined claims are unpatentable, e.g., if a rejection
under  35 U.S.C. 112, first paragraph is made, then the next Office
action may be made final since the new ground of rejection was
necessitated by applicant's reply.

See MPEP Section  706.02(n) for the applicability of  35 U.S.C. 103(b)
to biotechnological processes and compositions of matter.

See MPEP Section  2116.01 for guidance on the treatment of process
claims which make or use a novel, nonobvious product.

See MPEP Section  806.05(c) for rejoinder of restricted
combination/subcombination inventions when an evidence claim is found to
be unallowable, and see MPEP Section  809 and Section  809.04 for
rejoinder of restricted inventions when a linking claim is found
allowable.

---SECTION---822 Claims to Inventions That Are Not Distinct in Plural
Applications of Same Inventive Entity

The treatment of plural applications of the same inventive entity, none
of which has become a patent, is treated in  37 CFR 1.78(b) as follows:

(b) Where two or more applications filed by the same applicant contain
conflicting claims, elimination of such claims from all but one
application may be required in the absence of good and sufficient reason
for their retention during pendency in more than one application.

See MPEP Section  804.03 for conflicting subject matter, different
inventors, common ownership.

See MPEP Section  706.03(k) for rejection of one claim on another in the
same application.

See MPEP Section  706.03(w) and Section  706.07(b) for res judicata.

See MPEP Section  709.01 for one application in interference.

See MPEP Section  806.04(h) to Section  806.04(i) for species and genus
in separate applications.

Wherever appropriate, such conflicting applications should be joined.
This is particularly true, where the two or more applications are due
to, and consonant with, a requirement to restrict which the examiner now
considers to be improper.

Form Paragraph 8.29 should be used when the conflicting claims are
identical or conceded by applicant to be not patentably distinct.

8.29 Conflicting Claims, Copending Applications

Claim  [1] of this application conflict with claim  [2] of Application
No.   [3]. 37 CFR 1.78(b) provides that when two or more applications
filed by the same applicant contain conflicting claims, elimination of
such claims from all but one application may be required in the absence
of good and sufficient reason for their retention during pendency in
more than one application. Applicant is required to either cancel the
conflicting claims from all but one application or maintain a clear line
of demarcation between the applications. See MPEP Section  822.

Examiner Note:

This paragraph is appropriate only when the conflicting claims are
patentably distinct.

---SECTION---822.01 Copending Before the Examiner

37 CFR 1.78 Claiming benefit of earlier filing date and cross-references
to other applications.

                  +++    

(b) Where two or more applications filed by the same applicant contain
conflicting claims, elimination of such claims from all but one
application may be required in the absence of good and sufficient reason
for their retention during pendency in more than one application.

                  +++    

37 CFR 1.130 Affidavit or declaration to disqualify commonly 	owned
patent as prior art.

                  +++    

(b) When an application or a patent under reexamination claims an
invention which is not patentably distinct from an invention claimed in
a commonly owned patent with the same or a different inventive entity, a
double patenting rejection will be made in the application or a patent
under reexamination. A judicially created double patenting rejection may
be obviated by filing a terminal disclaimer in accordance with Section 
1.321(c).

                  +++    

Where claims in one application are unpatentable over claims of another
application of the same inventive entity because they recite the same
invention, a complete examination should be made of the claims of each
application and all appropriate rejections should be entered in each
application, including rejections based upon prior art. The claims of
each application may also be rejected on the grounds of provisional
double patenting on the claims of the other application whether or not
any claims avoid the prior art. Where appropriate, the same prior art
may be relied upon in each of the applications.  See also MPEP Section 
804.01 and Section  822.

ONLY PROVISIONAL DOUBLE PATENTING REJECTION REMAINING IN ONE APPLICATION

The "provisional" double patenting rejection should continue to be made
by the examiner in each application as long as there are conflicting
claims in more than one application unless that "provisional" double
patenting rejection is the only rejection remaining in one of the
applications. If the "provisional" double patenting rejection in one
application is the only rejection remaining in that application, the
examiner should then withdraw that rejection and permit the application
to issue as a patent, thereby converting the "provisional" double
patenting rejection in the other application(s) into a double patenting
rejection at the time the one application issues as a patent.  See also
MPEP Section  804.01 and Section  822.

ONLY PROVISIONAL DOUBLE PATENTING REJECTIONS REMAINING IN BOTH
APPLICATIONS

If the "provisional" double patenting rejections in both application are
the only rejections remaining in those applications, the examiner should
then withdraw that rejection in one of the applications and permit the
application to issue as a patent. The examiner should maintain the
double patenting rejection in the other application as a "provisional"
double patenting rejection which will be converted into a double
patenting rejection when the one application issues as a patent.

---SECTION---823 Unity of Invention Under the Patent Cooperation Treaty

See Chapter 1800 for a detailed discussion of unity of invention under
the Patent Cooperation Treaty (PCT).

