Restriction Requirement Practice. Prepared by Woodard Emhardt. Restriction Practice. 35 USC 121 Divisional Applications “If 2 or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions…”
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35 USC 121 Divisional Applications
Claimed inventions are:
– the 2nd invention would not infringe the
Useful form paragraph from Chuck Schmal:
It is respectfully submitted that claims could be examined together without imposing an undue burden. As stated in § 803 of the Manual of Patent Examining Procedure, “[i]f 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 distinct or independent inventions.” Under this standard, it is believed the search of groups jointly would not impose a serious burden.
Note: When traversing provide basis for similarities between elected and non-elected claims based on criteria otherthan just the linkingclaim
Examining non-elected claims or species after elected claims or species have been found in condition for allowance
e.g. Product and Process of Making or Using
any previously withdrawn claims including all of the limitations of these allowable claims are eligible for rejoinder
“[If] an allowable generic claim links a reasonable number of included species.”
A) Process as claimed can be practiced by hand orby only a materially different apparatus; and/or
B) The apparatus as claimed can be used to practice another materially different process
A) Claimed process is not an obvious process of making the product; and the claimed process can be used to make another materially distinct product; or
B) The claimed product can be made by another materially distinct process.