M.P.E.P. 800 Restriction in Applications File Under 35 USC 111; Double Patenting

Question 1

Basis of Restriction

Answer 1

An applicant is claiming more than one invention.

Question 2

What counts as more than one invention?

Answer 2

Discretionary to Examiner

What easily recognizable as separate inventions

Question 3

What do you do in response to a restriction?

Answer 3

1. Election
2. File a divisional

**Election must be made

Question 4

When may an application be properly restricted to one of two or more claimed inventions?

Answer 4

Only if the inventions are each able to support separate patents AND

Either:

1. independent
2. Distinct

Question 5

Independent

Answer 5

Separate in design, operation, or effect.

Question 6

Distinct

Answer 6

Capable of separate manufacture, use or sale.

Question 7

Genus

Answer 7

generic claim

Question 8

Species

Answer 8

specific version of the genus.

Question 9

Sub-Combination

Answer 9

Smaller part of a larger combination.

Question 10

How can an examiner show that a restriction is necessary between a combination and a subcombination?

Answer 10

Show:

1. That the combination does not require the particulars of the subcombination AND
2. The subcombination can be shown to have utility by itself.

Question 11

Product, Apparatus and Product Distinction Problem

Answer 11

You have to make an election.

Even if you don’t agree.

Question 12

With Traverse

Answer 12

You preserve your right to petition the propriety of the restriction requirement.

Must be abuse of discretion.

Question 13

Double Patenting

Answer 13

Two types:

1. Statutory - Same Invention
2. Obviousness

Question 14

Obviousness Double Patenting

Answer 14

Can’t patent an obvious variation.

Only if you turn in Terminal Disclaimer

Question 15

Terminal Disclaimer

Answer 15

method of responding to the office and saying that these two applications will forever be one and will lapse at the shorter term.

Melding into one.

Question 16

Provisional Rejections under 102

Answer 16

Made on the basis on an earlier filed application that has not published or issued.

Comparison of disclosure.

Pre-AIA 102 (e)

AIA 102 (a)(2)

Only made if there is a common inventor or owner.

Question 17

Provisional Double Patenting

Answer 17

Comparison of claims

One common owner or inventor.

Question 18

Can you respond to a restriction over the phone?

Answer 18

Yes if Examiner initiated the communication

Question 19

How long do you have to respond to a Restriction?

Answer 19

One Month

Can buy five more months $

Question 20

What do you do when you are facing a Same Invention Double Patenting?

Answer 20

Cancel
OR
Amend the claims

Question 21

What do you do when you are facing an Obviousness Double Patenting?

Answer 21

Terminal Disclaimer

Question 22

What is the main requirement of a restriction response?

Answer 22

Elect

Question 23

What do you do if you have a restriction and a linking claim?

Answer 23

Elect and point out that since Claim 2 is a linking claim, it is included in the elected invention.