MPEP § 806 — MPEP § 806
Current through: 2022-07-01

806-Determination of Distinctness or Independence of Claimed Inventions 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 0800 

 Section 806 
 

 
 
 
 
 
 806 Determination of Distinctness or Independence of Claimed
 Inventions [R-08.2012]
 

 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 § 806.06 .
 

 (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. 
 

 (D) A reasonable number of species may be claimed when there is an
 allowable claim generic thereto. 37 CFR 1.141 ,
 MPEP §
 806.04 .
 

 
 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 § 806.05 -
 §
 806.05(j) and § 809.03 . See MPEP § 802.01 for
 criteria for patentably distinct inventions.
 

 
 806.01 Compare Claimed Subject Matter [R-07.2022]

 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. However, a
 provisional election of a single species may be required where only generic claims are
 presented and the generic claims recite or encompass such a multiplicity of species that
 an unduly extensive and burdensome search is necessary. See MPEP § 803.02 and
 §
 808.01(a) .
 

 

 
 806.02 [Reserved]

 

 

 
 806.03 Single Embodiment, Claims Defining Same Essential Features [R-07.2022]

 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 not
 directed to distinct inventions; rather they are different definitions of the same
 disclosed subject matter, varying in breadth or scope of definition.
 

 Where such claims are voluntarily presented in different applications
 having at least one common (joint) inventor or a common assignee (i.e., no restriction
 requirement was made by the Office), disclosing the same embodiments, see
 MPEP §
 804 - § 804.02 .
 

 

 
 806.04 Genus and/or Species Inventions [R-08.2012]

 Where an application includes claims directed to different embodiments
 or species that could fall within the scope of a generic claim, restriction between the
 species may be proper if the species are independent or distinct. However,
 37 CFR
 1.141 provides that an allowable generic claim may link a
 reasonable number of species embraced thereby. The practice is set forth in
 37 CFR
 1.146 . 
 

 
 37 CFR 1.146 Election of species. 

 In the first action on an application containing a generic claim to
 a generic invention (genus) and claims to more than one patentably distinct species
 embraced thereby, the examiner may require the applicant in the reply to that action
 to elect a species of his or her invention to which his or her claim will be
 restricted if no claim to the genus is found to be 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 application.
 

 

 See MPEP
 § 806.04(d) for the definition of a generic claim, and
 MPEP §
 806.04(e) for a discussion of claims that include one or more
 species.
 

 
 806.04(a) [Reserved]

 

 

 
 806.04(b) Species May Be Independent or Related Inventions [R-07.2022]

 Species may be either independent or related under the particular
 disclosure. Where species under a claimed genus are not connected in any of design,
 operation, or effect under the disclosure, the species are independent inventions.
 See MPEP §
 802.01 and § 806.06 . 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 § 806.05 -
 §
 806.05(j) . 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. If so, restriction practice
 under election of species and the practice applicable to restriction between
 combination and subcombinations must be addressed.
 

 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 the claims to the intermediate and final products do not
 overlap in scope (i.e., a claim to the final product does not read on the
 intermediate, and vice versa) and are not obvious variants and 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. See
 MPEP §
 806.05(j) for restriction practice pertaining to related
 products, including intermediate-final product relationships.
 

 

 
 806.04(c) [Reserved]

 

 

 
 806.04(d) Definition of a Generic Claim [R-08.2012]

 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.
 

 In general, a generic claim should require no material element
 additional to those required by the species claims, and each of the species claims
 must require all the limitations of the generic claim.
 

 Once a generic claim is allowable, all of the claims drawn to
 species in addition to the elected species which require all the limitations of the
 generic claim will ordinarily be allowable over the prior art in view of the
 allowability of the generic claim, since the additional species will depend thereon
 or otherwise require 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 require all
 the limitations of the generic claim, see MPEP § 821.04(a) .
 

 

 
 806.04(e) Claims Limited to Species [R-08.2012]

 Claims are definitions or descriptions of inventions.
 Claims themselves are never species . The scope of a claim may
 be limited to a single disclosed embodiment (i.e., a single species, and thus be
 designated a specific species claim ). Alternatively, a claim may
 encompass two or more of the disclosed embodiments (and thus be designated a
 generic or genus claim). 

 Species always refer to the different embodiments of the
 invention. 

 Species may be either independent or related as disclosed (see
 MPEP §
 806.04 and § 806.04(b) ).
 

 

 
 806.04(f) Restriction Between Mutually Exclusive Species [R-08.2012]

 Where two or more species are claimed, a requirement for restriction
 to a single species may be proper if the species are mutually exclusive. Claims to
 different species are mutually exclusive if one claim recites limitations disclosed
 for a first species but not a second, while a second claim recites limitations
 disclosed only for the second species and not the first. This may also be expressed
 by saying that to require restriction between claims limited to species, the claims
 must not overlap in scope.
 

 

 
 806.04(g) [Reserved]

 

 

 
 806.04(h) Species Must Be Patentably Distinct From Each
 Other [R-07.2022]
 

 In making a requirement for restriction in an application claiming
 plural species, the examiner should group together species considered clearly
 unpatentable over each other.
 

 Where generic claims are allowable, applicant may claim in the
 same application additional species as provided by
 37 CFR
 1.141 . See MPEP § 806.04 . 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, a double
 patenting rejection of the species claim(s) would be prohibited under
 35 U.S.C.
 121 . See MPEP § 821.04(a) for rejoinder of
 species claims when a generic claim is allowable.
 

 Where, however, claims to a different species, or a species
 disclosed but not claimed in a parent case as filed and first acted upon by the
 examiner, are voluntarily presented in a different application having at least one
 common (joint) inventor or a common assignee (i.e., no requirement for election
 pertaining to said species was made by the Office) there should be close
 investigation to determine whether a double patenting rejection would be appropriate.
 See MPEP §
 804.01 and § 804.02 .
 

 

 
 806.04(i) Generic Claims Presented In a Separate Application After
 Issuance of Species Claims [R-07.2022]
 

 If a generic claim is presented in a separate application after the
 issuance of a patent claiming one or more species within the scope of the generic
 claim, the Office may reject the generic claim on the grounds of nonstatutory double
 patenting when the patent and application have at least one common (joint) inventor
 and/or are either (1) commonly assigned/owned or (2) non-commonly assigned/owned but
 subject to a joint research agreement as set forth in 35 U.S.C.
 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and
 (3) . See MPEP § 804 . Applicant may overcome
 such a rejection by filing a terminal disclaimer. See In re
 Goodman, 11 F.3d 1046, 1053, 29 USPQ2d 2010, 2016 (Fed. Cir.
 1993); In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA
 1967).
 

 

 

 
 806.05 Related Inventions [R-08.2012]

 Where two or more related inventions are 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.
 

 Various pairs of related inventions are noted in the following
 sections. In applications claiming inventions in different statutory categories, only
 one-way distinctness is generally needed to support a restriction requirement. See
 MPEP §
 806.05(c) (combination and subcombination) and
 §
 806.05(j) (related products or related processes) for examples
 of when a two-way test is required for distinctness. Related inventions in the same
 statutory class are considered mutually exclusive, or not overlapping in scope, if a
 first invention would not infringe a second invention, and the second invention would
 not infringe the first invention 
 

 
 806.05(a) Combination and Subcombination [R-08.2012]

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

 

 
 806.05(b) [Reserved]

 

 

 
 806.05(c) Criteria of Distinctness Between Combination and
 Subcombination [R-07.2022]
 

 To support a requirement for restriction between combination and
 subcombination inventions, both two-way distinctness and reasons for insisting on
 restriction are necessary, i.e., there would be a serious search burden as evidenced
 by separate classification, status, or field of search and/or a serious examination
 burden as evidenced by, for example, non-prior art issues relevant to one invention
 that are not relevant to the other invention. See MPEP § 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 another materially different combination. 
 

 
 When these factors cannot be shown, such inventions are not
 distinct.
 

 The following examples are included for general guidance.

 I. SUBCOMBINATION ESSENTIAL TO COMBINATION 

ABsp/Bsp No Restriction
 Where a combination as claimed requires the
 details of a subcombination as separately claimed , there is
 usually no evidence that combination AB sp is patentable
 without the details of B sp . The inventions are not
 distinct and a requirement for restriction must not be made or maintained, even
 if the subcombination has separate utility. This situation can be diagrammed as
 combination AB sp (“sp” is an abbreviation for
 “specific”), and subcombination B sp . Thus the specific
 characteristics required by the subcombination claim B sp 
 are also required by the combination claim. See MPEP §
 806.05(d) for situations where two or more
 subcombinations are separately claimed.
 

 II. SUBCOMBINATION NOT ESSENTIAL TO COMBINATION 

 A. ABbr/Bsp Restriction Proper Where a combination as claimed does not
 require 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., there would be a serious search burden as
 evidenced by separate classification, status, or field of search and/or a
 serious examination burden as evidenced by, for example, non-prior art issues
 relevant to one invention that are not relevant to the other invention. See
 MPEP §
 808.02 .
 

 This situation can be diagramed as combination
 AB br (“br” is an abbreviation for “broad”), and
 subcombination B sp (“sp” is an abbreviation for
 “specific”). B br indicates that in the combination the
 subcombination is broadly recited and that the specific characteristics
 required by the subcombination claim B sp are not
 required by the combination claim.
 

 Since claims to both the subcombination and combination are
 presented, the omission of details of the claimed subcombination
 B sp in the combination claim
 AB br is evidence that the combination does not rely
 upon the specific limitations of the subcombination for its patentability. If
 subcombination B sp 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 species under a claimed genus, both applicable criteria for
 distinctness must be demonstrated to support a restriction requirement. See
 also MPEP §
 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 § 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] .
 

 The examiner has required restriction between combination and
 subcombination inventions. Where applicant elects a subcombination, and claims thereto are
 subsequently found allowable, any claim(s) depending from or otherwise requiring all the
 limitations of the allowable subcombination will be examined for patentability in accordance
 with 37 CFR
 1.104 . See MPEP § 821.04(a) . Applicant is advised that
 if any claim presented in a divisional application is anticipated by, or includes all the
 limitations of, a claim that is allowable in the present application, such claim may be
 subject to provisional statutory and/or nonstatutory double patenting rejections over the
 claims of the instant application. 
 

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

 2. In bracket 3, specify the limitations of the claimed subcombination that are not required by the claimed combination, or the
 evidence that supports the conclusion that the combination does not rely upon the specific details of the subcombination for
 patentability. See MPEP § 806.05(c) , subsection II and § 806.05(d) .
 

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

 4. Conclude restriction requirement with form paragraph
 8.21 .
 
 
 

 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 utility suggested by the examiner cannot be accomplished, the
 burden shifts to the examiner to document a viable separate utility or withdraw
 the requirement.
 

 B. ABsp/ABbr/Bsp Restriction Proper The presence of a claim to combination
 AB sp does not alter the propriety of a restriction
 requirement properly made between combination AB br and
 subcombination B sp . Claim AB br is
 an evidence claim which indicates that the combination does not rely upon the
 specific details of the subcombination for its patentability. If a restriction
 requirement can be properly made between combination
 AB br and subcombination B sp ,
 any claim to combination AB sp would be grouped with
 combination AB br .
 

 If the combination claims are amended after a restriction
 requirement such that each combination, as claimed, requires all the
 limitations of the subcombination as claimed, i.e., if the evidence claim
 AB br is deleted or amended to require
 B sp , the restriction requirement between the
 combination and subcombination should not be maintained.
 

 If a claim to B sp is determined to be
 allowable, any claims requiring B sp , including any
 combination claims of the format AB sp , must be
 considered for rejoinder. See MPEP § 821.04 .
 

 III. PLURAL COMBINATIONS REQUIRING A SUBCOMBINATION COMMON TO EACH
 COMBINATION When an application includes a claim to a single subcombination,
 and that subcombination is required by plural claimed combinations that are
 properly restrictable, the subcombination claim is a linking claim and will be
 examined with the elected combination (see MPEP § 809.03 ). The
 subcombination claim links the otherwise restrictable combination inventions and
 should be listed in form paragraph 8.12 . The claimed plural
 combinations are evidence that the subcombination has utility in more than one
 combination. Restriction between plural combinations may be made using form
 paragraph 8.14.01 . See MPEP §
 806.05(j) .
 

 

 
 806.05(d) Subcombinations Usable Together [R-07.2022]

 Two or more claimed subcombinations, disclosed as usable together in
 a single combination, and which can be shown to be separately usable, are usually
 restrictable when the subcombinations do not overlap in scope and are not obvious
 variants.
 

 To support a restriction requirement where applicant separately
 claims plural subcombinations usable together in a single combination
 and claims a combination that requires the particulars of
 at least one of said subcombinations, both two-way distinctness and reasons for
 insisting on restriction are necessary. Each subcombination is distinct from the
 combination as claimed if:
 

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

 (B) the subcombination can be shown to have utility either by
 itself or in another materially different combination.
 

 
 See MPEP § 806.05(c) . Furthermore, restriction is only proper
 when there would be a serious search and/or examination burden if restriction were
 not required. A serious search burden can be evidenced by separate classification,
 status, or field of search and a serious examination burden can be evidenced by, for
 example, non-prior art issues relevant to one invention that are not relevant to the
 other invention. See MPEP § 808.02 .
 

 Where claims to two or more subcombinations are presented along with
 a claim to a combination that includes the particulars of at least two
 subcombinations, the presence of the claim to the second subcombination is evidence
 that the details of the first subcombination are not required for patentability (and
 vice versa). For example, if an application claims ABC/B/C wherein ABC is a
 combination claim and B and C are each subcombinations that are properly restrictable
 from each other, the presence of a claim to C provides evidence that the details of B
 are not required for the patentability of combination ABC.
 

 Upon determining that all claims directed to an elected combination
 invention are allowable, the examiner must reconsider the propriety of the
 restriction requirement. Where the combination is allowable in view of the
 patentability of at least one of the subcombinations, the restriction requirement
 between the elected combination and patentable subcombination(s) will be withdrawn;
 furthermore, any subcombinations that were searched and determined to be allowable
 must also be rejoined. If a subcombination is elected and determined to be allowable,
 nonelected claims requiring all the limitations of the allowable claim will be
 rejoined in accordance with MPEP § 821.04 . 
 

 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 if
 they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately
 usable. In the instant case subcombination [3] has separate utility such as [4] . See MPEP § 806.05(d) .
 

 The examiner has required restriction between subcombinations usable
 together. Where applicant elects a subcombination and claims thereto are subsequently found
 allowable, any claim(s) depending from or otherwise requiring all the limitations of the
 allowable subcombination will be examined for patentability in accordance with
 37 CFR
 1.104 . See MPEP § 821.04(a) . Applicant is advised that
 if any claim presented in a divisional application is anticipated by, or includes all the
 limitations of, a claim that is allowable in the present application, such claim may be
 subject to provisional statutory and/or nonstatutory double patenting rejections over the
 claims of the instant application. 
 

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

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

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

 4. Conclude restriction requirement with form paragraph 8.21 .
 
 
 

 

 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 § 806.04(b) ).
 

 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.
 

 

 
 806.05(e) Process and Apparatus for Its Practice [R-08.2012]

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

 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
 materially different process. ( MPEP § 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 §
 806.05(e) ).
 

 2. In bracket 3, use one or more of the following
 reasons: 
 --the process as claimed can be practiced by
 another materially different apparatus such as......--,
 

 --the process as claimed can be practiced by
 hand--,
 

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

 3. A process can be practiced by hand if it can be
 performed without using any apparatus.
 

 4. Conclude restriction requirement with form paragraph
 8.21 .
 

 5. All restriction requirements between a process and an
 apparatus (or product) for practicing the process should be followed by form paragraph
 8.21.04 to
 notify the applicant that if an apparatus claim is found allowable, process claims that
 depend from or otherwise require all the limitations of the patentable apparatus may be
 rejoined.
 
 
 

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

 If applicant proves or provides convincing argument that there is no
 material difference or that a process 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.
 

 

 
 806.05(f) Process of Making and Product Made [R-08.2012]

 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: (A) that
 the process as claimed is not an obvious process of making the
 product and the process as claimed can be used to make another
 materially different product; or (B) that the product as claimed 
 can be made by another 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 paragraphs 8.18 and 8.21.04 should 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 another materially different product or (2) that the product as
 claimed can be made by another materially different process ( MPEP § 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 § 806.05(f) ).
 

 2. In bracket 3, use one or more of the following reasons: 
 --the process as claimed can be used to make a materially different product such as......--,

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

 3. Conclude the basis for the restriction requirement with form paragraph 8.21 .
 

 4. All restriction requirements between a product and a process of making the product should be followed by form paragraph 8.21.04 to notify the applicant that if a product claim is found allowable, process claims that depend from or otherwise require
 all the limitations of the patentable product may be rejoined.
 
 
 

 ¶ 8.21.04 Notice of Potential Rejoinder of Process Claims

 The examiner has required restriction between product and process claims. Where applicant elects claims directed to the product/apparatus,
 and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations
 of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process
 invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
 

 In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims
 will be withdrawn, and 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 . Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between
 product/apparatus claims and process claims may be maintained. Withdrawn process claims that
 are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04 . Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution
 to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01. 

 Examiner Note:

 This form paragraph should appear at the end of any requirement for restriction between a process and a product/apparatus
 for practicing the process (see form paragraph 8.17 ), a product/apparatus and a process of making the product/apparatus (see form paragraph 8.18 ) or between a product/apparatus and a process of using the product/apparatus (see form paragraph 8.20 ). See MPEP § 821.04 for rejoinder practice.
 

 

 

 
 806.05(g) Apparatus and Product Made [R-08.2012]

 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: (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 another materially different product; or (B)
 that the product as claimed can be made by another 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 materially different product or (2) that the product as claimed can be made by another materially different
 apparatus ( MPEP § 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 § 806.05(g) ).
 

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

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

 3. Conclude restriction requirement with form paragraph 8.21 .
 
 
 

 

 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 another
 materially different product or (B) that the product as claimed 
 can be made by another 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.
 

 

 
 806.05(h) Product and Process of Using [R-08.2012]

 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 paragraphs 8.20 and 8.21.04 should 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. See MPEP § 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 § 806.05(h) . If claims to a process specially adapted for (i.e., not patentably distinct from) making the product are also presented
 such process of making claims should be grouped with the product invention. See MPEP § 806.05(i) .
 

 2. In bracket 3, use one or more of the following reasons: 
 --the process as claimed can be practiced with another materially different product such as......--,

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

 3. Conclude the basis for the restriction requirement with form paragraph 8.21 .
 

 4. All restriction requirements between a product and a process of using the product should be followed by form paragraph 8.21.04 to notify the applicant that if a product claim is found allowable, process claims that depend from or otherwise require
 all the limitations of the patentable product may be rejoined.
 
 
 

 ¶ 8.21.04 Notice of Potential Rejoinder of Process Claims

 The examiner has required restriction between product and process claims. Where applicant elects claims directed to the product/apparatus,
 and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations
 of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process
 invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
 

 In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims
 will be withdrawn, and 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 . Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between
 product/apparatus claims and process claims may be maintained. Withdrawn process claims that
 are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04 . Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution
 to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01. 

 Examiner Note:

 This form paragraph should appear at the end of any requirement for restriction between a process and a product/apparatus
 for practicing the process (see form paragraph 8.17 ), a product/apparatus and a process of making the product/apparatus (see form paragraph 8.18 ) or between a product/apparatus and a process of using the product/apparatus (see form paragraph 8.20 ). See MPEP § 821.04 for rejoinder practice.
 

 

 

 
 806.05(i) Product, Process of Making, and Process of Using [R-08.2012]

 
 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
 § 806.05(f) ) making the product, and claims to a process of
 using the product, applicant may be required to elect either (A) the product and
 process of making it; or (B) the process of using. If the examiner cannot make a
 showing of distinctness between the process of using and the product
 ( MPEP
 § 806.05(h) ), restriction cannot be required. 
 

 Form paragraph 8.20 (See MPEP § 806.05(h) )
 may be used in product, process of making and process of using situations where the
 product cannot be restricted from the process of making the product.
 

 See MPEP § 821.04(b) for rejoinder practice pertaining to
 product and process inventions.
 

 

 
 806.05(j) Related Products; Related Processes [R-07.2022]

 To support a requirement for restriction between two or more related
 product inventions, or between two or more related process inventions, both two-way
 distinctness and reasons for insisting on restriction are necessary, i.e., separate
 classification, status in the art, or field of search. See MPEP § 808.02 . See
 MPEP §
 806.05(c) for an explanation of the requirements to
 establish two-way distinctness as it applies to inventions in a
 combination/subcombination relationship. For other related product inventions, or
 related process inventions, the inventions are distinct if 
 

 
 (A) the inventions as claimed do not overlap in
 scope, i.e., are mutually exclusive (i.e., a claim to the final product does
 not read on the intermediate, and vice versa ); 
 

 (B) the inventions as claimed are not obvious
 variants; and 
 

 (C) the inventions as claimed are either not
 capable of use together or can have a materially different design, mode of
 operation, function, or effect. See MPEP § 802.01 .
 

 
 The burden is on the examiner to provide an example to support the
 determination that the inventions are distinct, but the example need not be
 documented. If applicant either proves or provides convincing evidence that the
 example suggested by the examiner is not workable, the burden is on the examiner to
 suggest another viable example or withdraw the restriction requirement.
 

 As an example, an intermediate product and a final product can be
 shown to be distinct inventions if the intermediate and final products are mutually
 exclusive inventions (not overlapping in scope) that are not obvious variants, and
 the intermediate product as claimed is useful to make something other than the final
 product as claimed. Typically, the intermediate loses its identity in the final
 product. See also MPEP
 § 806.05(d) for restricting between subcombinations
 disclosed as usable together. See MPEP § 809 - § 809.03 if a
 generic claim or claim linking multiple products or multiple processes is
 present.
 

 Form paragraph 8.14.01 may be used to restrict
 between related products or related processes; form paragraph
 8.14 may be used in intermediate-final product
 restriction requirements; form paragraph 8.16 may be used to restrict between
 subcombinations.
 

 ¶ 8.14.01 Distinct Products or Distinct Processes

 Inventions [1] and [2] are
 directed to related [3] . The related inventions are distinct if: (1) the
 inventions as claimed are either not capable of use together or can have a materially
 different design, mode of operation, function, or effect; (2) the inventions do not overlap in
 scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious
 variants. See MPEP §
 806.05(j) . In the instant case, the inventions as claimed
 [4] . Furthermore, the inventions as claimed do not encompass overlapping
 subject matter and there is nothing of record to show them to be obvious
 variants.
 

 Examiner Note:
 
 1. This form paragraph may be used when claims are presented to two or more related product inventions, or two or more related
 process inventions, wherein the inventions as claimed are mutually exclusive, i.e., there is no product (or process) that
 would infringe both of the identified inventions. Use form paragraph 8.15 to restrict between combination(s) and subcombination(s).
 

 2. If a generic claim or claim linking multiple product inventions or multiple process inventions is present, see MPEP § 809 - § 809.03 .
 

 3. In bracket 3, insert --products -- or --processes--.

 4. In bracket 4, explain why the inventions as claimed are either not capable of use together or can have a materially different
 design, mode of operation, function, or effect.
 

 5. Conclude restriction requirement with form paragraph
 8.21 .
 
 
 

 ¶ 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 and the species are patentably distinct
 ( MPEP §
 806.05(j) ). In the instant case, the intermediate product is deemed
 to be useful as [3] and the inventions are deemed patentably distinct because
 there is nothing of record to show them to be obvious variants. 
 

 Examiner Note:
 
 1. This form paragraph is to be used when claims are presented to both an intermediate and final product ( MPEP § 806.05(j) ).
 

 2. Conclude restriction requirement with form paragraph 8.21 .
 
 
 

 ¶ 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 if
 they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately
 usable. In the instant case subcombination [3] has separate utility such as [4] . See MPEP § 806.05(d) .
 

 The examiner has required restriction between subcombinations usable
 together. Where applicant elects a subcombination and claims thereto are subsequently found
 allowable, any claim(s) depending from or otherwise requiring all the limitations of the
 allowable subcombination will be examined for patentability in accordance with
 37 CFR
 1.104 . See MPEP § 821.04(a) . Applicant is advised that
 if any claim presented in a divisional application is anticipated by, or includes all the
 limitations of, a claim that is allowable in the present application, such claim may be
 subject to provisional statutory and/or nonstatutory double patenting rejections over the
 claims of the instant application. 
 

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

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

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

 4. Conclude restriction requirement with form paragraph 8.21 .
 
 
 

 

 

 
 806.06 Independent Inventions [R-07.2022]

 Inventions as claimed are independent if there is no disclosed
 relationship between the inventions, that is, they are unconnected in design, operation,
 and effect. If it can be shown that two or more inventions are independent, and if there
 would be a serious search and/or examination burden on the examiner if restriction is
 not required, applicant should be required to restrict the claims presented to 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 and different
 effects are independent. An article of apparel 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
 that cannot be used to practice the specific process.
 

 
 Form paragraph 8.20.02 may be used to restrict between
 independent, unrelated inventions. Form paragraph 8.20.03 may be used
 to restrict between an unrelated product and process.
 

 ¶ 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 designs, modes of operation, and effects. ( MPEP § 802.01 and MPEP § 806.06 ). 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 not disclosed as capable of use together.
 

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

 3. This form paragraph must be followed by form paragraph 8.21 . 
 
 
 

 ¶ 8.20.03 Unrelated Product and Process Inventions

 Inventions [1] and [2] are directed to an unrelated product and process. Product and process inventions are unrelated if it can be shown that the
 product cannot be used in, or made by, the process. See MPEP § 802.01 and § 806.06 . In the instant case, [3] .
 

 Examiner Note:
 
 1. In bracket 3, insert reasons for concluding that the inventions are unrelated.

 2. This form paragraph must be followed by form paragraph 8.21 .
 
 
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 801-Introduction 

 802-Basis for Restriction Practice in Statute and Rules 
 802.01-Meaning of “Independent” and “Distinct” 

 802.02-Definition of Restriction 

 
 

 803-Restriction — When Proper 
 803.01-Review by Examiner with at Least Partial Signatory Authority 

 803.02-Election of Species Requirements – Markush Claims 

 803.03-Transitional Applications 
 803.03(a)-Transitional Application — Linking Claim Allowable 

 803.03(b)-Transitional Application — Generic Claim Allowable 

 
 

 803.04-Nucleotide Sequences 

 803.05-Reissue Application Practice 

 
 

 804-Definition of Double Patenting 
 804.01-Prohibition of Nonstatutory Double Patenting Rejections Under 35 U.S.C. 121 

 804.02-Avoiding a Double Patenting Rejection 

 804.03-Commonly Owned Inventions of Different Inventive Entities; Non-Commonly Owned Inventions Subject to a Joint Research Agreement 

 804.04-Submission to Technology Center Director 

 804.05-Impact of Patent Term Extension under 35 U.S.C. 156 on Nonstatutory Double Patenting 

 
 

 805-Effect of Improper Joinder in Patent 

 806-Determination of Distinctness or Independence of Claimed Inventions 
 806.01-Compare Claimed Subject Matter 

 806.02-[Reserved] 

 806.03-Single Embodiment, Claims Defining Same Essential Features 

 806.04-Genus and/or Species Inventions 
 806.04(a)-[Reserved] 

 806.04(b)-Species May Be Independent or Related Inventions 

 806.04(c)-[Reserved] 

 806.04(d)-Definition of a Generic Claim 

 806.04(e)-Claims Limited to Species 

 806.04(f)-Restriction Between Mutually Exclusive Species 

 806.04(g)-[Reserved] 

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

 806.04(i)-Generic Claims Presented In a Separate Application After Issuance of Species Claims 

 
 

 806.05-Related Inventions 
 806.05(a)-Combination and Subcombination 

 806.05(b)-[Reserved] 

 806.05(c)-Criteria of Distinctness Between Combination and Subcombination 

 806.05(d)-Subcombinations Usable Together 

 806.05(e)-Process and Apparatus for Its Practice 

 806.05(f)-Process of Making and Product Made 

 806.05(g)-Apparatus and Product Made 

 806.05(h)-Product and Process of Using 

 806.05(i)-Product, Process of Making, and Process of Using 

 806.05(j)-Related Products; Related Processes 

 
 

 806.06-Independent Inventions 

 
 

 807-Patentability Report Practice Has No Effect on Restriction Practice 

 808-Reasons for Insisting Upon Restriction 
 808.01-Reasons for Holding of Independence or Distinctness 
 808.01(a)-Species 

 
 

 808.02-Establishing Burden 

 
 

 809-Linking Claims 
 809.01-[Reserved] 

 809.02-Election of Species Required 
 809.02(a)-Election of Species Required 

 
 

 809.03-Restriction Between Linked Inventions 

 
 

 810-Action on the Merits 

 811-Time for Making Requirement 
 811.01-[Reserved] 

 811.02-New Requirement After Compliance With Preceding Requirement 

 811.03-Repeating After Withdrawal Proper 

 811.04-Proper Even Though Grouped Together in Parent Application 

 
 

 812-Who Should Make the Requirement 
 812.01-Telephone Restriction Practice 

 
 

 813-[Reserved] 

 814-Indicate Exactly How Application Is To Be Restricted 

 815-Make Requirement Complete 

 816-[Reserved] 

 817-Outline of Letter for Restriction Requirement 

 818-Election and Reply 
 818.01-Election in Reply to a Restriction Requirement: Express 
 818.01(a)-Reply Must be Complete 

 818.01(b)-Election is Required, Even When Requirement Is Traversed 

 818.01(c)-Traverse is Required To Preserve Right of Petition 

 818.01(d)-Traverse of Restriction Requirement With Linking Claims 

 
 

 818.02-Election Other Than Express 
 818.02(a)-Election By Originally Presented Claims 

 818.02(b)-Generic Claims Only — No Election of Species; Linking Claims Only – No Election of Invention 

 818.02(c)-Election By Optional Cancelation of Claims 

 818.02(d)-Election By Cancelation of Claims, Lacking Express Election Statement 

 
 

 
 

 819-Office Generally Does Not Permit Shift 

 820-[Reserved] 

 821-Treatment of Claims Held To Be Drawn to Nonelected Inventions 
 821.01-After Election With Traverse 

 821.02-After Election Without Traverse 

 821.03-Claims for Different Invention Added After an Office Action 

 821.04-Rejoinder 
 821.04(a)-Rejoinder Between Product Inventions; Rejoinder Between Process Inventions 

 821.04(b)-Rejoinder of Process Requiring an Allowable Product 

 
 

 
 

 822-Claims to Inventions That Are Not Patentably Distinct in Plural Applications of Same Applicant or Assignee 

 823-Unity of Invention Under the Patent Cooperation Treaty 

 

 

 
 

 
 
 

 
 

 

 
 
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