MPEP § 817 — MPEP § 817
Current through: 2022-07-01

817-Outline of Letter for Restriction Requirement 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0800 

 Section 817 
 

 
 
 
 
 
 817 Outline of Letter for Restriction Requirement [R-07.2022]

 The following outline should be used to set forth a requirement to
 restrict.
 

OUTLINE OF RESTRICTION REQUIREMENT
 
 (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 [3] .
 

 II. Claim [4] , drawn to
 [5] , classified [6] .
 

 Examiner Note:

 In brackets 3 and 6, insert CPC subclass and main group/subgroup if
 classified in the Cooperative Patent Classification or USPC class and subclass if
 classified in the United States Patent Classification. For example, if examined in CPC,
 enter CPC main group xxx, subgroup yyy.
 

 

 ¶ 8.09 Restriction, 3rd Grouping

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

 Examiner Note:

 In bracket 3, insert CPC subclass and main group/subgroup if
 classified in the Cooperative Patent Classification or USPC class and subclass if
 classified in the United States Patent Classification. For example, if examined in CPC,
 enter CPC main group xxx, subgroup yyy.
 

 

 ¶ 8.10 Restriction, 4th Grouping

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

 Examiner Note:

 In bracket 3, insert CPC subclass and main group/subgroup if
 classified in the Cooperative Patent Classification or USPC class and subclass if
 classified in the United States Patent Classification. For example, if examined in CPC,
 enter main group xxx, subgroup yyy.
 

 

 ¶ 8.11 Restriction, Additional Groupings

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

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

 2. In bracket 4, insert CPC subclass and main group/subgroup if
 classified in the Cooperative Patent Classification or USPC class and subclass if
 classified in the United States Patent Classification or. For example, if examined in
 CPC, enter CPC main group xxx, subgroup yyy.
 
 
 

 If restriction is required between species, form paragraph
 8.01 or 8.02 should be used to set forth the
 species from which applicant is required to elect and the reasons for holding the
 species to be independent or distinct. See MPEP § 809.02(a) . 
 

 
 (B) Take into account claims not grouped, indicating their
 disposition.
 
 (1) Linking claims
 
 (i) Identify

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

 
 

 (2) Other ungrouped claims

 (3) Indicate disposition, e.g., improperly dependent, canceled,
 etc.
 

 
 

 
 
 (C) Allegation of independence or distinctness
 
 (1) Point out facts which show independence or distinctness

 (2) Treat the inventions as claimed, don’t merely state the
 conclusion that inventions in fact are independent or distinct, e.g.,
 
 (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)
 

 
 

 (v) Process of making - Process of using
 
 Product used in claimed process
 can be made by process materially different from that
 claimed
 
 Demonstrate by examiner’s
 suggestion 
 

 
 

 OR

 Product made by claimed process of
 making can be used in a process materially different from that
 claimed
 
 Demonstrate by examiner’s
 suggestion.
 

 
 

 
 

 
 

 
 
 (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, or

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

 
 

 (E) Summary statement
 
 (1) Summarize (i) independence or distinctness and (ii)
 reasons for insisting upon restriction 
 

 (2) Include paragraph advising as to reply required

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

 (4) Indicate effect of cancelation of evidence claims
 (see MPEP § 806.05(c) )
 

 (5) Indicate effect of allowance of product claims if
 restriction was required between a product and a process of making
 and/or using the product.
 

 
 

 
 

 
 Form paragraphs 8.14 - 8.20.02 may be used
 as appropriate to set forth the reasons for the holding of independence or distinctness.
 Form paragraph 8.13 may be used as a heading.
 

 ¶ 8.13 Distinctness (Heading)

 The inventions are independent or distinct, each from the other because:

 Examiner Note:

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

 

 Form paragraph 8.21 must be used at the conclusion of all restriction
 requirements other than those containing only election of species, with or without an
 action on the merits.
 

 ¶ 8.21 To Establish Burden AND Requirement for Election and Means for
 Traversal for all Restrictions, other than an Election of Species
 

 Restriction for examination purposes as indicated is proper because all
 the inventions listed in this action are independent or distinct for the reasons given above
 and there would be a serious search and/or examination burden if
 restriction were not required because one or more of the following reasons apply:
 

 [1] .
 

 Applicant is advised that the reply to this requirement to be complete
 must include (i) an election of an invention to be
 examined even though the requirement may be traversed ( 37 CFR 1.143 ) and
 (ii) identification of the claims encompassing the elected invention. 

 The election of an invention may be made with or
 without traverse. To reserve a right to petition, the election must be made with traverse. If
 the reply does not distinctly and specifically point out supposed errors in the restriction
 requirement, the election shall be treated as an election without traverse. Traversal must be
 presented at the time of election in order to be considered timely. Failure to timely traverse
 the requirement will result in the loss of right to petition under 37 CFR 1.144 . If claims
 are added after the election, applicant must indicate which of these claims are readable upon
 the elected invention.
 

 Should applicant traverse on the ground that the
 inventions are not patentably distinct, applicant should submit evidence or identify such
 evidence now of record showing the inventions 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 or pre-AIA 35 U.S.C. 103(a) of the other invention.
 

 Examiner Note:
 
 1. THIS FORM PARAGRAPH MUST BE ADDED TO ALL RESTRICTION
 REQUIREMENTS other than those containing only election of species , with or without an
 action on the merits, or an those containing only an election by original presentation
 requirement. This form paragraph only needs to be used once, after all restriction
 requirements are set out.
 

 2. In bracket 1 insert the applicable reason(s) why there is
 a serious search and/or examination burden. 
 -For a serious search burden list one or more of the
 following:
 

 --the inventions have acquired a separate status in the
 art in view of their different classification;
 

 --the inventions have acquired a separate status in the
 art due to their recognized divergent subject matter; and/or
 

 --the inventions require a different field of search
 (e.g., searching different classes/subclasses or electronic resources, or employing
 different search strategies or search queries).
 

 -For a serious examination burden explain the reason, such
 as non-prior art issues under 35 U.S.C. 101 , pre-AIA 35 U.S.C.
 112 , first paragraph, and/or 35 U.S.C.
 112(a) are relevant to one invention that are not relevant to
 the other invention(s).
 
 
 
 
 

 ¶ 8.27.aia Different Inventors, Common Assignee, Same Invention, Examined
 under First Inventor To File (FITF) Provisions of the AIA
 

 Claim [1] directed to the same invention as that of
 claim [2] of commonly assigned [3] . Under 35 U.S.C. 101 , more than
 one patent may not be issued on the same invention.
 

 The USPTO may not institute a derivation proceeding in the
 absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not
 institute a derivation proceeding between applications or a patent and an application having
 common ownership (see 37 CFR 42.411 ). The applicant should amend
 or cancel claims such that the reference and the instant application no longer contain claims
 directed to the same invention.
 

 Examiner Note:
 
 1. Form paragraph 7.03.aia must be included in any
 Office action that contains this paragraph.
 

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

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

 4. A provisional or actual statutory double patenting
 rejection should also be made using form paragraph 8.31 or 8.32 .
 

 5. If the commonly assigned application or patent is prior
 art under 35
 U.S.C. 102(a)(2) , a rejection may also be made using form
 paragraph 7.15.01.aia or 7.15.02.aia .
 
 
 

 ¶ 8.28.aia Different Inventors, Common Assignee, Inventions Not Patentably
 Distinct, No Evidence of Common Ownership Not Later Than the Effective Filing Date of the
 Claimed Invention, Examined Under First Inventor to File (FITF) Provisions of the
 AIA
 

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

 Examiner Note:
 
 1. This form paragraph should be used when the application
 being examined is commonly assigned with an application or patent that includes claims
 patentably indistinct from those in the present application, but it has not been
 established that they were commonly owned or deemed to have been commonly owned not
 later than the effective filing date under 35 U.S.C. 100(i) of the claimed
 invention. See 35 U.S.C. 102(b)(2)(C) and
 35 U.S.C.
 102(c) .
 

 2. A rejection under 35 U.S.C.
 102(a)(2) / 103 using form paragraph
 7.21.aia ,
 7.21.01.aia or 7.21.02.aia also should be made,
 as appropriate.
 

 3. In bracket 3, insert the number of the patent or
 application that includes claims patentably indistinct from those in the present
 application.
 

 4. A nonstatutory double patenting rejection should also be
 included in the action using one of form paragraphs 8.34 to 8.37 .
 

 5. In bracket 4, explain why the claims in the present
 application and the reference patent or application are patentably indistinct.
 

 6. Form paragraph 8.28.01.aia MUST follow this
 paragraph.
 
 
 

 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 cancelation of claims to a
 non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or
 more of the currently named inventors is no longer an inventor of at least one claim remaining
 in the application. A request to correct inventorship under 37 CFR 1.48(a) must be
 accompanied by an application data sheet in accordance with 37 CFR 1.76 that
 identifies each inventor by his or her legal name and by the processing fee required under
 37 CFR
 1.17(i) .
 

 Examiner Note:

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

 

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 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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 Last Modified: 
 
 03/09/2026 20:49:44