MPEP § 821 — MPEP § 821
Current through: 2022-07-01

821-Treatment of Claims Held To Be Drawn to Nonelected Inventions 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0800 

 Section 821 
 

 
 
 
 
 
 821 Treatment of Claims Held To Be Drawn to Nonelected
 Inventions [R-07.2022]
 

 Claims found to be drawn to nonelected inventions, including claims drawn
 to nonelected species or inventions that may be eligible for rejoinder, are treated as
 indicated in MPEP §
 821.01 through § 821.04 . 
 

 All claims that the examiner finds are not directed to the elected
 invention are withdrawn from further consideration by the examiner in accordance with
 37 CFR
 1.142(b) . See MPEP § 821.01 through
 §
 821.04 . The examiner should clearly set forth in the Office
 action the reasons why the claims withdrawn from consideration are not readable on the
 elected invention. Applicant may traverse the requirement pursuant to 37 CFR 1.143 . If a
 final requirement for restriction is made by the examiner, applicant may file a petition
 under 37 CFR
 1.144 for review of the restriction requirement if the applicant made
 a timely traversal. See In re Hengehold, 440 F.2d 1395, 169 USPQ 473
 (CCPA 1971). When an election results in the withdrawal of claims such that the assigned
 examiner believes the C* classification picture is incorrect, the examiner should submit a
 C* classification challenge prior to an action on the merits of the elected claims to
 ensure the C* classification picture on the application appropriately reflects the elected
 invention. 
 

 
 821.01 After Election With Traverse [R-07.2015]

 Where the initial requirement is traversed, the examiner should
 reconsider it. If, upon reconsideration, the examiner is still of the opinion that
 restriction is proper, the examiner should maintain the restriction requirement and make
 it final in the next Office action. See MPEP § 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 the reply filed on [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 requirement is made final, the claims to the nonelected
 invention should be clearly indicated as being withdrawn from consideration. In this
 situation, the examiner should use 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 nonelected [2] , there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in
 the reply filed on [3] .
 

 Examiner Note:

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

 

 This form paragraph will show that applicant has retained the right to
 petition from the requirement under 37 CFR 1.144 . See
 MPEP §
 818.01(c) .
 

 If the examiner, upon reconsideration, is of the opinion
 that the requirement for restriction is improper in whole or in part, he or she should
 clearly state in the next Office action that the requirement for restriction is
 withdrawn in whole or in part, specify which groups have been reinstated, and give an
 action on the merits of all the claims directed to the elected invention and any
 invention reinstated with the elected invention.
 

 When the application is otherwise in condition for allowance, the
 examiner should contact applicant and advise him or her of his or her options with
 regard to any pending claims withdrawn from consideration. Alternatively, applicant may
 be notified using form paragraph 8.03 . 
 

 ¶ 8.03 In Condition for Allowance, Non-elected Claims Withdrawn with Traverse

 This application is in condition for
 allowance except for the presence of claim [1] directed to an invention
 non-elected with traverse in the reply filed on [2] . Applicant is given TWO
 MONTHS from the date of this letter 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.

 

 See also MPEP § 821.04 for rejoinder of certain nonelected inventions
 when the claims to the elected invention are allowable.
 

 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 which claims, if any, remain withdrawn from consideration.
 

 Note that the petition under 37 CFR 1.144 must be filed not later
 than appeal. This is construed to mean on or before the date the notice of appeal is
 filed. See MPEP §
 1204 . If the application is ready for allowance on or after
 the date of the notice of appeal and no petition has been filed, the examiner should
 simply cancel nonelected claims that are not eligible for rejoinder by examiner’s
 amendment, calling attention to the provisions of 37 CFR 1.144 .
 

 

 
 821.02 After Election Without Traverse [R-07.2022]

 Where the initial requirement is not traversed (either expressly or by
 virtue of an incomplete reply), the examiner should take appropriate action on the
 elected claims including determining whether the restriction requirement should be
 withdrawn in whole or in part. See MPEP § 821.04 . 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 the reply filed on [2] is acknowledged.
 

 

 ¶ 8.25.02 Election Without Traverse Based on Incomplete Reply

 Applicant’s election of [1] in the reply filed on 
 [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 § 818.01(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 the reply filed on [3] .
 

 Examiner Note:

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

 

 This form paragraph will show that applicant has not retained the right
 to petition from the requirement under 37 CFR 1.144 .
 

 When applicant has not retained the right to petition the restriction
 requirement and the application is otherwise ready for allowance, the claims to the
 nonelected invention, except for claims directed to nonelected species and nonelected
 inventions eligible for rejoinder, may be canceled by an examiner’s amendment, and the
 application passed to issue.
 

 The examiner should use form paragraph 8.07 in this
 situation.
 

 See also MPEP § 821.01 and § 821.04 et seq .
 

 ¶ 8.07 Ready for Allowance, Non-elected Claims Withdrawn Without Traverse

 This application is in condition for allowance except for the presence of claim [1] directed to [2] nonelected without traverse. Accordingly, claim [3] been canceled.
 

 Examiner Note:

 In bracket 2, insert --an invention--, --inventions--, --a species--, or --species--.

 

 Note that even if an election was made without traverse,
 claims directed to nonelected species and nonelected inventions that are eligible for
 rejoinder should be rejoined; if not rejoined, such claims that are eligible for
 rejoinder may only be canceled by examiner’s amendment when the cancelation is expressly
 authorized by applicant. If claims are directed to nonelected species and/or nonelected
 inventions that are not eligible for rejoinder, see form paragraph
 8.07 and its
 associated guidance above for when claims may be canceled by an examiner’s amendment,
 and the application passed to issue. 
 

 

 
 821.03 Claims for Different Invention Added After an Office
 Action [R-07.2022]
 

 Claims added by amendment following action by the examiner, as
 explained in MPEP §
 818.02(a) , and drawn to an invention other than the one
 previously claimed, should be treated as indicated in 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 §§ 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 §
 821.03 .
 

 To preserve a right to petition, the reply to this action must
 distinctly and specifically point out supposed errors in the restriction requirement.
 Otherwise, the election shall be treated as a final election without traverse. Traversal must
 be timely. Failure to timely traverse the requirement will result in the loss of right to
 petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which
 of the subsequently added 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. In bracket 2, insert the particular reason(s) why the newly
 submitted claim(s) is/are directed to independent or distinct invention(s). 
 -For patentably distinct species, see MPEP §§ 806.04(b) ,
 806.04(f) and 806.04(h) . For example, insert --the
 claims to the different species recite the mutually exclusive characteristics of such
 species--, and provide a description of the mutually exclusive characteristics of
 each species or grouping of species. 
 

 -For patentably distinct inventions, see
 MPEP §§
 806.05(a) and 806.05(c) - 806.05(j) . 
 

 -For unrelated inventions, see MPEP §§ 802.01 and
 806.06 .
 
 
 
 
 

 A complete action on all claims to the elected invention should be
 given.
 

 If the applicant fails to request reconsideration of the
 election by original presentation in reply to the Office action containing the
 requirement, the examiner should treat the application as if the election was made
 without traverse. See MPEP § 821.02 .
 

 If the examiner finds all elected claims allowable
 following the amendment that added claims drawn to a new invention, the examiner cannot
 cancel the withdrawn claims without obtaining the applicant’s express authorization. The
 applicant must be provided the opportunity to seek reconsideration of the election by
 original presentation. In this situation, the examiner may obtain express authorization
 to cancel the withdrawn claims via an interview prior to mailing a notice of
 allowability with an examiner’s amendment canceling the withdrawn claims. If applicant’s
 express authorization is not obtained, then the examiner should issue an Ex
 parte Quayle action that requires cancelation of the withdrawn claims. In
 reply, the applicant can either cancel the withdrawn claims or traverse the election by
 original presentation requirement. If applicant traverses the election, the examiner
 must reconsider the election by original presentation and address applicant’s arguments
 if the election by original presentation is maintained. See MPEP § 821.01 .
 

 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 . Examiners should take care to correctly designate
 the issue as a non-responsive amendment, which is not be confused with a notice of
 non-compliant amendment. Examiners may use a PTOL-90 with form paragraph
 8.26 to
 create a notice of non-responsive amendment. Such Office Action may be designated
 “Informal or Non-Responsive Amendment After Examiner Action.”
 

 ¶ 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 §
 821.03 ) and has not been entered. 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 shortened statutory period of TWO (2)
 MONTHS 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 but in no case can any extension carry the date
 for reply to this letter beyond the maximum period of SIX MONTHS set by statute
 ( 35 U.S.C.
 133 ).
 

 Examiner Note:
 
 This form paragraph should not be used for an application filed on or after August 25,
 2006 that has been granted special status under the accelerated examination program or
 other provisions under 37 CFR 1.102(c)(2) or (d) . Form paragraph
 8.26.AE 
 should be used instead. See MPEP § 708.02 , subsection IX.
 
 
 

 The practice set forth in this section is not applicable where a
 provisional election of a single species or a group of patentably indistinct species was
 made in accordance with MPEP § 803.02 and applicant amends the claims such that the
 elected species or group is canceled, or where applicant presents claims that could not
 have been restricted from the claims drawn to the elected invention had they been
 presented earlier.
 

 

 
 821.04 Rejoinder [R-07.2022]

 The propriety of a restriction requirement should be reconsidered when
 all the claims directed to the elected invention are in condition for allowance, and the
 nonelected invention(s) should be considered for rejoinder. Rejoinder involves
 withdrawal of a restriction requirement between an allowable elected invention and a
 nonelected invention and examination of the formerly nonelected invention on the
 merits.
 

 In order to be eligible for rejoinder, a claim to a nonelected
 invention must depend from or otherwise require all the limitations of an allowable
 claim. A withdrawn claim that does not require all the limitations of an allowable claim
 will not be rejoined. Furthermore, where restriction was required between a product and
 a process of making and/or using the product, and the product invention was elected and
 subsequently found allowable, all claims to a nonelected process
 invention must depend from or otherwise require all the limitations of an allowable
 claim for the claims directed to that process invention to be eligible for rejoinder.
 See MPEP §
 821.04(b) . In order to retain the right to rejoinder,
 applicant is advised that the claims to the nonelected invention(s) should be amended
 during prosecution to require the limitations of the elected invention. Failure to
 do so may result in a loss of the right to rejoinder. 

 Rejoined claims must 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 .
 

 The requirement for restriction between the rejoined inventions must be
 withdrawn. Any claim(s) presented in a divisional application that are anticipated by,
 or rendered obvious over, the claims of the parent application may be subject to a
 double patenting rejection when the restriction requirement is withdrawn in the parent
 application. In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32
 (CCPA 1971). See also MPEP §§ 804.01 and 821.04(a) .
 

 The provisions of MPEP § 706.07 govern the propriety of
 making an Office action final in rejoinder situations. 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 where the new ground of rejection
 was necessitated by applicant’s amendment (or based on information submitted in an IDS
 filed during the time period set forth in 37 CFR 1.97(c) with the fee set
 forth in 37 CFR 1.17(p) ). See MPEP § 706.07(a) .
 

 If restriction is required between product and process claims, for
 example, and all the product claims would be allowable in the first Office action on the
 merits, upon rejoinder of the process claims, it would not be
 proper to make the first Office action on the merits final if the rejoined process claim
 did not comply with the requirements of 35 U.S.C. 112 , first paragraph. This
 is because the rejoinder did not occur after the first Office action on the merits. Note
 that the provisions of MPEP § 706.07(b) govern the propriety of making a first
 Office action on the merits final.
 

 Amendments submitted after final rejection are governed by
 37 CFR
 1.116 . 
 

 Where applicant voluntarily presents claims to the product and process,
 for example, 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 §
 804 - § 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 directed to making or
 using an allowable product should not be rejected over prior art without consultation
 with a Technology Center Director.
 

 See MPEP § 2147 for the applicability of
 35 U.S.C.
 103(b) to biotechnological processes and compositions of
 matter.
 

 See MPEP
 § 2116.01 for guidance on the treatment of process claims
 which make or use a novel, nonobvious product.
 

 Upon rejoinder of a nonelected invention, the assigned
 examiner should reconsider whether the C* classification picture is correct. If the
 assigned examiner believes that the C* classification picture is incorrect, the examiner
 should enter a C* classification challenge at the time of rejoinder
 

 
 821.04(a) Rejoinder Between Product Inventions; Rejoinder Between
 Process Inventions [R-07.2022]
 

 Where restriction was required between independent or distinct
 products, or between independent or distinct processes, and all claims directed to an
 elected invention are allowable, the examiner should withdraw any restriction
 requirement between the elected invention and any nonelected invention that depends
 from or otherwise requires all the limitations of an allowable claim. For example, a
 requirement for restriction should be withdrawn when a generic claim, linking claim,
 or subcombination claim is allowable and any previously withdrawn claim depends from
 or otherwise requires all the limitations thereof. Claims that require all the
 limitations of an allowable claim will be rejoined and fully examined for
 patentability in accordance with 37 CFR 1.104 . Claims that do not
 require all the limitations of an allowable claim remain withdrawn from
 consideration. However, in view of the withdrawal of the restriction requirement, if
 any claim presented in a divisional application includes all the limitations of a
 claim that is allowable in the parent application, such claim may be subject to a
 double patenting rejection over the claims of the parent application. Once a
 restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 
 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215,
 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01 . Additionally, a
 patentably indistinct claim in a child application would be subject to a double
 patenting rejection over the claims of the parent application when the child
 application is a continuation or continuation-in-part application or is a divisional
 application without consonance. The prohibition against double patenting rejections
 under 35 U.S.C.
 121 is limited to divisional applications with consonance. See
 MPEP §
 804.01 

 An amendment presenting additional claims that depend from or
 otherwise require all the limitations of an allowable claim will be entered as a
 matter of right if the amendment is presented prior to final rejection or allowance,
 whichever is earlier. Amendments submitted after final rejection are governed by
 37 CFR
 1.116 ; amendments submitted after allowance are governed by
 37 CFR
 1.312 .
 

 When all claims to the nonelected invention(s)
 depend from or otherwise require all the limitations of an allowable claim, applicant
 must be advised that claims drawn to the nonelected invention have been rejoined and
 the restriction requirement has been withdrawn in its entirety. Form paragraph
 8.45 may be used.
 

 ¶ 8.45 Elected Invention Allowable, Rejoinder of All Previously Withdrawn Claims

 Claim [1] allowable. Claim [2 ], previously
 withdrawn from consideration as a result of a restriction requirement, [3] all
 the limitations of an allowable claim. Pursuant to the procedures set forth in
 MPEP §
 821.04(a) , the restriction requirement [4] inventions [5], as
 set forth in the Office action mailed on [6], is hereby withdrawn and claim
 [7] hereby rejoined and fully examined for patentability under
 37 CFR
 1.104 . In view of the withdrawal of the restriction requirement,
 applicant(s) are 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.
 

 Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler , 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01 .
 

 Examiner Note:
 
 1. Where the elected invention is directed to a product and previously nonelected process claims are rejoined, form paragraph
 8.43 should be used instead of this paragraph.
 

 2. This form paragraph should be used whenever ALL previously
 withdrawn claims depend from or otherwise require all the limitations of an allowable
 claim (e.g., a generic claim, linking claim, or subcombination claim) and wherein the
 non-elected claims have NOT been canceled. Use form paragraph
 8.46 ,
 8.47 , or
 8.47.01 as
 appropriate where the nonelected claims HAVE BEEN canceled. Use form paragraph
 8.50 when the
 elected invention is allowable and the restriction requirement is withdrawn in part. Use
 form paragraph 8.49 when the elected invention is allowable and the
 restriction requirement is maintained without modification.
 

 3. In bracket 2, insert the number(s) of the rejoined claim(s) followed by either -- is-- or -- are--.

 4. In bracket 3 insert-- requires-- or -- require--.

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

 6. In bracket 5, insert the group(s), species, or subject matter of the invention(s) being rejoined.

 7. In bracket 7, insert the number(s) of the rejoined claim(s) followed by either --is-- or --are--.
 
 

 When no claims directed to the nonelected
 invention(s) depend from or otherwise require all the limitations of an allowable
 claim, form paragraph 8.49 should be used to explain why all nonelected
 claims are still withdrawn from further consideration.
 

 ¶ 8.49 Elected Invention Allowable, Claims Stand Withdrawn, Restriction
 Maintained
 

 Claim [1] allowable. The restriction requirement
 [2] , as set forth in the Office action mailed on [3] , has been
 reconsidered in view of the allowability of claims to the elected invention pursuant to
 MPEP §
 821.04(a) . The restriction requirement is maintained because
 the nonelected claim(s) do not require all the limitations of an allowable claim.
 

 Examiner Note:
 
 1. This form paragraph is applicable where a restriction requirement
 was made between related product inventions or between related process inventions. See
 MPEP §§
 806.05(j) and 821.04(a) .
 

 2. This form paragraph should be used upon the allowance of a linking
 claim, generic claim, or subcombination claim when none of the nonelected claims require
 all the limitations of an allowable claim and wherein the nonelected claims have NOT
 been canceled. Use form paragraph 8.46 , 8.47 , or 8.47.01 as appropriate where the nonelected claims HAVE
 BEEN canceled. Use form paragraph 8.45 when the elected invention is allowable and the
 restriction requirement is withdrawn in its entirety. Use form paragraph
 8.50 when the
 elected invention is allowable and the restriction requirement is withdrawn in part.
 

 3. In bracket 2, insert -- between-- or --among-- followed by
 identification of the inventions (i.e., groups or species) restricted.
 

 4. In bracket 3, insert the date of the restriction requirement being
 maintained. 
 
 
 

 Note that each additional invention is considered separately. When
 claims to one nonelected invention depend from or otherwise require all the
 limitations of an allowable claim, and claims to another nonelected invention do not,
 applicant must be advised as to which claims have been rejoined and which claims
 remain withdrawn from further consideration. Form paragraph
 8.50 may be used.
 

 ¶ 8.50 Elected Invention Allowable, Some Claims No Longer Considered
 Withdrawn
 

 Claim [1] allowable. The restriction requirement
 [2] , as set forth in the Office action mailed on [3] , has been
 reconsidered in view of the allowability of claims to the elected invention pursuant to
 MPEP §
 821.04(a) . The restriction requirement is hereby withdrawn as
 to any claim that requires all the limitations of an allowable claim. Specifically,
 the restriction requirement of [4] is [5] . Claim [6] ,
 directed to [7] no longer withdrawn from consideration because the claim(s)
 requires all the limitations of an allowable claim. However, claim [8] , directed
 to [9] withdrawn from consideration because [10] require all the
 limitations of an allowable claim.
 

 In view of the above noted withdrawal of the restriction requirement,
 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.
 

 Once a restriction requirement is
 withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re
 Ziegler , 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also
 MPEP §
 804.01 .
 

 Examiner Note:
 
 1. This form paragraph is applicable where a restriction requirement
 was made between related product inventions or between related process inventions. See
 MPEP §§ 806.05(j)
 and 821.04(a) .
 

 2. This form paragraph should be used upon the allowance of a linking
 claim, generic claim, or subcombination claim when some, but not all, of the nonelected
 claims require all the limitations of an allowable claim and wherein the nonelected
 claims have NOT been canceled. Use form paragraph 8.46 , 8.47 , or 8.47.01 as appropriate where the
 nonelected claims HAVE BEEN canceled. Use form paragraph 8.45 when the elected invention is
 allowable and the restriction requirement is withdrawn in its entirety. Use form
 paragraph 8.49 
 when the elected invention is allowable and the restriction requirement is maintained
 without modification.
 

 3. In bracket 2, insert --
 between-- or --among-- followed by identification of the inventions (i.e., groups or
 species) restricted.
 

 4. In bracket 4, insert the date
 of the restriction requirement being fully or partially withdrawn. 
 

 5. In bracket 5, insert
 “withdrawn” if the restriction requirement is no longer in effect at all or “partially
 withdrawn” if the restriction requirement is still partially in effect. If the
 restriction requirement is still partially in effect, state the claim(s) to which it
 still applies. 
 

 6. In bracket 7, insert the
 subject matter of the claimed invention or species being rejoined followed by either --
 is-- or -- are--.
 

 7. In bracket 9, insert the
 subject matter of the claimed invention or species not being rejoined followed by --
 remains-- or --remain--.
 

 8. In bracket 10, insert --it does not-- or --they do
 not all--.
 

 9. If all of the claims are in proper form, i.e., they
 include all the limitations of an allowable claim, one of form paragraphs
 8.45 ,
 8.46 or
 8.47 must be used. 
 
 
 

 Where the application claims an allowable invention and discloses
 but does not claim an additional invention that depends on or otherwise requires all
 the limitations of the allowable claim, applicant may add claims directed to such
 additional invention by way of amendment pursuant to 37 CFR 1.121 .
 Amendments submitted after allowance are governed by 37 CFR 1.312 ;
 amendments submitted after final rejection are governed by 37 CFR
 1.116 .
 

 Form paragraph 8.46 (or form paragraph
 8.47 or 8.47.01 if
 appropriate) must be used to notify applicant when nonelected claim(s) which depended
 from or required all the limitations of an allowable claim were canceled by applicant
 and may be reinstated by submitting the claim(s) in an amendment.
 

 ¶ 8.46 Elected Invention Allowable, Non-elected Claims Canceled, Other
 Issues Remain Outstanding
 

 Claim [1] allowable. The restriction requirement
 [2] inventions [3] , as set forth in the Office action mailed on
 [4] , has been reconsidered in view of the allowability of claims to the
 elected invention pursuant to MPEP § 821.04(a) . The restriction requirement is hereby
 withdrawn as to any claim that requires all the limitations of an allowable claim .
 Specifically, the restriction requirement of [5] is [6] . Claim
 [7] , which required all the limitations of an allowable claim, previously
 withdrawn from consideration as a result of the restriction requirement, [8] 
 canceled by applicant in the reply filed on [9] . 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 set forth
 above, applicant(s) are 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.
 

 Once the restriction requirement is
 withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re
 Ziegler , 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also
 MPEP §
 804.01 .
 

 Examiner Note:
 
 1. This form paragraph is applicable where a restriction requirement
 was made between related product inventions or between related process inventions. See
 MPEP §§
 806.05(j) and 821.04(a) .
 

 2. This form paragraph (or form paragraph 8.47 or 8.47.01 ) must be used
 upon the allowance of a linking claim, generic claim, or subcombination claim following
 a restriction requirement with at least one of these claim types present and wherein the
 non-elected claims requiring all the limitations of an allowable claim HAVE BEEN
 canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled
 and all previously withdrawn claims are rejoined. Use form paragraph
 8.50 when the
 elected invention is allowable and the restriction requirement is withdrawn in part.
 

 3. If no issues remain outstanding and application is otherwise ready
 for allowance, use form paragraph 
 8.47 or 8.47.01 instead of this form paragraph.
 

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

 5. In bracket 3, insert the
 group(s), species, or subject matter of the invention(s) that were
 restricted.
 

 6. In bracket 5, insert the date
 of the restriction requirement being fully or partially withdrawn. 
 

 7. In bracket 6, insert
 “withdrawn” if the restriction requirement is no longer in effect at all or “partially
 withdrawn” if the restriction requirement is still partially in effect. If the
 restriction requirement is still partially in effect, state the claim(s) to which it
 still applies. 
 

 8. In bracket 7, insert the number of each claim that
 required all the limitations of an allowable claim but was canceled as a result of the
 restriction requirement.
 

 9. In bracket 8, insert either --was-- or
 --were--.
 
 
 

 ¶ 8.47 Elected Invention Allowable, Non-elected Claims Canceled, Before
 Final Rejection, No Outstanding Issues Remaining
 

 Claim [1] allowable. The restriction requirement
 [2] inventions [3] , as set forth in the Office action mailed on
 [4] , has been reconsidered in view of the allowability of claims to the
 elected invention pursuant to MPEP § 821.04(a) . The restriction requirement is hereby
 withdrawn as to any claim that requires all the limitations of an allowable claim.
 Specifically, the restriction requirement of [5] is [6] .
 Claim [7] , which required all the limitations of an allowable claim, previously
 withdrawn from consideration as a result of the restriction requirement, [8] 
 canceled by applicant in the reply filed on [9] . 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 TWO MONTHS 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 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.
 

 Once the restriction requirement is
 withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re
 Ziegler , 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also
 MPEP §
 804.01 .
 

 Examiner Note:
 
 1. This form paragraph is applicable where a restriction requirement
 was made between related product inventions or between related process inventions and
 the application has not been finally rejected. See MPEP §§ 806.05(j) and
 821.04(a) . After final rejection, use form paragraph
 8.47.01 
 instead of this form paragraph.
 

 2. This form paragraph (or form paragraph 8.46 or 8.47.01 ) must be used
 upon the allowance of a linking claim, generic claim, or subcombination claim following
 a restriction requirement with at least one of these claim types present and wherein the
 non-elected claims requiring all the limitations of an allowable claim HAVE BEEN
 canceled. Use form paragraph 8.45
 where the nonelected claims have NOT been canceled and all
 previously withdrawn claims are rejoined. Use form paragraph 8.50 when the elected invention is
 allowable and the restriction requirement is withdrawn in part. 
 

 3. 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.
 

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

 5. In bracket 3, insert the
 group(s), species, or subject matter of the invention(s) that were
 restricted.
 

 6. In bracket 5, insert the date
 of the restriction requirement being fully or partially withdrawn. 
 

 7. In bracket 6, insert “withdrawn” if the restriction
 requirement is no longer in effect at all or “partially withdrawn” if the restriction
 requirement is still partially in effect. If the restriction requirement is still
 partially in effect, state the claim(s) to which it still applies. 
 

 8. In bracket 7, insert the number of each claim that
 required all the limitations of an allowable claim but was canceled as a result of the
 restriction requirement.
 

 9. In bracket 8, insert either
 --was-- or --were--.
 
 
 

 ¶ 8.47.01 Elected Invention Allowable, Non-elected Claims Canceled, After
 Final Rejection, No Outstanding Issues Remaining
 

 Claim [1] allowable. The restriction requirement
 [2] inventions [3] , as set forth in the Office action mailed on
 [4] , has been reconsidered in view of the allowability of claims to the
 elected invention pursuant to MPEP § 821.04(a) . The restriction requirement is hereby
 withdrawn as to any claim that requires all the limitations of an allowable claim. 
 Specifically, the restriction requirement of [5] is [6] . In view of
 the withdrawal of the restriction requirement as set forth above, applicant(s) are 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.
 

 Once the restriction requirement is withdrawn, the provisions of
 35 U.S.C.
 121 are no longer applicable. See In re Ziegler , 443
 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01 .
 

 Examiner Note:
 
 1. This form paragraph is applicable where a restriction requirement
 was made between related product inventions or between related process inventions and
 the application has been finally rejected. See MPEP §§ 806.05(j) and
 821.04(a) . Before final rejection, use form paragraph
 8.47 instead
 of this form paragraph.
 

 2. This form paragraph (or form paragraph 8.46 ) must be used upon the
 allowance of a linking claim, generic claim, or subcombination claim following a
 restriction requirement with at least one of these claim types present and wherein the
 non-elected claims requiring all the limitations of an allowable claim HAVE BEEN
 canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled
 and all previously withdrawn claims are rejoined. Use form paragraph
 8.50 when the
 elected invention is allowable and the restriction requirement is withdrawn in part. 
 

 3. 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.
 

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

 5. In bracket 3, insert the
 group(s), species, or subject matter of the invention(s) that were
 restricted.
 

 6. In bracket 5, insert the date of the restriction
 requirement being fully or partially withdrawn. 
 

 7. In bracket 6, insert “withdrawn” if the restriction requirement
 is no longer in effect at all or “partially withdrawn” if the restriction requirement is
 still partially in effect. If the restriction requirement is still partially in effect,
 state the claim(s) to which it still applies.
 
 
 

 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 Withdrawn with Traverse

 This application is in condition for
 allowance except for the presence of claim [1] directed to an invention
 non-elected with traverse in the reply filed on [2] . Applicant is given TWO
 MONTHS from the date of this letter 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.

 

 

 
 821.04(b) Rejoinder of Process Requiring an Allowable Product [R-07.2022]

 Where claims directed to a product and to a process of making and/or
 using the product 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 a process. See
 MPEP §
 806.05(f) and § 806.05(h) . The claims to the
 nonelected invention will be withdrawn from further consideration under
 37 CFR
 1.142 . See MPEP § 821 through
 §
 821.03 . However, if applicant elects a claim(s) directed to
 a product which is subsequently found allowable, withdrawn process claims which
 depend from or otherwise require all the limitations of an allowable product claim
 will be considered for rejoinder. All claims directed to a nonelected process
 invention must depend from or otherwise require all the limitations of an allowable
 product claim for that process invention to be rejoined. Upon rejoinder of claims
 directed to a previously nonelected process invention, the restriction requirement
 between the elected product and rejoined process(es) will be withdrawn.
 

 If applicant cancels all the claims directed to a nonelected process
 invention before rejoinder occurs, the examiner should not withdraw the
 restriction requirement. This will preserve applicant’s rights under
 35 U.S.C.
 121 .
 

 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, applicant may present claims directed to the
 process of making and/or using the allowable 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 require 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, whichever is earlier. However, if applicant
 files an amendment adding claims to a process invention, and the amendment includes
 process claims which do not depend from or otherwise require all the limitations of
 an allowable product, all claims directed to that newly added invention may be
 withdrawn from consideration, via an election by original presentation (see
 MPEP §
 821.03 ).
 

 Amendments submitted after allowance are governed by
 37 CFR
 1.312 . Amendments to add only process claims which depend from
 or otherwise require 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.
 

 Amendments submitted after final rejection are governed by
 37 CFR
 1.116 . When all claims to the elected product are in condition
 for allowance, all process claims eligible for rejoinder (see MPEP § 821.04 )
 must be considered for patentability .
 

 If an amendment after final rejection that otherwise complies with
 the requirements of 37 CFR 1.116 would place all the elected product claim(s) in
 condition for allowance and thereby require rejoinder of process claims that raise
 new issues requiring further consideration (e.g., issues under 35 U.S.C. 101 
 or 35 U.S.C.
 112 , first paragraph), the amendment could be denied entry. For
 example, if pending nonelected process claims depend from a finally rejected product
 claim, and the amendment (or affidavit or other evidence that could have been
 submitted earlier) submitted after final rejection, if entered, would put the product
 claim(s) in condition for allowance, entry of the amendment (or evidence submission)
 would not be required if it would raise new issues that would require further
 consideration, such as issues under 35 U.S.C. 101 or
 35 U.S.C.
 112 , first paragraph necessitated by rejoinder of previously
 nonelected process claims.
 

 Before mailing an advisory action in the above situation, it is
 recommended that applicant be called and given the opportunity to cancel the process
 claims to place the application in condition for allowance with the allowable product
 claims, or to file an RCE to continue prosecution of the process claims in the same
 application as the product claims.
 

 In after final situations when no amendment or evidence is
 submitted, but applicant submits arguments that persuade the examiner that all the
 product claims are allowable, in effect the final rejection of the product claims is
 not sustainable, and any rejection of the rejoined process claims must be done in a
 new Office action. If the process claims would be rejected, applicant may be called
 before mailing a new Office action and given the opportunity to cancel the process
 claims and to place the application in condition for allowance with the allowable
 product claims. If a new Office action is prepared indicating the allowability of the
 product claim and including a new rejection of the process claims, the provisions of
 MPEP §
 706.07 govern the propriety of making the Office action
 final.
 

 Form paragraph 8.21.04 should be included in any
 requirement for restriction between a product and a process of making or process of
 using the product. See MPEP § 806.05(f) and § 806.05(h) .
 

 Form paragraph 8.42 or 8.43 should be used
 to notify applicant of the rejoinder of process inventions which depend from or
 otherwise require all the limitations of an allowable product claim.
 

 ¶ 8.42 Allowable Product, Rejoinder of at Least One Process Claim, Less Than All Claims

 Claim [1] directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(b) , claim [2] , directed to the process of making or using the allowable product, previously withdrawn from consideration as a result of
 a restriction requirement, [3] hereby rejoined and fully examined for patentability under 37 CFR 1.104 . Claim [4], directed to the invention(s) of [5] require all the limitations of an allowable product claim, and [6] NOT been rejoined.
 

 Because a claimed invention previously withdrawn from consideration under
 37 CFR
 1.142 has been rejoined, the restriction requirement [7] groups
 [8] as set forth in the Office action mailed on [9] is hereby withdrawn. In view of
 the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are
 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.
 

 Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler , 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01 .
 

 Examiner Note:
 
 1. If ALL previously withdrawn process claims are being rejoined, then form paragraph 8.43 should be used instead of this form paragraph. All claims directed to a nonelected process invention must require all the
 limitations of an allowable product claim for that process invention to be rejoined. See MPEP § 821.04(b) . 
 

 2. In bracket 1, insert the claim number(s) of the allowable product claims followed by either -- is-- or -- are--.

 3. In bracket 2, insert the claim number(s) of ALL the rejoined process claims.

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

 5. In bracket 4, insert the number(s) of the claims NOT being rejoined followed by either -- is-- or -- are--.

 6. In bracket 5, insert the group(s) or subject matter of the invention(s) to which the claims NOT being rejoined are directed,
 followed by either --, do not all-- or --, does not--.
 

 7. In bracket 6, insert --has-- or --have--.

 8. In bracket 7, insert either -- among -- or -- between--.

 9. In bracket 8, insert group numbers of the elected product and rejoined process.
 
 

 ¶ 8.43 Allowable Product, Rejoinder of All 
 Previously Withdrawn Process Claims
 

 Claim [1] directed to an
 allowable product. Pursuant to the procedures set forth in MPEP § 821.04(b) , claim
 [2] , directed to the process of making or using an allowable product,
 previously withdrawn from consideration as a result of a restriction requirement,
 [3] hereby rejoined and fully examined for patentability under
 37 CFR
 1.104. 

 Because all claims previously withdrawn from consideration under
 37 CFR
 1.142 have been rejoined, the restriction requirement as set forth
 in the Office action mailed on [4] is hereby withdrawn. In view of the withdrawal of
 the restriction requirement as to the rejoined inventions, applicant(s) are 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.
 

 Once the restriction requirement is
 withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re
 Ziegler , 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also
 MPEP §
 804.01 .
 

 Examiner Note:
 
 1. If LESS THAN ALL previously
 withdrawn claims are being rejoined, then form paragraph 8.42 should be used instead of this form
 paragraph. All claims directed to a nonelected process invention must require all the
 limitations of an allowable product claim for that process invention to be rejoined. See
 MPEP §
 821.04(b) .
 

 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. 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(a) or pre-AIA 35 U.S.C. 112 , first
 paragraph is made, then the next Office action may be made final if proper under
 MPEP §
 706.07(a) . 
 
 
 

 

 

 [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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