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806.04(h) Species Must Be Patentably Distinct From Each Other [R-3] - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
806.04(h) Species Must Be Patentably Distinct From Each Other [R-3]
**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 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.
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