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809.02(a) Election >of Species< Required [R-3] - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
809.02(a) Election >of Species< Required [R-3]
Where **>restriction between species is appropriate (see MPEP § 808.01(a))< the examiner should send a letter including only a restriction requirement or place a telephone requirement to restrict (the latter being encouraged). See MPEP § 812.01 for telephone practice in restriction requirements.
Action as follows should be taken:
(A) Identify generic claims or indicate that no generic claims are present. See MPEP § 806.04(d) for definition of a generic claim.
(B) Clearly identify each (or in aggravated cases at least exemplary ones) of the disclosed species, to which claims are >to be< restricted. The species are preferably identified as the species of figures 1, 2, and 3 or the species of examples I, II, and III, respectively. In the absence of distinct figures or examples to identify the several species, the mechanical means, the particular material, or other distinguishing characteristic of the species should be stated for each species identified. If the species cannot be conveniently identified, the claims may be grouped in accordance with the species to which they are restricted. >Provide reasons why the species are independent or distinct.<
(C) Applicant should then be required to elect a single disclosed species under 35 U.S.C. 121, and advised as to the requisites of a complete reply and his or her rights under 37 CFR 1.141.
**To be complete, a reply to a requirement made according to this section should include a proper election along with a listing of all claims readable thereon, including any claims subsequently added.
In those applications wherein a requirement for restriction is accompanied by an action on *>the elected< claims, such action will be considered to be an action on the merits and the next action *>may< be made final >where appropriate in accordance with MPEP § 706.07(a).
For treatment of claims held to be drawn to nonelected inventions, see MPEP § 821 et seq<.
¶ 8.01 Election of Species; Species Claim(s) Present
This application contains claims directed to the following patentably distinct species [1]. The species are independent or distinct because [2].
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, [3] generic.
Applicant is advised that a reply to this requirement must include an identification of the species that is elected consonant with this requirement, and a listing of all claims readable thereon, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141. If claims are added after the election, applicant must indicate which are readable upon the elected species. MPEP § 809.02(a).
Examiner Note
1. In bracket 1, identify the species from which an election is to be made.
2. In bracket 2, explain why the inventions are independent or distinct. See, e.g., form paragraphs 8.14.01 and 8.20.02.
3. In bracket 3 insert the appropriate generic claim information.
4. Conclude restriction requirement with one of form paragraphs 8.21.01- 8.21.03.
¶ 8.02 Election of Species; No Species Claim Present
Claim [1] generic to the following disclosed patentably distinct species: [2]. The species are independent or distinct because [3]. Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, even though this requirement is traversed. Applicant is advised that a reply to this requirement must include an identification of the species that is elected consonant with this requirement, and a listing of all claims readable thereon, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141. If claims are added after the election, applicant must indicate which are readable upon the elected species. MPEP § 809.02(a).
Examiner Note
1. This form paragraph should be used for the election of requirement described in MPEP § 803.02 (Markush group) and M PEP § 808.01(a) where only generic claims are presented.
2. In bracket 2, clearly identify the species from which an election is to be made.
3. In bracket 3, explain why the inventions are independent or distinct. See, e.g., form paragraphs 8.14.01 and 8.20.02.
4. Conclude restriction requirement with one of form paragraphs 8.21.01- 8.21.03.
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