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(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.

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.

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.

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.

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.

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.

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

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.