814 Indicate Exactly How Application Is To Be Restricted [R-07.2022]

The examiner must provide a clear and detailed record of the restriction requirement to provide a clear demarcation between restricted inventions so that it can be determined whether inventions claimed in a divisional application are consonant with the restriction requirement and therefore subject to the prohibition against double patenting rejections under 35 U.S.C. 121. Geneva Pharms. Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1381, 68 USPQ2d 1865, 1871 (Fed. Cir. 2003). See also MPEP § 804.01.

I. SPECIES

The mode of indicating how to require restriction between species is set forth in MPEP § 809.02(a).

The particular limitations in the claims and the reasons why such limitations are considered to support restriction of the claims to a particular disclosed species should be mentioned if necessary to make the requirement clear. Form paragraph 8.01 or 8.02 may be used to require an election of species.

II. INVENTIONS OTHER THAN SPECIES

It is necessary to read all of the claims to determine what the claims cover. When doing this, the claims directed to each separate invention should be noted along with a statement of the invention to which they are drawn.

In setting forth the restriction requirement, separate inventions should be identified by a grouping of the claims with a short description of the total extent of the invention claimed in each group, specifying the type or relationship of each group as by stating the group is drawn to a process, or to a subcombination, or to a product, etc., and should indicate the classification or separate status of each group, as for example, by class and subclass. See MPEP § 817 for additional guidance.

While every claim should be accounted for, the omission to group a claim, or placing a claim in the wrong group will not affect the propriety of a final requirement where the requirement is otherwise proper and the correct disposition of the omitted or erroneously grouped claim is clear.

III. LINKING CLAIMS

The generic or other linking claims should not be associated with any one of the linked inventions since such claims must be examined with the elected linked invention. See MPEP § 809.

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