RESTRICTION PRACTICE II
Remember a restriction requirement is frequently the first communication the Applicant receives from the examiner. A restriction requires that the Applicant select or elect among multiple “inventions” asserted by the examiner to be contained in the original application. I have written an introduction to this “puzzling topic” entitled Restriction Requirements.
I want to discuss a subcategory of the restriction requirement puzzle. That is the topic of separate species comprising separate inventions.
MPEP 806 states “where an application includes claims directed to different embodiments or species that could fall within the scope of a generic claim, restriction between the species may be proper if the species are independent or distinct. However, 37 CFR 1.141 provides that an allowable generic claim may link a reasonable number of species embraced thereby. The practice is set forth in 37 CFR 1.146.”
Different embodiments are different variations of the same invention. However the variations can in some case be patentably distinct.
Claims define the invention. That fact is well established. MPEP 806(4)(e) states
“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)).
MPEP 806(4)(b) states “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.” (That means the Applicant can be required to elect among the claims. This is not a minor exercise as dividing the single application into multiple applications may result in greatly increased costs of total prosecution.) 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). (More on MPEP 806.05 through 806.05(j) later. If restriction is improper under either practice, it should not be required.
For example, two different sub-combinations 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 sub-combinations 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 intermediate and final products do not overlap in scope 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
Generic Claim Defined MPEP 806.04(d)
In an application presenting three species, 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 sub-combination 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).
MPEP 806(4)(f) states “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.”
806.05 Related Inventions
Where two or more related inventions are claimed, the principal question to be determined in connection with a requirement to restrict or a rejection on the ground of double patenting is whether or not the inventions as claimed are distinct. If they are distinct, restriction may be proper. If they are not distinct, restriction is never proper. If nondistinct inventions are claimed in separate applications or patents, double patenting must be held, except where the additional applications were filed consonant with a requirement to restrict.
Various pairs of related inventions are noted in the following sections. In applications claiming inventions in different statutory categories, only one-way distinctness is generally needed to support a restriction requirement. See MPEP § 806.05(c) (combination and sub-combination) and § 806.05(j) (related products or related processes) for examples of when a two-way test is required for distinctness. Related inventions in the same statutory class are considered mutually exclusive, or not overlapping in scope, if a first invention would not infringe a second invention, and the second invention would not infringe the first invention
806.06 Independent Inventions
Inventions as claimed are independent if there is no disclosed relationship between the inventions, that is, they are unconnected in design, operation, and effect. If it can be shown that two or more inventions are independent, and if there would be a serious burden on the examiner if restriction is not required, applicant should be required to restrict the claims presented to one of such independent inventions.