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`Case 1:19-cv-11586-FDS Document 238-9 Filed 09/14/21 Page
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`EXHIBIT I
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`EXHIBIT |
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`Case 1:19-cv-11586-FDS Document 238-9 Filed 09/14/21 Page 2 of 73
`Chapter 800 Restriction in Applications Filed Under 35 U.S.C.
`
`111; Double Patenting
`806.05(g) Apparatus and Product Made *
`
`806.05(h) Product and Process of Using
`
`806.05(i) Product, Process of Making, and Process of Us(cid:173)
`
`ing **
`>806.05(j) Related Products; Related Processes
`806.06
`Independent Inventions<
`807
`Patentability Report Practice Has No Effect on
`Restriction Practice
`Reasons for Insisting Upon Restriction
`**>Reasons for Holding of Independence or
`Distinctness<
`808.01(a) Species
`808.02
`**>Establishing Burden<
`809
`* Linking **>Claims<
`**
`809.02(a) Election >of Species< Required
`**
`809.03
`**
`810
`**
`811
`811.02
`
`808
`808.01
`
`**>Restriction Between Linked Inventions<
`
`Action on the Merits
`
`Time for Making Requirement
`*>New Requirement< After Compliance With
`Preceding Requirement
`Repeating After Withdrawal Proper
`Proper Even Though Grouped Together in Par(cid:173)
`ent Application
`812 Who Should Make the Requirement
`812.01
`Telephone Restriction Practice
`814
`Indicate Exactly How Application Is To Be Re-
`stricted
`815 Make Requirement Complete
`**
`817
`
`811.03
`811.04
`
`Outline of Letter for Restriction Requirement
`**
`Election and Reply
`818
`Election Fixed by Action on Claims
`818.01
`Election Other Than Express
`818.02
`818.02(a) By Originally Presented Claims
`818.02(b) Generic Claims Only — No Election of Spe(cid:173)
`cies
`818.02(c) By Optional Cancellation of Claims
`818.03
`Express Election and Traverse
`818.03(a) Reply Must Be Complete
`818.03(b) Must Elect, Even When Requirement Is Tra(cid:173)
`versed
`818.03(c) Must Traverse To Preserve Right of Petition
`818.03(d) Traverse of **>Restriction Requirement
`With< Linking Claims
`
`**
`819
`**
`
`Office Generally Does Not Permit Shift
`
`800-1
`
`Rev. 3, August 2005
`
`801
`802
`802.01
`802.02
`803
`803.01
`
`803.04
`804
`804.01
`
`804.02
`804.03
`
`804.04
`805
`806
`
`Introduction
`Basis for Practice in Statute and Rules
`Meaning of “Independent” and “Distinct”
`Definition of Restriction
`Restriction — When Proper
`Review by Examiner With at Least Partial Sig(cid:173)
`natory Authority
`* Markush Claims
`803.02
`* Transitional Applications
`803.03
`803.03(a) Transitional Application — Linking Claim Al(cid:173)
`lowable
`803.03(b) Transitional Application — Generic Claim Al(cid:173)
`lowable
`* Nucleotide Sequences
`Definition of Double Patenting
`Prohibition of Double Patenting Rejections
`Under 35 U.S.C. 121
`Avoiding a Double Patenting Rejection
`** Commonly Owned *>Inventions< of
`Different Inventive Entities>; Non-Commonly
`
`Owned *>Inventions< Subject to a Joint
`
`Research Agreement<
`
`Submission to Technology Center Director
`Effect of Improper Joinder in Patent
`Determination of Distinctness or Independence
`of Claimed Inventions
`Compare Claimed Subject Matter
`
`806.01
`**
`806.03
`
`Single Embodiment, Claims Defining Same
`Essential Features
`**>Genus and/or Species< Inventions
`
`806.04
`**
`806.04(b) Species May Be >Independent or< Related In-
`ventions
`
`**
`806.04(d) Definition of a Generic Claim
`806.04(e) Claims * >Limited< to Species
`806.04(f)
`**>Restriction Between< Mutually Exclusive
`*>Species<
`806.04(h) Species Must Be Patentably Distinct From
`Each Other
`806.04(i) Generic Claims Presented ** After Issue of
`Species
`Related Inventions
`806.05
`806.05(a) Combination and Subcombination **
`**
`
`806.05(c) Criteria of Distinctness *>Between< Combina(cid:173)
`
`tion *>and< Subcombination **
`806.05(d) Subcombinations Usable Together
`806.05(e) Process and Apparatus for Its Practice *
`806.05(f) Process of Making and Product Made *
`
`

`

`Case 1:19-cv-11586-FDS Document 238-9 Filed 09/14/21 Page 3 of 73
`
`801
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`822
`
`822.01
`823
`
`821
`
`821.01
`821.02
`821.03
`
`Treatment of Claims Held To Be Drawn to Non(cid:173)
`elected Inventions
`After Election With Traverse
`After Election Without Traverse
`Claims for Different Invention Added After an
`Office Action
`Rejoinder
`821.04
`>821.04(a) Rejoinder Between Product Inventions; Re(cid:173)
`joinder Between Process Inventions
`821.04(b) Rejoinder of Process Requiring an Allowable
`Product<
`Claims to Inventions That Are Not Distinct in
`Plural Applications of Same Inventive Entity
`Copending Before the Examiner
`Unity of Invention Under the Patent Coopera(cid:173)
`tion Treaty
`Introduction
`801
`This chapter is limited to a discussion of the subject
`of restriction and double patenting under Title 35 of
`the United States Code and Title 37 of the Code of
`Federal Regulations as it relates to national applica(cid:173)
`tions filed under 35 U.S.C. 111(a). The discussion of
`unity of invention under the Patent Cooperation
`Treaty Articles and Rules as it is applied as an Inter(cid:173)
`national Searching Authority, International Prelimi(cid:173)
`nary Examining Authority, and
`in applications
`entering the National Stage under 35 U.S.C. 371 as a
`Designated or Elected Office in the U.S. Patent and
`Trademark Office is covered in Chapter 1800.
`Basis for Practice in Statute and
`802
`Rules
`The basis for restriction and double patenting prac(cid:173)
`tices is found in the following statute and rules:
`35 U.S.C. 121. Divisional applications.
`If two or more independent and distinct inventions are claimed
`in one application, the Director may require the application to be
`restricted to one of the inventions. If the other invention is made
`the subject of a divisional application which complies with the
`requirements of section 120 of this title it shall be entitled to the
`benefit of the filing date of the original application. A patent issu(cid:173)
`ing on an application with respect to which a requirement for
`restriction under this section has been made, or on an application
`filed as a result of such a requirement, shall not be used as a refer(cid:173)
`ence either in the Patent and Trademark Office or in the courts
`against a divisional application or against the original application
`or any patent issued on either of them, if the divisional application
`is filed before the issuance of the patent on the other application.
`If a divisional application is directed solely to subject matter
`described and claimed in the original application as filed, the
`
`Director may dispense with signing and execution by the inventor.
`The validity of a patent shall not be questioned for failure of the
`Director to require the application to be restricted to one inven(cid:173)
`tion.
`37 CFR 1.141. Different inventions in one national
`application.
`(a) Two or more independent and distinct inventions may not
`be claimed in one national application, except that more than one
`species of an invention, not to exceed a reasonable number, may
`be specifically claimed in different claims in one national applica(cid:173)
`tion, provided the application also includes an allowable claim
`generic to all the claimed species and all the claims to species in
`excess of one are written in dependent form (§ 1.75) or otherwise
`include all the limitations of the generic claim.
`(b) Where claims to all three categories, product, process of
`making, and process of use, are included in a national application,
`a three way requirement for restriction can only be made where
`the process of making is distinct from the product. If the process
`of making and the product are not distinct, the process of using
`may be joined with the claims directed to the product and the pro(cid:173)
`cess of making the product even though a showing of distinctness
`between the product and process of using the product can be
`made.
`37 CFR 1.142. Requirement for restriction.
`(a) If two or more independent and distinct inventions are
`claimed in a single application, the examiner in an Office action
`will require the applicant in the reply to that action to elect an
`invention to which the claims will be restricted, this official action
`being called a requirement for restriction (also known as a
`requirement for division). Such requirement will normally be
`made before any action on the merits; however, it may be made at
`any time before final action.
`(b) Claims to the invention or inventions not elected, if not
`canceled, are nevertheless withdrawn from further consideration
`by the examiner by the election, subject however to reinstatement
`in the event the requirement for restriction is withdrawn or over(cid:173)
`ruled.
`The pertinent Patent Cooperation Treaty (PCT)
`Articles and Rules are cited and discussed in Chapter
`1800. Sections 1850, 1875, and 1893.03(d) should be
`consulted for discussions on unity of invention:
`(A) before the International Searching Authority;
`(B) before the International Preliminary Examin(cid:173)
`ing Authority; and
`(C) in the National Stage under 35 U.S.C. 371.
`802.01 Meaning of “Independent” and
`“Distinct” [R-3]
`35 U.S.C. 121 quoted in the preceding section
`states that the *>Director< may require restriction if
`two or more “independent and distinct” inventions are
`
`Rev. 3, August 2005
`
`800-2
`
`

`

`Case 1:19-cv-11586-FDS Document 238-9 Filed 09/14/21 Page 4 of 73
`
`RESTRICTION IN APPLICATIONS FILED UNDER 35 U.S.C. 111; DOUBLE PATENTING
`
`802.02
`
`claimed in one application. In 37 CFR 1.141, the
`statement is made that two or more “independent and
`distinct inventions” may not be claimed in one appli(cid:173)
`cation.
`This raises the question of the *>inventions< as
`between which the *>Director< may require restric(cid:173)
`tion. This, in turn, depends on the construction of the
`expression “independent and distinct” inventions.
`“Independent”, of course, means not dependent. If
`“distinct” means the same thing, then its use in the
`statute and in the rule is redundant. If “distinct” means
`something different, then the question arises as to
`what the difference in meaning between these two
`words may be. The hearings before the committees of
`Congress considering the codification of the patent
`laws indicate that 35 U.S.C. 121: “enacts as law exist(cid:173)
`ing practice with respect to division, at the same time
`introducing a number of changes.”
`The report on the hearings does not mention as a
`change that is introduced, the *>inventions< between
`which the *>Director< may properly require division.
`The term “independent” as already pointed out,
`means not dependent. A large number of *>inven(cid:173)
`tions< between which, prior to the 1952 Act, division
`had been proper, are dependent *>inventions<, such
`as, for example, combination and a subcombination
`thereof; as process and apparatus used in the practice
`of the process; as composition and the process in
`which the composition is used; as process and the
`product made by such process, etc. If section 121 of
`the 1952 Act were intended to direct the *>Director<
`never to approve division between dependent inven(cid:173)
`tions, the word “independent” would clearly have
`been used alone. If the *>Director< has authority or
`discretion to restrict independent inventions only, then
`restriction would be improper as between dependent
`inventions, e.g., the examples used for purpose of
`illustration above. Such was clearly not the intent of
`Congress. Nothing in the language of the statute and
`nothing in the hearings of the committees indicate any
`intent to change the substantive law on this subject.
`On the contrary, joinder of the term “distinct” with the
`term “independent”, indicates lack of such intent. The
`law has long been established that dependent inven(cid:173)
`tions (frequently termed related inventions) such as
`used for illustration above may be properly divided if
`they are, in fact, “distinct” inventions, even though
`dependent.
`
`>
`
`I.
`
`< INDEPENDENT
`
`The term “independent” (i.e., not dependent) means
`that there is no disclosed relationship between the two
`or more **>inventions claimed<, that is, they are
`unconnected in design, operation, *>and< effect*>.
`For< example **>, a< process and >an< apparatus
`incapable of being used in practicing the process*
`>are independent inventions. See also MPEP § 806.06
`and § 808.01.
`
`II.
`
`< DISTINCT
`
`**>Two or more inventions are related (i.e., not
`independent) if they are disclosed as connected in at
`least one of design (e.g., structure or method of manu(cid:173)
`facture), operation (e.g., function or method of use),
`or effect. Examples of related inventions include<
`combination and part (subcombination) thereof, pro(cid:173)
`cess and apparatus for its practice, process and prod(cid:173)
`uct made, etc. **>In< this definition the term related
`is used as an alternative for dependent in referring to
`*>inventions< other than independent *>inventions<.
`>Related inventions are distinct if the inventions as
`claimed are not connected in at least one of design,
`operation, or effect (e.g., can be made by, or used in, a
`materially different process) and wherein at least one
`invention is PATENTABLE (novel and nonobvious)
`OVER THE OTHER (though they may each be
`unpatentable over
`the prior art). See MPEP
`§ 806.05(c) (combination and subcombination) and
`§ 806.05(j) (related products or related processes) for
`examples of when a two-way test is required for dis(cid:173)
`tinctness.<
`It is further noted that the terms “independent” and
`“distinct” are used in decisions with varying mean(cid:173)
`ings. All decisions should be read carefully to deter(cid:173)
`mine the meaning intended.
`802.02 Definition of Restriction [R-3]
`Restriction **>is< the practice of requiring an
`**>applicant to elect a single claimed invention (e.g.,
`a combination or subcombination invention, a product
`or process invention, a species within a genus) for
`examination when two or more independent inven(cid:173)
`tions and/or two or more distinct inventions are
`claimed in an application.<
`
`800-3
`
`Rev. 3, August 2005
`
`

`

`Case 1:19-cv-11586-FDS Document 238-9 Filed 09/14/21 Page 5 of 73
`
`803
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`803 Restriction — When Proper [R-3]
`Under the statute>, the claims of< an application
`may properly be required to be restricted to one of
`two or more claimed inventions only if they are able
`to support separate patents and they are either inde(cid:173)
`pendent
`(MPEP § **>802.01, § 806.06, and
`§ 808.01<)
`or
`distinct
`(MPEP
`§ 806.05
`-
`§ *>806.05(j)<).
`If the search and examination of **>all the claims
`in an< application can be made without serious bur(cid:173)
`den, the examiner must examine *>them< on the mer(cid:173)
`its, even
`though **>they
`include< claims
`to
`independent or distinct inventions.
`>
`
`I.
`
`< CRITERIA FOR RESTRICTION BE(cid:173)
`TWEEN PATENTABLY DISTINCT IN(cid:173)
`VENTIONS
`There are two criteria for a proper requirement for
`restriction between patentably distinct inventions:
`(A) The inventions must be independent (see
`MPEP § 802.01, § *>806.06<, § 808.01) or distinct
`as claimed (see MPEP § 806.05 - § *>806.05(j)<);
`and
`(B) There *>would< be a serious burden on the
`examiner if restriction is >not< required (see MPEP
`§ 803.02, **>§ 808<, and § 808.02).
`>
`
`< GUIDELINES
`II.
`Examiners must provide reasons and/or examples
`to support conclusions, but need not cite documents to
`support the restriction requirement in most cases.
`Where plural inventions are capable of being
`viewed as related in two ways, both applicable criteria
`for distinctness must be demonstrated to support a
`restriction requirement.
`If there is an express admission that the claimed
`inventions *>would have been< obvious over each
`other within the meaning of 35 U.S.C. 103, restric(cid:173)
`tion should not be required. In re Lee, 199 USPQ 108
`(Comm’r Pat. 1978).
`For purposes of the initial requirement, a serious
`burden on the examiner may be prima facie shown **
`by appropriate explanation of separate classification,
`or separate status in the art, or a different field of
`
`search as defined in MPEP § 808.02. That prima facie
`showing may be rebutted by appropriate showings or
`evidence by the applicant. Insofar as the criteria for
`restriction practice relating to Markush-type claims is
`concerned, the criteria is set forth in MPEP § 803.02.
`Insofar as the criteria for restriction or election prac(cid:173)
`tice relating to claims to genus-species, see MPEP
`§ *>806.04< - § 806.04(i) and § 808.01(a).
`803.01 Review by Examiner with at
`Least Partial Signatory Authori(cid:173)
`ty [R-3]
`
`Since requirements for restriction under 35 U.S.C.
`121 are discretionary with
`the *>Director<,
`it
`becomes very important that the practice under this
`section be carefully administered. Notwithstanding
`the fact that this section of the statute apparently pro(cid:173)
`tects the applicant against the dangers that previously
`might have resulted from compliance with an
`improper requirement for restriction, IT STILL
`REMAINS IMPORTANT FROM THE STAND(cid:173)
`POINT OF THE PUBLIC INTEREST THAT NO
`REQUIREMENTS BE MADE WHICH MIGHT
`RESULT IN THE ISSUANCE OF TWO PATENTS
`FOR THE SAME INVENTION. Therefore, to guard
`against this possibility, only an examiner with perma(cid:173)
`nent >full signatory authority< or temporary full sig(cid:173)
`natory authority may sign final ** Office actions
`containing a final requirement for restriction**>. An<
`examiner with permanent >partial signatory author(cid:173)
`ity< or temporary partial signatory authority may sign
`non-final Office actions containing a final require(cid:173)
`ment for restriction.
`803.02
`* Markush Claims [R-3]
`
`**>A Markush-type claim recites alternatives in a
`format such as “selected from the group consisting of
`A, B and C.” See Ex parte Markush, 1925 C.D. 126
`(Comm’r Pat. 1925). The members of the Markush
`group (A, B, and C in the example above) ordinarily
`must belong to a recognized physical or chemical
`class or to an art-recognized class. However, when the
`Markush group occurs in a claim reciting a process or
`a combination (not a single compound), it is sufficient
`if the members of the group are disclosed in the speci(cid:173)
`fication to possess at least one property in common
`which is mainly responsible for their function in the
`
`Rev. 3, August 2005
`
`800-4
`
`

`

`Case 1:19-cv-11586-FDS Document 238-9 Filed 09/14/21 Page 6 of 73
`
`RESTRICTION IN APPLICATIONS FILED UNDER 35 U.S.C. 111; DOUBLE PATENTING
`
`803.02
`
`claimed relationship, and it is clear from their very
`nature or from the prior art that all of them possess
`this property. Inventions in metallurgy, refractories,
`ceramics, pharmacy, pharmacology and biology are
`most frequently claimed under the Markush formula
`but purely mechanical features or process steps may
`also be claimed by using the Markush style of claim(cid:173)
`ing. See MPEP § 2173.05(h).<
`If the members of the Markush group are suffi(cid:173)
`ciently few in number or so closely related that a
`search and examination of the entire claim can be
`made without serious burden, the examiner must
`examine all the members of the Markush group in the
`claim on the merits, even though they *>may be<
`directed to independent and distinct inventions. In
`such a case, the examiner will not follow the proce(cid:173)
`dure described below and will not require *>provi(cid:173)
`sional election of a single species<.
`Since the decisions in In re Weber, 580 F.2d 455,
`198 USPQ 328 (CCPA 1978) and In re Haas, 580
`F.2d 461, 198 USPQ 334 (CCPA 1978), it is improper
`for the Office to refuse to examine that which appli(cid:173)
`cants regard as their invention, unless the subject mat(cid:173)
`ter in a claim lacks unity of invention. In re
`*>Harnisch<, 631 F.2d 716, 206 USPQ 300 (CCPA
`1980); and Ex parte Hozumi, 3 USPQ2d 1059 (Bd.
`Pat. App. & Int. 1984). Broadly, unity of invention
`exists where compounds included within a Markush
`group (1) share a common utility, and (2) share a sub(cid:173)
`stantial structural feature ** essential to that utility.
`This subsection deals with Markush-type generic
`claims which *>recite< a plurality of alternatively
`usable substances or members. In most cases, a recita(cid:173)
`tion by enumeration is used because there is no appro(cid:173)
`priate or true generic language. A Markush-type claim
`*>may< include independent and distinct inventions.
`This is true where two or more of the members are so
`unrelated and diverse that a prior art reference antici(cid:173)
`pating the claim with respect to one of the members
`would not render the claim obvious under 35 U.S.C.
`103 with respect to the other member(s). In applica(cid:173)
`tions containing **>a Markush-type claim
`that
`encompasses at least two independent or distinct
`inventions<, the examiner may require a provisional
`election of a single species prior to examination on
`the merits. **>An examiner should set forth a require(cid:173)
`ment for election of a single disclosed species in a
`Markush-type claim using form paragraph 8.01 when
`
`claims limited to species are present or using form
`paragraph 8.02 when no species claims are present.
`See MPEP § 808.01(a) and § 809.02(a).< Following
`election, the Markush-type claim will be examined
`fully with respect to the elected species and further to
`the extent necessary to determine patentability. If the
`Markush-type claim is not allowable over the prior
`art, >the provisional election will be given effect and<
`examination will be limited to the Markush-type
`claim and claims to the elected species, with claims
`drawn to species patentably distinct from the elected
`species held withdrawn from further consideration.
`As an example, in the case of an application with a
`Markush-type claim drawn to the compound *>X-R<,
`wherein R is a radical selected from the group consist(cid:173)
`ing of A, B, C, D, and E, the examiner may require a
`provisional election of a single species, **>XA, XB,
`XC, XD, or XE<. The Markush-type claim would
`then be examined fully with respect to the elected spe(cid:173)
`cies and any species considered to be clearly unpat(cid:173)
`entable over the elected species. If on examination the
`elected species is found to be anticipated or rendered
`obvious by prior art, the Markush-type claim and
`claims to the elected species shall be rejected, and
`claims to the nonelected species would be held with(cid:173)
`drawn from further consideration. **>A< second
`action on the rejected claims *>can< be made final
`>unless the examiner introduces a new ground of
`rejection that is neither necessitated by applicant’s
`amendment of the claims nor based on information
`submitted in an information disclosure statement filed
`during the period set forth in 37 CFR 1.97(c) with the
`fee set forth
`in 37 CFR 1.17(p). See MPEP
`§ 706.07(a)<.
`On the other hand, should no prior art be found that
`anticipates or renders obvious the elected species, the
`search of the Markush-type claim will be extended. If
`prior art is then found that anticipates or renders obvi(cid:173)
`ous the Markush-type claim with respect to a non­
`elected species, the Markush-type claim shall be
`rejected and claims to the nonelected species held
`withdrawn from further consideration. The prior art
`search, however, will not be extended unnecessarily
`to cover all nonelected species. Should applicant,
`in response to this rejection of the Markush-type
`claim, overcome the rejection, as by amending the
`Markush-type claim to exclude the species anticipated
`or rendered obvious by the prior art, the amended
`
`800-5
`
`Rev. 3, August 2005
`
`

`

`Case 1:19-cv-11586-FDS Document 238-9 Filed 09/14/21 Page 7 of 73
`
`803.03
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`Markush-type claim will be reexamined. The prior art
`search will be extended to the extent necessary to
`determine patentability of the Markush-type claim. In
`the event prior art is found during the reexamination
`that anticipates or renders obvious the amended
`Markush-type claim, the claim will be rejected and
`the action >can be< made final >unless the examiner
`introduces a new ground of rejection that is neither
`necessitated by applicant’s amendment of the claims
`nor based on information submitted in an information
`disclosure statement filed during the period set forth
`in 37 CFR 1.97(c) with the fee set forth in 37 CFR
`1.17(p). See MPEP § 706.07(a)<. Amendments sub(cid:173)
`mitted after the final rejection further restricting the
`scope of the claim may be denied entry >if they do not
`comply with the requirements of 37 CFR 1.116. See
`MPEP § 714.13.
`If a Markush claim depends from or otherwise
`requires all the limitations of another generic or link(cid:173)
`ing claim, see MPEP § 809.<
`* Transitional Applications
`803.03
`[R-3]
`
`PRACTICE RE TRANSITIONAL APPLICA(cid:173)
`TION
`37 CFR 1.129. Transitional procedures for limited
`examination after final rejection and restriction practice.
`*****
`
`(b)(1) In an application, other than for reissue or a design
`patent, that has been pending for at least three years as of June 8,
`1995, taking into account any reference made in the application to
`any earlier filed application under 35 U.S.C. 120, 121 and 365(c),
`no requirement for restriction or for the filing of divisional appli(cid:173)
`cations shall be made or maintained in the application after June
`8, 1995, except where:
`(i)
` The requirement was first made in the application or
`any earlier filed application under 35 U.S.C. 120, 121 and 365(c)
`prior to April 8, 1995;
`(ii) The examiner has not made a requirement for restric(cid:173)
`tion in the present or parent application prior to April 8, 1995, due
`to actions by the applicant; or
`(iii) The required fee for examination of each additional
`invention was not paid.
`(2) If the application contains more than one independent
`and distinct invention and a requirement for restriction or for the
`filing of divisional applications cannot be made or maintained
`pursuant to this paragraph, applicant will be so notified and given
`a time period to:
`(i) Elect the invention or inventions to be searched
`and examined, if no election has been made prior to the notice,
`
`and pay the fee set forth in 1.17(s) for each independent and dis(cid:173)
`tinct invention claimed in the application in excess of one which
`applicant elects;
`(ii) Confirm an election made prior to the notice and
`pay the fee set forth in § 1.17(s) for each independent and distinct
`invention claimed in the application in addition to the one inven(cid:173)
`tion which applicant previously elected; or
`(iii) File a petition under this section traversing the
`requirement. If the required petition is filed in a timely manner,
`the original time period for electing and paying the fee set forth in
`§ 1.17(s) will be deferred and any decision on the petition affirm(cid:173)
`ing or modifying the requirement will set a new time period to
`elect the invention or inventions to be searched and examined and
`to pay the fee set forth in § 1.17(s) for each independent and dis(cid:173)
`tinct invention claimed in the application in excess of one which
`applicant elects.
`(3) The additional inventions for which the required fee
`has not been paid will be withdrawn from consideration under
`§ 1.142(b). An applicant who desires examination of an invention
`so withdrawn from consideration can file a divisional application
`under 35 U.S.C. 121.
`(c) The provisions of this section shall not be applicable to
`any application filed after June 8, 1995.
`“Restriction” under 37 CFR 1.129(b) applies to
`both restriction requirements under 37 CFR 1.142 and
`election of species requirements under 37 CFR 1.146.
`37 CFR 1.129(b)(1) provides for examination of
`more than one independent and distinct invention in
`certain applications pending for 3 years or longer as
`of June 8, 1995, taking into account any reference to
`any earlier application under 35 U.S.C. 120, 121, or
`365(c). Applicant will not be permitted to have such
`additional invention(s) examined in an application if:
`(A) the requirement was made in the application
`or in an earlier application relied on under 35 U.S.C.
`120, 121, or 365(c) prior to April 8, 1995;
`(B) no restriction requirement was made with
`respect to the invention(s) in the application or earlier
`application prior to April 8, 1995, due to actions by
`the applicant; or
`(C) the required fee for examination of each addi(cid:173)
`tional invention was not paid.
`Only if one of these exceptions applies is a normal
`restriction requirement appropriate and telephone
`restriction practice may be used.
`Examples of what constitute “actions by the appli(cid:173)
`cant” in 37 CFR 1.129(b)(1) are:
`(A) applicant abandoned the application and con(cid:173)
`tinued to refile the application such that no Office
`action could be issued in the application,
`
`Rev. 3, August 2005
`
`800-6
`
`

`

`Case 1:19-cv-11586-FDS Document 238-9 Filed 09/14/21 Page 8 of 73
`
`RESTRICTION IN APPLICATIONS FILED UNDER 35 U.S.C. 111; DOUBLE PATENTING
`
`803.03
`
`(B) applicant requested suspension of prosecution
`under 37 CFR 1.103(a) such that no Office action
`could be issued in the application,
`(C) applicant disclosed a plurality of independent
`and distinct inventions in the present or parent appli(cid:173)
`cation, but delayed presenting claims to more than
`one of the disclosed independent and distinct inven(cid:173)
`tions in the present or parent application such that no
`restriction requirement could be made prior to April 8,
`1995, and
`(D) applicant combined several applications, each
`of which claimed a different independent and distinct
`invention, into one large “continuing” application, but
`delayed filing the continuing application first claim(cid:173)
`ing more than one independent and distinct invention
`such that no restriction requirement could be made
`prior to April 8, 1995.
`
`In examples (A) and (B), the fact that the present or
`parent application claiming independent and distinct
`inventions was on an examiner’s docket for at least 3
`months prior to abandonment or suspension, or in
`examples (C) and (D), the fact that the amendment
`claiming independent and distinct inventions was first
`filed, or the continuing application first claiming the
`additional independent and distinct inventions was on
`an examiner’s docket, at least 3 months prior to April
`8, 1995, is prima facie evidence that applicant’s
`actions did not prevent the Office from making a
`requirement for restriction with respect to those inde(cid:173)
`pendent and distinct inventions prior to April 8, 1995.
`Furthermore, an extension of time under 37 CFR
`1.136(a) does not constitute such “actions by the
`applicant” under 37 CFR 1.129(b)(1).
`NOTE: If an examiner believes an application falls
`under the exception that no restriction could be made
`prior to April 8, 1995, due to applicant’s action, the
`application must be brought to the attention of the
`Technology Center (TC) Special Program Examiner
`for review.
`Under 37 CFR 1.129(b)(2), if the application con(cid:173)
`tains claims to more than one independent and distinct
`invention, and no requirement for restriction or for the
`filing of divisional applications can be made or main(cid:173)
`tained, applicant will be notified and given a time
`period to:
`
`(A) elect the invention or inventions to be
`searched and examined, if no election has been made
`
`prior to the notice, and pay the fee set forth in 37 CFR
`1.17(s) for each independent and distinct invention
`claimed in the application in excess of one which
`applicant elects,
`(B) in situations where an election was made in
`reply to a requirement for restriction that cannot be
`maintained, confirm the election made prior to the
`notice and pay the fee set forth in 37 CFR 1.17(s) for
`each independent and distinct invention claimed in
`the application in addition to the one invention which
`applicant previously elected, or
`(C) file a petition under 37 CFR 1.129(b)(2) tra(cid:173)
`versing the requirement without regard to whether the
`requirement has been made final. No petition fee is
`required.
`37 CFR 1.129(b)(2) also provides that if the peti(cid:173)
`tion is filed in a timely manner, the original time
`period for electing and paying the fee set forth in
`37 CFR 1.17(s) will be deferred and any decision on
`the petition affirming or modifying the requirement
`will set a new time period to elect the invention or
`inventions to be searched and examined and to pay
`the fee set forth in 37 CFR 1.17(s) for each indepen(cid:173)
`dent and d