To Restrict or Not To Restrict That Is The Question?

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To Restrict or Not To RestrictThat Is The
Question?

• Divided We Stand!
• Or
• Undivided We Stand!!
• By
• Joseph K. McKane
• SPE, Art Unit 1626

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Restriction

• Common Goals
• Quality Examination
• Consistent Practice
• Timely Processing
• There is a great tool to accomplish these where
  claims have multiple distinct inventions and are
  burdensome to examine!
• Can you guess what it is? Hint The answer is on
  the top of the slide.

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Restriction

• Brief Background
• 1952 Patent Act 35 USC 121
• Discretionary authority - Director may require
  restriction
• Nonelected inventions must be patentably distinct
  from the elected invention (37 CFR 1.141)
• Examination of an application to one of a
  plurality of patentably distinct inventions that
  would impose a serious burden on the examiner
  (MPEP 803)
• In re Joyce, 1958 C.D. 2 (1957)
• In re Herrick, 1958 C.D. 1 (1957)

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Restriction

• 35 USC 121 and species
• Patentably Distinct Species when there are
  patentably distinct species, there can be an
  election of species to which the application
  would be limited in the absence of an allowable
  generic claim (MPEP 806.04(a)-(i)) (37 CFR
  1.141)
• A reasonable number of species may be claimed in
  one application (37 CFR 1.141)
• When inventions are both (i) species under a
  claimed genus and (ii) related, then restriction
  must be determined by the practice applicable to
  election of species and the practice applicable
  to other types of restrictions such as those
  presented in MPEP 806.05-806.05(i)

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Restriction (Markush Practice)

• Markush Claim - Eugene A. Markush
• Ex parte Markush, 1925 C.D. 126
• Claimed a definition of a genus having a
  material selected from the group consisting of
  aniline, homologues of aniline and halogen
  substitute of aniline
• Eventually the Markush-type claim turned into
  claiming a type of core molecule which may
  include a megamolecule with various R groups,
  variables and functional groups attached to the
  core or molecule

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Restriction (Markush Practice)

• The Patent Office must examine what applicants
  regard as their invention.
• In re Haas, 486 F.2d 1053, 179 USPQ 623 (CCPA
  1973)
• In re Haas, 580 F.2d 461, 198 USPQ 334 (CCPA
  1978)
• In re Weber, 580 F.2d 455, 198 USPQ 328 (CCPA
  1978)

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Restriction (Markush Practice)

• Since the decisions of In re Weber (CCPA 1978)
  and In re Haas (CCPA 1978)
• It is improper for the Patent Office to refuse to
  examine that which applicants regard as their
  invention, unless the subject matter in a claim
  lacks unity of invention as defined by
• In re Harnisch, 631 F.2d 716, 206 USPQ 300 (CCPA
  1980)
• Ex parte Hozumi, 3 USPQ 2d 1059 (BPAI 1984)

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Restriction (Markush Practice)

• Markush Language Ex. selected from the group
  consisting of or any of A, B, or C.
• Apply In re Harnisch test for unity of
  invention
• Common utility
• Common structural feature disclosed to be
  essential to the common utility

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Restriction (Markush Practice)

• Broadly, unity of invention exists where
  compounds included within a Markush group (1)
  share a common utility, and (2) share a
  substantial structural feature disclosed as being
  essential to that utility.

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Restriction (Markush Practice)

• Markush practice of MPEP 803 applies where unity
  of invention exists under the Harnisch test
• Non-markush restriction practice applies where
  unity of invention does not exist under the
  Harnisch test

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Restriction (Markush Practice)

• If the members of the Markush group are
  sufficiently 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 are
  directed to independent and distinct inventions.

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Each slice represents different inventive
embodiments
Within each slice there are structurally similar
groups which passed the Harnisch test
Harnisch Lines Lack of Unity
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Product/Process Rejoinder

• MPEP 821.04
• Proper restriction between product and process
  claims
• Applies only where product claims are elected
• Requires allowable product claim
• Applies only to process claims that depend from
  or include all the limitations of the allowable
  product claim

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Product/Process Rejoinder

• If an application discloses both product and
  process(es) of making and/or using, but claims
  the product only and a product claim is allowed,
  process claims may be rejoined prior to final
  rejection.
• After final rejection or allowance, amendments
  will be governed either by 37 CFR 1.116 or 1.312,
  respectively.

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Product/Process Rejoinder

• Rejoinder by the Office is sua sponte
• Less than all pending process claims may be
  rejoined where less than all process claims
  depend from or otherwise include all the
  limitations of the allowable product
• Obviousness-type double patenting may be applied
  where product and process claims are voluntarily
  filed in separate applications

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Take Home Message - Restriction

• Technology Center 1600 is striving to have 1)
  quality examination, 2) a consistent practice and
  3) timely processing.
• Every examiner in the Technology Center will be
  receiving restriction practice training during
  Fiscal Year 04 to achieve the above goals.

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Thank You

• Happy Halloween!