To Restrict or Not To Restrict That Is The Question?

1. To Restrict or Not To RestrictThat Is The Question? Divided We Stand! Or Undivided We Stand!! By Joseph K. McKane SPE, Art Unit 1626

2. 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.

3. Restriction • Brief Background • 1952 Patent Act: 35 USC 121 • Discretionary authority - Director “may” require restriction • Nonelected inventions must be patentablydistinct 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 seriousburden on the examiner (MPEP 803) • In re Joyce, 1958 C.D. 2 (1957) • In re Herrick, 1958 C.D. 1 (1957)

4. 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)

5. 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 andfunctional groups attached to the core or molecule

6. 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)

7. 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)

8. Restriction (Markush Practice) • Markush Language – Ex. “selected from the group consisting of…” or “any of A, B, or C”. • Apply Inre Harnisch test for “unity of invention” • Common utility • Common structural feature disclosed to be essential to the common utility

9. 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.

10. Restriction (Markush Practice) • Markush practice of MPEP 803 applies where unity of invention exists under the Harnischtest • Non-markush restriction practice applies where unity of invention does not exist under the Harnischtest

11. 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.

12. Each slice represents different inventive embodiments Within each slice there are structurally similar groups which passed the Harnisch test Harnisch Lines Lack of Unity

13. 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

14. 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.

15. 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

16. 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.

17. Thank You Happy Halloween!