Restriction — When Proper

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 independent (

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 burden, the examiner must examine them on the merits, even though they

include claims to independent or distinct inventions.

I.

CRITERIA FOR RESTRICTION BETWEEN PATENTABLY DISTINCT INVENTIONS

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 search and/or examination burden on the

examiner if restriction is not required (see

MPEP § 803.02

,

§ 808

, and

§ 808.02

).

II.

GUIDELINES

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

, restriction should

not be required.

In re Lee,

199 USPQ 108 (Comm’r Pat. 1978).

For purposes of the initial requirement, a serious search 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

. Similarly, a serious examination burden, for

example, may be

prima facie

shown by appropriate explanation of

non-prior art issues under

35 U.S.C. 101

,

pre-AIA 35 U.S.C.

112

, first paragraph, and/or

35 U.S.C

den 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

. Similarly, a serious examination burden, for

example, may be

prima facie

shown by appropriate explanation of

non-prior art issues under

35 U.S.C. 101

,

pre-AIA 35 U.S.C.

112

, first paragraph, and/or

35 U.S.C.

112(a)

relevant to one invention that are not relevant to the

other invention. A

prima facie

showing of serious search and/or

examination burden may be rebutted by appropriate showings or evidence by the applicant.

Insofar as the criteria for restriction practice relating to Markush claims is

concerned, the criteria is set forth in

MPEP § 803.02

. Insofar as the criteria

for restriction or election practice relating to claims to genus-species, see

MPEP

§ 806.04

-

§ 806.04(i)

and

§ 808.01(a)

.