821.01 After Election With Traverse [R-07.2015]
Where the initial requirement is traversed, the examiner should reconsider it. If, upon reconsideration, the examiner is still of the opinion that restriction is proper, the examiner should maintain the restriction requirement and make it final in the next Office action. See MPEP § 803.01. In doing so, the examiner should reply to the reasons or arguments advanced by applicant in the traverse. Form paragraph 8.25 should be used to make a restriction requirement final.
¶ 8.25 Answer to Arguments With Traverse
Applicant’s election with traverse of [1] in the reply filed on [2] is acknowledged. The traversal is on the ground(s) that [3]. This is not found persuasive because [4].
The requirement is still deemed proper and is therefore made FINAL.
Examiner Note:
- 1. In bracket 1, insert the invention elected.
- 2. In bracket 3, insert in summary form, the ground(s) on which traversal is based.
- 3. In bracket 4, insert the reasons why the traversal was not found to be persuasive.
If the requirement is made final, the claims to the nonelected invention should be clearly indicated as being withdrawn from consideration. In this situation, the examiner should use form paragraph 8.05.
¶ 8.05 Claims Stand Withdrawn With Traverse
Claim [1] withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected [2], there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on [3].
Examiner Note:
In bracket 2, insert –invention– or –species–.
This form paragraph will show that applicant has retained the right to petition from the requirement under 37 CFR 1.144. See MPEP § 818.01(c).
If the examiner, upon reconsideration, is of the opinion that the requirement for restriction is improper in whole or in part, he or she should clearly state in the next Office action that the requirement for restriction is withdrawn in whole or in part, specify which groups have been reinstated, and give an action on the merits of all the claims directed to the elected invention and any invention reinstated with the elected invention.
When the application is otherwise in condition for allowance, the examiner should contact applicant and advise him or her of his or her options with regard to any pending claims withdrawn from consideration. Alternatively, applicant may be notified using form paragraph 8.03.
¶ 8.03 In Condition for Allowance, Non-elected Claims Withdrawn with Traverse
This application is in condition for allowance except for the presence of claim [1] directed to an invention non-elected with traverse in the reply filed on [2]. Applicant is given TWO MONTHS from the date of this letter to cancel the noted claims or take other appropriate action (37 CFR 1.144). Failure to take action during this period will be treated as authorization to cancel the noted claims by Examiner’s Amendment and pass the case to issue. Extensions of time under 37 CFR 1.136(a) will not be permitted since this application will be passed to issue.
The prosecution of this case is closed except for consideration of the above matter.
See also MPEP § 821.04 for rejoinder of certain nonelected inventions when the claims to the elected invention are allowable.
When preparing a final action in an application where there has been a traversal of a requirement for restriction, the examiner should indicate in the Office action which claims, if any, remain withdrawn from consideration.
Note that the petition under 37 CFR 1.144 must be filed not later than appeal. This is construed to mean on or before the date the notice of appeal is filed. See MPEP § 1204. If the application is ready for allowance on or after the date of the notice of appeal and no petition has been filed, the examiner should simply cancel nonelected claims that are not eligible for rejoinder by examiner’s amendment, calling attention to the provisions of 37 CFR 1.144.