821.03 Claims for Different Invention Added After an Office Action [R-07.2022]

Claims added by amendment following action by the examiner, as explained in MPEP § 818.02(a), and drawn to an invention other than the one previously claimed, should be treated as indicated in 37 CFR 1.145.

37 CFR 1.145  Subsequent presentation of claims for different invention.

If, after an office action on an application, the applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant will be required to restrict the claims to the invention previously claimed if the amendment is entered, subject to reconsideration and review as provided in §§ 1.143 and 1.144.

The action should include form paragraph 8.04.

¶ 8.04 Election by Original Presentation

Newly submitted claim [1] directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: [2]

Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim [3] withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.

To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.

Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.

Examiner Note:

  • 1. In bracket 2, insert the particular reason(s) why the newly submitted claim(s) is/are directed to independent or distinct invention(s).

A complete action on all claims to the elected invention should be given.

If the applicant fails to request reconsideration of the election by original presentation in reply to the Office action containing the requirement, the examiner should treat the application as if the election was made without traverse. See MPEP § 821.02.

If the examiner finds all elected claims allowable following the amendment that added claims drawn to a new invention, the examiner cannot cancel the withdrawn claims without obtaining the applicant’s express authorization. The applicant must be provided the opportunity to seek reconsideration of the election by original presentation. In this situation, the examiner may obtain express authorization to cancel the withdrawn claims via an interview prior to mailing a notice of allowability with an examiner’s amendment canceling the withdrawn claims. If applicant’s express authorization is not obtained, then the examiner should issue an Ex parte Quayle action that requires cancelation of the withdrawn claims. In reply, the applicant can either cancel the withdrawn claims or traverse the election by original presentation requirement. If applicant traverses the election, the examiner must reconsider the election by original presentation and address applicant’s arguments if the election by original presentation is maintained. See MPEP § 821.01.

An amendment canceling all claims drawn to the elected invention and presenting only claims drawn to the nonelected invention should not be entered. Such an amendment is nonresponsive. Applicant should be notified by using form paragraph 8.26. Examiners should take care to correctly designate the issue as a non-responsive amendment, which is not be confused with a notice of non-compliant amendment. Examiners may use a PTOL-90 with form paragraph 8.26 to create a notice of non-responsive amendment. Such Office Action may be designated “Informal or Non-Responsive Amendment After Examiner Action.”

¶ 8.26 Canceled Elected Claims, Non-Responsive

The amendment filed on [1] canceling all claims drawn to the elected invention and presenting only claims drawn to a non-elected invention is non-responsive (MPEP § 821.03) and has not been entered. The remaining claims are not readable on the elected invention because [2].

Since the above-mentioned amendment appears to be a bona fide attempt to reply, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD UNDER 37 CFR 1.136(a) ARE AVAILABLE but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133).

Examiner Note:

  • This form paragraph should not be used for an application filed on or after August 25, 2006 that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102(c)(2) or (d). Form paragraph 8.26.AE should be used instead. See MPEP § 708.02, subsection IX.

The practice set forth in this section is not applicable where a provisional election of a single species or a group of patentably indistinct species was made in accordance with MPEP § 803.02 and applicant amends the claims such that the elected species or group is canceled, or where applicant presents claims that could not have been restricted from the claims drawn to the elected invention had they been presented earlier.