¶ 8.45 Elected Invention Allowable, Rejoinder of All Previously Withdrawn Claims

Claim [1] allowable. Claim [2 ], previously withdrawn from consideration as a result of a restriction requirement, [3] all the limitations of an allowable claim. Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement [4] inventions [5], as set forth in the Office action mailed on [6], is hereby withdrawn and claim [7] hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.

Examiner Note:

• 1. Where the elected invention is directed to a product and previously nonelected process claims are rejoined, form paragraph 8.43 should be used instead of this paragraph.
• 2. This form paragraph should be used whenever ALL previously withdrawn claims depend from or otherwise require all the limitations of an allowable claim (e.g., a generic claim, linking claim, or subcombination claim) and wherein the non-elected claims have NOT been canceled. Use form paragraph 8.46, 8.47, or 8.47.01 as appropriate where the nonelected claims HAVE BEEN canceled. Use form paragraph 8.50 when the elected invention is allowable and the restriction requirement is withdrawn in part. Use form paragraph 8.49 when the elected invention is allowable and the restriction requirement is maintained without modification.
• 3. In bracket 2, insert the number(s) of the rejoined claim(s) followed by either — is– or — are–.
• 4. In bracket 3 insert– requires– or — require–.
• 5. In bracket 4, insert either –between– or –among–.
• 6. In bracket 5, insert the group(s), species, or subject matter of the invention(s) being rejoined.
• 7. In bracket 7, insert the number(s) of the rejoined claim(s) followed by either –is– or –are–.

¶ 8.49 Elected Invention Allowable, Claims Stand Withdrawn, Restriction Maintained

Claim [1] allowable. The restriction requirement [2], as set forth in the Office action mailed on [3], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is maintained because the nonelected claim(s) do not require all the limitations of an allowable claim.

Examiner Note:

• 1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions. See MPEP §§ 806.05(j) and 821.04(a).
• 2. This form paragraph should be used upon the allowance of a linking claim, generic claim, or subcombination claim when none of the nonelected claims require all the limitations of an allowable claim and wherein the nonelected claims have NOT been canceled. Use form paragraph 8.46, 8.47, or 8.47.01 as appropriate where the nonelected claims HAVE BEEN canceled. Use form paragraph 8.45 when the elected invention is allowable and the restriction requirement is withdrawn in its entirety. Use form paragraph 8.50 when the elected invention is allowable and the restriction requirement is withdrawn in part.
• 3. In bracket 2, insert — between– or –among– followed by identification of the inventions (i.e., groups or species) restricted.
• 4. In bracket 3, insert the date of the restriction requirement being maintained.

¶ 8.50 Elected Invention Allowable, Some Claims No Longer Considered Withdrawn

Claim [1] allowable. The restriction requirement [2], as set forth in the Office action mailed on [3], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [4] is [5]. Claim [6], directed to [7] no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim. However, claim [8], directed to [9] withdrawn from consideration because [10] require all the limitations of an allowable claim.

In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.

Examiner Note:

• 1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions. See MPEP §§ 806.05(j) and 821.04(a).
• 2. This form paragraph should be used upon the allowance of a linking claim, generic claim, or subcombination claim when some, but not all, of the nonelected claims require all the limitations of an allowable claim and wherein the nonelected claims have NOT been canceled. Use form paragraph 8.46, 8.47, or 8.47.01 as appropriate where the nonelected claims HAVE BEEN canceled. Use form paragraph 8.45 when the elected invention is allowable and the restriction requirement is withdrawn in its entirety. Use form paragraph 8.49 when the elected invention is allowable and the restriction requirement is maintained without modification.
• 3. In bracket 2, insert — between– or –among– followed by identification of the inventions (i.e., groups or species) restricted.
• 4. In bracket 4, insert the date of the restriction requirement being fully or partially withdrawn.
• 5. In bracket 5, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.
• 6. In bracket 7, insert the subject matter of the claimed invention or species being rejoined followed by either — is– or — are–.
• 7. In bracket 9, insert the subject matter of the claimed invention or species not being rejoined followed by — remains– or –remain–.
• 8. In bracket 10, insert –it does not– or –they do not all–.
• 9. If all of the claims are in proper form, i.e., they include all the limitations of an allowable claim, one of form paragraphs 8.45, 8.46 or 8.47must be used.

¶ 8.46 Elected Invention Allowable, Non-elected Claims Canceled, Other Issues Remain Outstanding

Claim [1] allowable. The restriction requirement [2] inventions [3], as set forth in the Office action mailed on [4], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [5] is [6]. Claim [7], which required all the limitations of an allowable claim, previously withdrawn from consideration as a result of the restriction requirement, [8] canceled by applicant in the reply filed on [9]. The canceled, nonelected claim(s) may be reinstated by applicant if submitted in a timely filed amendment in reply to this action. Upon entry of the amendment, such amended claim(s) will be examined for patentability under 37 CFR 1.104.

In view of the withdrawal of the restriction requirement as set forth above, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.

Examiner Note:

• 1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions. See MPEP §§ 806.05(j) and 821.04(a).
• 2. This form paragraph (or form paragraph 8.47 or 8.47.01) must be used upon the allowance of a linking claim, generic claim, or subcombination claim following a restriction requirement with at least one of these claim types present and wherein the non-elected claims requiring all the limitations of an allowable claim HAVE BEEN canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled and all previously withdrawn claims are rejoined. Use form paragraph 8.50 when the elected invention is allowable and the restriction requirement is withdrawn in part.
• 3. If no issues remain outstanding and application is otherwise ready for allowance, use form paragraph 8.47 or 8.47.01 instead of this form paragraph.
• 4. In bracket 2, insert either –between– or –among–.
• 5. In bracket 3, insert the group(s), species, or subject matter of the invention(s) that were restricted.
• 6. In bracket 5, insert the date of the restriction requirement being fully or partially withdrawn.
• 7. In bracket 6, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.
• 8. In bracket 7, insert the number of each claim that required all the limitations of an allowable claim but was canceled as a result of the restriction requirement.
• 9. In bracket 8, insert either –was– or –were–.

¶ 8.47 Elected Invention Allowable, Non-elected Claims Canceled, Before Final Rejection, No Outstanding Issues Remaining

Claim [1] allowable. The restriction requirement [2] inventions [3], as set forth in the Office action mailed on [4], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [5] is [6]. Claim [7], which required all the limitations of an allowable claim, previously withdrawn from consideration as a result of the restriction requirement, [8] canceled by applicant in the reply filed on [9]. The canceled, nonelected claim(s) may be reinstated by applicant if submitted in an amendment, limited to the addition of such claim(s), filed within a time period of TWO MONTHS from the mailing date of this letter. Upon entry of the amendment, such amended claim(s) will be examined for patentability under 37 CFR 1.104. If NO such amendment is submitted within the set time period, the application will be passed to issue. PROSECUTION ON THE MERITS IS OTHERWISE CLOSED.

In view of the withdrawal of the restriction requirement as to the linked inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.

Examiner Note:

• 1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions and the application has not been finally rejected. See MPEP §§ 806.05(j) and 821.04(a). After final rejection, use form paragraph 8.47.01 instead of this form paragraph.
• 2. This form paragraph (or form paragraph 8.46 or 8.47.01) must be used upon the allowance of a linking claim, generic claim, or subcombination claim following a restriction requirement with at least one of these claim types present and wherein the non-elected claims requiring all the limitations of an allowable claim HAVE BEEN canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled and all previously withdrawn claims are rejoined. Use form paragraph 8.50 when the elected invention is allowable and the restriction requirement is withdrawn in part.
• 3. This form paragraph should be used only when there are no outstanding issues remaining and is to be used with only a PTO-90C cover sheet.
• 4. In bracket 2, insert either –between– or –among–.
• 5. In bracket 3, insert the group(s), species, or subject matter of the invention(s) that were restricted.
• 6. In bracket 5, insert the date of the restriction requirement being fully or partially withdrawn.
• 7. In bracket 6, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.
• 8. In bracket 7, insert the number of each claim that required all the limitations of an allowable claim but was canceled as a result of the restriction requirement.
• 9. In bracket 8, insert either –was– or –were–.

¶ 8.47.01 Elected Invention Allowable, Non-elected Claims Canceled, After Final Rejection, No Outstanding Issues Remaining

Claim [1] allowable. The restriction requirement [2] inventions [3], as set forth in the Office action mailed on [4], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [5] is [6]. In view of the withdrawal of the restriction requirement as set forth above, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.

Examiner Note:

• 1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions and the application has been finally rejected. See MPEP §§ 806.05(j) and 821.04(a). Before final rejection, use form paragraph 8.47 instead of this form paragraph.
• 2. This form paragraph (or form paragraph 8.46) must be used upon the allowance of a linking claim, generic claim, or subcombination claim following a restriction requirement with at least one of these claim types present and wherein the non-elected claims requiring all the limitations of an allowable claim HAVE BEEN canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled and all previously withdrawn claims are rejoined. Use form paragraph 8.50 when the elected invention is allowable and the restriction requirement is withdrawn in part.
• 3. This form paragraph should be used only when there are no outstanding issues remaining and is to be used with only a PTO-90C cover sheet.
• 4. In bracket 2, insert either –between– or –among–.
• 5. In bracket 3, insert the group(s), species, or subject matter of the invention(s) that were restricted.
• 6. In bracket 5, insert the date of the restriction requirement being fully or partially withdrawn.
• 7. In bracket 6, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.

¶ 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.