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Restriction Practice for Genus Claims Species Claims Linking Claims and Ten Sequence Waiver.

West Coast 10 22 07. 2. Objectives Part 1:Basis for Requiring RestrictionBurdenDistinctness, Emphasis on ?Mutually Exclusive"Genus ClaimsSpecies ClaimsPart 2:Overview of 27 March 2007 OG NoticeOne Sequence per Application?Linking Claims. West Coast 10 22 07. 3. 35 U.S.C. 101. ?Whoever invents or discovers any new and useful process, machine, manufacture, composition of matter, or any new and useful improvement thereof, may obtain a patent therefor,?".

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Restriction Practice for Genus Claims Species Claims Linking Claims and Ten Sequence Waiver.

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    1. Restriction Practice for Genus Claims Species Claims Linking Claims and Ten Sequence Waiver. Julie Burke TC1600 QAS/Program Manager 571-272-0512 julie.burke@USPTO.gov

    2. West Coast 10 22 07 2

    3. West Coast 10 22 07 3 35 U.S.C. 101 “Whoever invents or discovers any new and useful process, machine, manufacture, composition of matter, or any new and useful improvement thereof, may obtain a patent therefor,…”

    4. West Coast 10 22 07 4

    5. West Coast 10 22 07 5 What is a Genus or Generic claim? A claim that encompasses two or more disclosed embodiments (species) within its scope is considered to be a generic or genus claim. Two types of generic claims are- those which use alternative language to enumerate species, i.e., Markush claims Alternatives may be “selected from the group consisting of A, B and C” or listed as “A, B or C” those which use do not use alternative language; instead they describe the genus using generic terminology See MPEP 806.04(d) and 806.04(e) for further definition.

    6. West Coast 10 22 07 6 Three Ways to Claim a Genus 1. Encompassed by a generic claim that does not use alternative language; the claim which reads upon but is not necessarily limited to plural species disclosed in the specification. Claim 1. A citrus fruit. 2. As a Markush claim listing plural species Claim 2. A citrus fruit selected from the group consisting of an orange or a lemon. 3. As a series of single species claims Claim 3. An orange. Claim 4. A lemon.

    7. West Coast 10 22 07 7 When is a Generic Claim a Linking Claim? When separate species claims are encompassed by a generic claim, the generic claim is one kind of “linking claim.” Claim 1. A citrus fruit. (generic linking claim) Claim 2. An orange. (separate species claim) Claim 3. A lemon. (separate species claim) Stay tuned for more on linking claims….

    8. West Coast 10 22 07 8 What are Species? Species are always specifically different embodiments of an invention. Species typically are disclosed as examples or figures in the specification. Stay tuned for more on species…. MPEP 806.04(e).

    9. West Coast 10 22 07 9 Basic Restriction Guidelines Every restriction requirement has two criteria: The inventions, as claimed, must be independent or distinct and There would be a serious burden on the examiner if restriction were not required. MPEP 803, subsection I

    10. West Coast 10 22 07 10 What is “Serious Burden”? Basically, the search and examination for one of the claimed inventions is not required for another of the claimed inventions.

    11. West Coast 10 22 07 11 Showing Serious Burden Reasons must be provided why a serious burden would exist if restriction were not required. A serious burden may be prima facie shown if one or more of the following reasons apply - that the inventions have: (a) separate classification (b) separate status in the art (c) a different field of search (as defined in MPEP 808.02) (d) if the prior art applicable to one invention would likely not be applicable to another invention, (e) the inventions are likely to raise different non-prior art issues under 35 USC 101 and/or 35 USC 112, ¶ 1. MPEP 803, 808.02

    12. West Coast 10 22 07 12 Showing Serious Burden (cont.) Serious burden may be established based on a different field of search if it is necessary to search for one of the inventions in a manner not likely to result in finding art pertinent to the other invention(s), e.g., searching different classes/subclasses searching different electronic resources employing different search queries MPEP 808.02

    13. West Coast 10 22 07 13 Responding to applicant’s traversal re: burden Where the initial requirement is traversed, it should be reconsidered. If, upon reconsideration, the examiner is still of the opinion that restriction is proper, it should be repeated and made 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. MPEP 821.01

    14. West Coast 10 22 07 14 When is Restriction Not an Option? If the search and examination of all the claims in an application can be made without serious burden, the examiner must examine all of the claims on the merits, even if the claims are drawn to independent or distinct inventions. If there is an express admission that the claimed inventions are obvious over each other within the meaning of 35 U.S.C. 103, restriction should not be required. MPEP section 803

    15. West Coast 10 22 07 15 Obvious variants are not distinct inventions Distinctness between related inventions requires that at least one invention would not have been obvious over the other (i.e., that the inventions are not obvious variants). If the claims on their face are obvious over each other, restriction is not proper. For example of obvious variants, the application claims a method of connecting two parts together. In one embodiment, the method requires a screw. In a second embodiment, the method requires a nail. The examiner should group together embodiments considered clearly unpatentable over each other; see MPEP 806.04(h).

    16. West Coast 10 22 07 16 Basic Restriction Guidelines Every restriction requirement has two criteria: The inventions, as claimed, must be independent or distinct and There would be a serious burden on the examiner if restriction were not required. MPEP 803, subsection I

    17. West Coast 10 22 07 17 Importance of Distinction

    18. West Coast 10 22 07 18 Compare Claimed Subject Matter

    19. West Coast 10 22 07 19 Test for Distinctness Between Related Products or Between Related Processes Test: each invention as claimed requires a mutually exclusive characteristic not required for the other invention; AND the inventions as claimed are not obvious variants MPEP 806.05(j); FP 8.14.01

    20. West Coast 10 22 07 20 Test for Distinctness Between Species Species are distinct when: each species, as claimed, requires a mutually exclusive characteristic not required for the other species AND the species, as claimed, are not obvious variants of each other MPEP 806.04(f) FP 8.01 and 8.02

    21. West Coast 10 22 07 21 Two Species must be Mutually Exclusive of each other

    22. West Coast 10 22 07 22 What does “Mutually Exclusive” Mean?

    23. West Coast 10 22 07 23 Explaining “mutually exclusive” in terms of the Infringement Test

    24. West Coast 10 22 07 24

    25. West Coast 10 22 07 25

    26. West Coast 10 22 07 26 Test for Distinctness Between Species Species are distinct when: each species, as claimed, requires a mutually exclusive characteristic not required for the other species AND the species, as claimed, are not obvious variants of each other MPEP 806.04(f) FP 8.01 and 8.02

    27. West Coast 10 22 07 27 In other words: Species/inventions are distinct in terms of restriction when: Each species/invention, as claimed, does not anticipate another under 35 USC 102 AND each species/invention, as claimed, is not obvious over another under 35 USC 103(a)*

    28. West Coast 10 22 07 28 Example I: Inventions are distinct as claimed.

    29. West Coast 10 22 07 29 Claims Define Same Essential Features of a Single Disclosed Embodiment

    30. West Coast 10 22 07 30 Example II: Claims use different limitations to describe a single disclosed embodiment

    31. West Coast 10 22 07 31 Example III: Claims use different limitations to describe a single disclosed embodiment.

    32. West Coast 10 22 07 32 Example IV: Claims use different limitations to describe the single disclosed embodiment invention.

    33. West Coast 10 22 07 33 Example V: Claims encompass a single disclosed embodiment.

    34. West Coast 10 22 07 34 Example VI: Inventions not distinct as claimed. Claims vary in breath or scope of definition.

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    37. West Coast 10 22 07 37

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    43. West Coast 10 22 07 43

    44. West Coast 10 22 07 44

    45. West Coast 10 22 07 45 One Sequence per Application?

    46. West Coast 10 22 07 46 Open Transitional Language

    47. West Coast 10 22 07 47 Closed Transitional Language

    48. West Coast 10 22 07 48 Example VII: When sequences fully overlap.

    49. West Coast 10 22 07 49 Example VII: When sequences fully overlap. (cont.)

    50. West Coast 10 22 07 50 Example VII: When sequences fully overlap. (cont.)

    51. West Coast 10 22 07 51 Effect of Claim Format

    52. West Coast 10 22 07 52 Example VIII: A Combination Claim

    53. West Coast 10 22 07 53 Example VIII: A Combination Claim (cont.)

    54. West Coast 10 22 07 54 Example IX: A single SEQ ID NO: may encompass two or more species.

    55. West Coast 10 22 07 55 A Partial List of Nucleotide Symbols

    56. West Coast 10 22 07 56 Example IX: A single SEQ ID NO: may encompass two or more species (cont.)

    57. West Coast 10 22 07 57 Linking Claims Definition: A linking claim is a claim which, if allowable, would prevent restriction between two or more otherwise properly divisible (restrictable) inventions. MPEP 809 and 809.03. Linking claims and linked inventions are usually either product claims linking properly divisible product inventions, or process claims linking properly divisible process inventions. Most kinds of Linking claims are Genus claims linking species claims Subcombination claims linking plural combinations that require the subcombination. Restriction can be required when there are linking claims and claims to distinct inventions. If a linked invention is elected, the linking claims are examined with the elected invention.

    58. West Coast 10 22 07 58 Example X: Distinct Inventions encompassed by a linking claim.

    59. West Coast 10 22 07 59 Allowable Linking Claims When a linking claim is allowable, a restriction requirement between the inventions it links cannot be maintained. The restriction requirement should be withdrawn, even if claims to non-elected linked inventions have been canceled. Any claim(s) depending from or otherwise requiring all the limitations of the allowable linking claim(s) will be rejoined and fully examined for patentability. The Office must provide Applicant with an opportunity to reinstate canceled claims when a restriction requirement is withdrawn based on the allowability of the linking claim. MPEP 809.03 and 821.04(a)

    60. West Coast 10 22 07 60 Dependent Claims that refer to the linked inventions in the alternative are not linking claims

    61. West Coast 10 22 07 61 Example XI: A claim that depends upon, but does not link, plural distinct inventions.

    62. West Coast 10 22 07 62 Example XI: A claim that depends upon, but does not link, distinct inventions. (cont.)

    63. West Coast 10 22 07 63

    64. Restriction Practice for Genus Claims Species Claims Linking Claims and 10 Sequence Waiver Julie Burke TC1600 QAS/Program Manager 571-272-0512 julie.burke@USPTO.gov

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