A restriction may occur when a single application claims two or more independent and distinct inventions within it. The PTO requires applicants to "restrict" their application to only one invention. In instances where more than one invention is found in a single application, the applicant may incorporate the extra subject matter into one or more divisional applications which will receive the same filing date as the original application.

Chapter 800 outlines the requirements for a restriction including independence (when the subjects in question are not connected in design, operation or effect) distinctness (when there is a
relationship between the subjects in question, but they are capable of separate manufacture and are patentable over one another), and many other fascinating details concerning the topics of restriction and double patenting.

The topic of restrictions is one of the most complicated areas of the MPEP. Fortunately, this subject is not tested too heavily on the bar exam. However, you may expect a tricky question relating to species, the differences between double patenting and 37 C.F.R. 102/103 rejections, and possibly a question related to the determination of distinctness or independence of claimed inventions.

802 Basis for practice in statute and rules
Definitions:
1. independent inventions:
a. there is no disclosed relationship between the two or more inventions claimed - the inventions are unconnected in design, operation or effect;
b. in other words, the inventions are not dependent
2. distinct inventions:
a. there is a disclosed relationship between the two or more subjects in question, but they are capable of separate manufacture, use or sale as claimed, and are patentable over each other
3. related inventions:
a. two or more inventions are related if they are disclosed as connected by design operation, or effect;
b. in other words, inventions that are not independent are related;
c. related inventions are distinct if the inventions claimed are not connected in design, operation, or effect and when at least one invention is patentable over the other
4. restriction:
a. the practice of requiring an applicant to elect a single claimed invention for examination when two or more independent inventions and/or two or more distinct inventions are claimed in a single application

Divisional applications:
If two or more independent and distinct inventions are claimed in one application, the original application may need to be restricted to one of the inventions. If one of the inventions is made the subject of a divisional application and it complies with the requirements for divisional applications, it will be entitled to the benefit of the filing date of the original application.

35 U.S.C. 121 Divisional applications.
If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. If a divisional application is directed solely to subject matter described and claimed in the original application as filed, the Director may dispense with signing and execution by the inventor. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.

the PTO may make a restriction requirement in a reissue application between claims added in a reissue application and the original patent claims, where the added claims are directed to an invention which is separate and distinct from the invention(s) defined by the original patent claims:
the PTO cannot make a restriction requirement involving only the subject matter of the original patent claims
the original patent claims will be held to be constructively elected

nonelected inventions:
a nonelected invention can be pursued in a divisional application
divisional applications filed as a result of a nonelected invention cannot be rejected on the basis of double patenting

an original application that has not issued as a patent may not be used as a reference
against any divisional application filed as a requirement for restriction
this prohibition does not apply where the divisional application was voluntarily
filed by the applicant and was not in response to an Office requirement for restriction

prohibition of double patenting rejections under 35 U.S.C. 121 will not apply if:
the applicant voluntarily files two or more inventions without a restriction

requirement by the examiner
claims of the different applications are not in agreement with the restriction
requirement made by the examiner since the claims have not been changed in material respects from the claims at the time the requirement was made (i.e., the divisional application filed includes additional claims not consonant in scope to the original claims subject to restriction in the parent)
the restriction requirement was written in a manner which made it clear to the applicant that the requirement was made subject to the nonallowance of generic or other linking claims and such generic or linking claims are subsequently allowed
if a generic or linking claim is allowed, the restriction requirement must be withdrawn

Different invention in a single application:

§ 1.141 Different inventions in one national application.
(a) Two or more independent and distinct inventions may not be claimed in one national application, except that more than one species of an invention, not to exceed a reasonable number, may be specifically claimed in different claims in one national application, provided the application also includes an allowable claim generic to all the claimed species and all the claims to species in excess of one are written in dependent form (§ 1.75) or otherwise include all the limitations of the generic claim.
(b) Where claims to all three categories, product, process of making, and process of use, are included in a national application, a three way requirement for restriction can only be made where the process of making is distinct from the product. If the process of making and the product are not distinct, the process of using may be joined with the claims directed to the product and the process of making the product even though a showing of distinctness between the product and process of using the product can be made.

two or more independent and distinct inventions may not be claimed in one national application
the exception is when more than one species of an invention, not to exceed a reasonable number, may be specifically claimed in different claims in one national application, provided that the application also includes an allowable claim that is generic to all the claimed species and all the claims to species in excess of one are written in dependent form or otherwise include all the limitations of the generic claim

where claims to all three categories; product, process of making and process of use, are included in a national application, a threeway requirement for restriction can only be made where the process of making the product is distinct from the product 'Restriction requirements:

§ 1.142 Requirement for restriction.
(a) If two or more independent and distinct inventions are claimed in a single application, the examiner in an Office action will require the applicant in the reply to that action to elect an invention to which the claims will be restricted, this official action being called a requirement for restriction (also known as a requirement for division). Such requirement will normally be made before any action on the merits; however, it may be made at any time before final action.
(b) Claims to the invention or inventions not elected, if not canceled, are nevertheless withdrawn from further consideration by the examiner by the election, subject however to reinstatement in the event the requirement for restriction is withdrawn or overruled.

if two or more independent and distinct inventions are claimed in a single application, the examiner in his Office action shall require the applicant in his or her response to elect the invention to which the claim(s) shall be restricted
this official action is called a requirement for restriction (also known as a requirement for division)

claims to the invention or inventions not elected, if not canceled, are nevertheless still withdrawn from further consideration by the examiner by the election
however, they are subject to reinstatement in the event that the requirement for restriction is withdrawn or overruled

803 Restriction when proper
There can never be two patents issued for the same invention.

criteria for a restriction between patentably distinct inventions:
the inventions must be independent or distinct as claimed
there must be a serious burden on the examiner to provide proof when a restriction is required

an application will be properly restricted when:
the inventions are able to support separate patents
the inventions are independent or distinct
unity of an invention exists where the compounds included within a Markush group:
share a common utility
share a substantial structural feature disclosed as being essential to that utility

Markush claims may include both independent and distinct inventions. This is true where two or more of the members are so unrelated and diverse that a prior art reference anticipating the claim with respect to one of the members would not render the claim obvious under 35 U.S.C. 103 with respect to the other members.

In applications containing a Markush-type claim that encompasses at least two independent or distinct inventions, the examiner may require a provisional election of a single species prior to examination on the merits

Prosecution after final rejection and restriction:
This is similar to an RCE. The PTO usually doesn't test over this procedure, but you should at least know it exists.

§ 1.129 Transitional procedures for limited examination after final rejection and restriction practice.
(a) An applicant in an application, other than for reissue or a design patent, that has been pending for at least two years as of June 8, 1995, taking into account any reference made in such application to any earlier filed application under 35 U.S.C. 120, 121 and 365(c), is entitled to have a first submission entered and considered on the merits after final rejection under the following circumstances: The Office will consider such a submission, if the first submission and the fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in § 1.17(r). If a subsequent final rejection is made in the application, applicant is entitled to have a second submission entered and considered on the merits after the subsequent final rejection under the following circumstances: The Office will consider such a submission, if the second submission and a second fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application.The finality of the subsequent final rejection is automatically withdrawn upon the timely filing of the submission and payment of the second fee set forth in § 1.17(r). Any submission filed after a final rejection made in an application subsequent to the fee set forth in § 1.17(r) having been twice paid will be treated as set forth in § 1.116. A submission as used in this paragraph includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims or drawings and a new substantive argument or new evidence in support of patentability.
(b) (1) In an application, other than for reissue or a design patent, that has been pending for at least three years as of June 8, 1995, taking into account any reference made in the application to any earlier filed application under 35 U.S.C. 120, 121 and 365(c), no requirement for restriction or for the filing of divisional applications shall be made or maintained in the application after June 8, 1995, except where:
(i) The requirement was first made in the application or any earlier filed application under 35 U.S.C. 120, 121 and 365(c) prior to April 8, 1995;
(ii) The examiner has not made a requirement for restriction in the present or parent application prior to April 8, 1995, due to actions by the applicant; or
(iii) The required fee for examination of each additional invention was not paid.
(2) If the application contains more than one independent and distinct invention and a
requirement for restriction or for the filing of divisional applications cannot be made or
maintained pursuant to this paragraph, applicant will be so notified and given a time period
to:
(i) Elect the invention or inventions to be searched and examined, if no election has been made prior to the notice, and pay the fee set forth in 1.17(s) for each independent and distinct invention claimed in the application in excess of one which applicant elects;
(ii) Confirm an election made prior to the notice and pay the fee set forth in § 1.17(s) for each independent and distinct invention claimed in the application in addition to the one invention which applicant previously elected; or
(iii) File a petition under this section traversing the requirement. If the required petition is filed in a timely manner, the original time period for electing and paying the fee set forth in § 1.17(s) will be deferred and any decision on the petition affirming or modifying the requirement will set a new time period to elect the invention or inventions to be searched and examined and to pay the fee set forth in § 1.17(s) for each independent and distinct invention claimed in the application in excess of one which applicant elects.
(3) The additional inventions for which the required fee has not been paid will be withdrawn from consideration under § 1.142(b). An applicant who desires examination of an invention so withdrawn from consideration can file a divisional application under 35 U.S.C. 121.
(c) The provisions of this section shall not be applicable to any application filed after June 8, 1995.

37 C.F.R. 1.129 allows for more than one independent and distinct invention in some applications pending for more than 3 years:
an applicant will be permitted to have such additional invention(s) examined in an application if:
the application was pending at least 3 years as of June 8, 1995
the parent application cannot have a restriction requirement prior to April 8, 1995 and the required fee must be paid
the applicant has not caused restriction on his/her own actions
an applicant will not be permitted to have such additional invention(s) examined in an application if:
the requirement was made in the application or in an earlier application relied under 35 U.S.C. 120,121, or 365(c) prior to April 8, 1995 no restriction requirement was made with respect to the invention(s) in the application or in an earlier application prior to April 8, 1995, due to actions by the applicant; or
the required fee for examination of each additional invention was not paid

Actions by the applicant:
actions by the applicant may include:
if the applicant abandoned the application and continued to refile the application such that no Office action could be issued in the application
if the applicant requested a suspension of the prosecution under 37 C.F.R. 1.103(a) such that no Office action could be issued in the application a plurality of independent and distinct inventions in the present or parent application, but the applicant delayed presenting the claims to more than one of the disclosed independent and distinct inventions in the present or parent application such that no restriction requirement could be made prior to April 8, 1995if the application contains claims to more than one independent and distinct invention, and no requirement for restriction or for the filing of divisional applications can be made or maintained, the applicant will be notified and given a time period to:
elect the invention or inventions that need to be searched and examined confirm the election made prior to the notice and pay the fee
file a petition

transitional applications:
may be rejoined due to a linking claim

nucleotide sequencing and restriction:
sequences encoding different proteins are structurally distinct chemical compounds and are independent and distinct inventions
a single patent application may contain a reasonable number of nucleotide sequences (normally up to ten depending upon their length)
applications with a combination of nucleotide sequences will not be subject to a restriction requirement
applications with only different combinations of individual nucleotide sequences will be subject to restriction requirements
the identification of any allowable sequence will cause all combinations containing the allowed sequence to be allowed

Nucleotide sequences that encode different proteins are structurally distinct chemical compounds. In most cases, up to 10 independent and distinct nucleotide sequences will be examined in a single application without restriction

804 Definition of double patenting
Double patenting:
1. seeks to prevent the unjustified extension of patent rights beyond the term of a patent;
2. there must be some common relationship of inventorship and/or ownership for double patenting to even be considered;
3. two double patenting rejections:
a. "same invention" type stating that an inventor may obtain a patent (and only one per invention);
b. "nonstatutory-type" primarily intended to prevent prolongation of the patent term by prohibiting. 4. claims in a second patent not patentably distinguishing from the claims in a first patent;
5. nonstatutory double patenting includes rejections based on either a one-way determination of obviousness or a two-way determination of obviousness.

double patenting may be possible:
between two or more pending applications between one or more pending applications in a reexamination proceeding

requirements of a double patenting rejection:
a rejection is not permitted where the claimed subject matter is presented in a divisional application as a result of a restriction requirement made in a parent application under 35 U.S.C. 121:
the key to an allowable basis for double patenting rejections revolves around the third sentence of 35 U.S.C. 121:
"whether a statutory basis exists":
is the same invention being claimed twice?
"whether a nonstatutory basis exists":
to prevent the improper timewise extension of the right to exclude granted by a patent

obvious type nonstatutory double patenting:
is present if any claim in the application defines an invention that is merely an obvious variation of an invention claimed in the patent

two way obviousness:
when the applicant could not have filed the claims in a single application and there is an administrative delay
for example, in designutility cases
double patenting issues may be raised where an applicant has filed both a utility patent application and either an application for a plant patent or one for a design patent or another utility
domination:
domination is when one patent or application "dominates" a second patent or application when the first patent or application has a broad or generic claim which fully encompasses or reads on an invention defined in a narrower or more specific claim in another patent or application
35 U.S.C. 101 prevents two patents from issuing on the same invention even if there is a terminal disclaimer

Disclaimers:
A disclaimer may be used to disclaim or dedicate a part of the patent term. An examiner
may require a disclaimer if a particular claim is found to be the same as a claim in another issued patent. A disclaimer of a portion of a patent's term is necessary to ensure that no claimed invention receives longer than a 20 year term. A statutory disclaimer disclaims the whole term of the claim while a terminal disclaimer just gives up a terminal portion of the term.

§ 1.321 Statutory disclaimers, including terminal disclaimers.
(a) A patentee owning the whole or any sectional interest in a patent may disclaim any complete claim or claims in a patent. In like manner any patentee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted. Such disclaimer is binding upon the grantee and its successors or assigns. A notice of the disclaimer is published in the Official Gazette and attached to the printed copies of the specification. The disclaimer, to be recorded in the Patent and Trademark Office, must:
(1) Be signed by the patentee, or an attorney or agent of record;
(2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation;
(3) State the present extent of patentee's ownership interest in the patent; and
(4) Be accompanied by the fee set forth in § 1.20(d).
(b) An applicant or assignee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of a patent to be granted. Such terminal disclaimer is binding upon the grantee and its successors or assigns. The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:
(1) Be signed:
(i) By the applicant, or
(ii) If there is an assignee of record of an undivided part interest, by the applicant and such assignee, or
(iii) If there is an assignee of record of the entire interest, by such assignee, or
(iv) By an attorney or agent of record;
(2) Specify the portion of the term of the patent being disclaimed;
(3) State the present extent of applicant's or assignee's ownership interest in the patent to be granted; and
(4) Be accompanied by the fee set forth in § 1.20(d).
(c) A terminal disclaimer, when filed to obviate a judicially created double patenting rejection in a patent application or in a reexamination proceeding, must:
(1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;
(2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding; and
(3) Include a provision that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the rejection.

terms:
any patent issuing on a utility or plant application filed on or after June 8, 1995 will expire 20 years from its filing date
if a patent claims the benefit of an earlier filed application, it will expire 20 years from the earliest filing date

Double patenting and 35 U.S.C. 102(e)/103(a):
Rejections over a patent or another application based on double patenting or 35 U.S.C. 103(a) are similar in the sense that both require a comparison of the claimed subject matter with at least part of the content of another patent or application and both may require that an obviousness analysis be made.

double patenting rejections must rely on a comparison within the claims in an issued or to be issued patent:
focus on what is claimed
can be avoided by a restriction requirement

an obviousness rejection based on 35 U.S.C. 102(e)/103(a) relies on a comparison with what is disclosed in the same issued or to be issued patent:
the reference patent is available for all that is disclosed, not just what it
claims
if 102(e), swearing back is possible
if 102(e), the rejection has nothing to do with restriction
can be avoided by filing two applications on the same day or by filing a continuationinpart application
focus on what is disclosed

terminal disclaimers cannot be used to obviate a rejection based on 35 U.S.C. 102(e)/103(a)
however, terminal disclaimers may be used in double patenting rejections

inventors that have assigned their rights to a common assignee can take some measures to avoid having a copending application be prior art under 35 U.S.C. 102(e):
applications can be filed on the same day
copending applications may be merged into a single
continuationinpart application and the parent applications abandoned

35 U.S.C. 103(c):
two inventions will come within the provisions of 35 U.S.C. 103(c) and not double patenting when:
the later invention is not anticipated by the earlier invention under 35 U.S.C. 102
the earlier invention qualifies as prior art against the later invention only under subsection (f) or (g) of 35 U.S.C. 102
the inventions were, at the time the later invention was made, owned by the same person or subject to an obligation of an assignment to the same person

805 Effect of improper joinder in patent
no patent can be held void for the improper joinder of inventions claimed therein

806 Determination of distinctness or independence of claimed inventions
Obviousness type nonstatutory double patenting:
1. is present if any claim in the application defines an invention that is merely an obvious variation of an invention claimed in the patent;
2. requires the rejection of an applications claims when the claimed subject matter is not patentably distinct from the subject matter claimed in a commonly owned patent or a non-commonly owned patent, but subject to a joint research agreement when the issuance of a second patent would provide an unjustified extension of the inventions patent term.

Distinctness or independence:
Where inventions are independent, a restriction to one per patent is usually proper. If the inventions are related as disclosed but are not distinct as claimed, a restriction is never proper.
when the claims of an application define the same essential characteristics of a single disclosed embodiment of an invention, a restriction between the two should never be required
where inventions are related as disclosed but are not distinct as claimed, a restriction is never proper

the requirement to restrict or a rejection on the ground of double patenting depends on whether or not the inventions as claimed are distinct:
if they are distinct, a restriction may be proper
if they are not distinct, a restriction is never proper

if it can be shown that the two or more inventions are in fact independent, the applicant should be required to restrict the claims presented to but one of such independent inventions; for example:
different modes of operation, different functions or different effects are independent
if two inventions within an application consist of a process and an apparatus, and if the apparatus cannot be used to practice the process or any part thereof, they are independent
where species under a genus are independent

Elected species:
an examiner will request the application to select one species for a search when:
the application has a generic (broad) claim and other claims to each one or more than one species
if the broad concepts of the generic claim are allowed, the claims covering a reasonable number of the species will automatically be allowed as well

when only one species is allowed, the nonelected claims must be pursued on divisional applications
linking claims are those claims which belong in one or more inventions or species

a generic claim is one which includes no material limitation in addition to those recited in the species and "must comprehend within the confines of the organizations covered in each of the species"

Intermediates:
if one species is an intermediate product, useful only to make the final product then:
the species are not distinct
restriction of the species is not proper

for example:
species of carbon compounds may be related to each other as intermediate and final products
the intermediate and final product must have a mutually exclusive species relationship and as with all species restrictions, they must be patentably distinct:
the intermediate must be shown to be useful to make other than the final product

Subcombinations:
a gear is defined as a subcombination to a car and bicycle, it is not a generic claim

the two kinds of distinctiveness that must be shown in order to restrict between a combination and a subcombination include those in which the:
combination does not require the particulars of the subcombination
subcombination can be shown to have utility by itself

two different subcombinations usable with each other may each be a species of some common generic invention:
a generic claim may define only an element or subcombination common to the several species

inventions are distinct if:
they do not require the particulars of the subcombination as claimed for patentability
the subcombination can be shown to have utility either by itself or in other and different relations

combination and subcombination inventions are distinct, twoway distinctness must be demonstrated

a restriction is ordinarily not proper between a combination that the examiner holds to be old and unpatentable

Process and apparatus:
a process and an apparatus may be shown to be distinct when the: process as claimed may be practiced on another apparatus
apparatus can be used to practice a materially different process apparatus is not the obvious apparatus for making the product and can be used to
make other products
product claimed can be made by another materially different apparatus

a process of making and a product made by the process can be shown to be distinct inventions if either or both of the following can be shown:
that the process as claimed is not an obvious process of making the product and the process as claimed can be used to make other and different products
that the product as claimed can be made by another and materially different process

an apparatus and a product made by the apparatus can be shown to be distinct inventions if either or both of the following can be shown:
that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make other and different products
that the product as claimed can be made by another and materially different apparatus

Traversed claim practice:
traversing:
when the restriction or rejection is thought to be wrong and is objected to, the applicant must attempt to "traverse" the rejection
an election is required even when a restriction is traversed

traversing is used when trying to get the examiner to change or withdraw a restriction requirement

traversing is not used in connection with responding to Official actions

a traverse must set forth all the objections, it cannot just state that the examiner is wrong and the restriction should be traversed

filing a traverse will maintain the applicant's right to petition after the examiner restricts the restriction requirement

Specifics:

Specifics of double patenting rejections and terminal disclaimers:
if a generic claim is presented after the issuance of a patent claiming one or more species within the scope of the generic claim, the Office may reject the generic claim on the ground of obviousness when the patent and application have at least one common inventor and/or are either commonly assigned/owned or non-commonly assigned/owned, but subject to a joint research agreement.

Double patenting rejections and terminal disclaimers: the examiner can reject the claims filed in a divisional application on the basis of double patenting when there is not a restriction requirement

two species can be allowed after the examiner allows the generic parent claim after searching

method claims which were not filed initially cannot be introduced:
a continuation or divisional must be filed to introduce method claims not initially filed
a restriction can only apply if the methods were mentioned initially

a double patenting rejection is allowable if the inventors are not the same but the patent or application has the same owners

the distinguishment between double patenting rejections of obviousness and same invention type is:
that the same invention type rejections cannot be overcome since the claims being cited are exactly in scope to an existing patent
obviousness type rejections can be overcome by filing a terminal disclaimer

Species:
species may be related under the particular disclosure

species are:
always the specifically different embodiments
usually, but not always independent as disclosed

claims to be restricted to different species must be mutually exclusive

the question of restriction must be determined by both the practice applicable to election of species and the practice applicable to other types of restrictions where inventions as disclosed and claimed are both:
species under a claimed genus
related

no material element additional to those recited in the species claims may be present
the claims must comprehend within its confines the organization covered in each of the species

the claims to the species which may be included in a case in addition to a single species must contain all the limitations of the generic claim

claims restricted to species:
claims may be restricted to a single disclosed embodiment or a claim may include two or more of the disclosed embodiments within the breadth and scope of the definition

one claim recites limitations which under the disclosure are found in a first species, but not in a second, while a second claim recites limitations disclosed only for the second species and not the first

the PTO no longer follows the practice of prohibiting the allowance of generic claims that are presented for the first time after the issuance of a copending application claiming plural species:
instead, the PTO may reject the generic claims on the grounds of
obviousnesstype double patenting
the applicant may overcome such a rejection by filing a terminal disclaimer

808 Reasons for insisting upon restriction
A requirement to restrict has two aspects:
1. the reasons why each invention as claimed is either independent or distinct from the other; and
2. the reasons why there would be a serious burden on the examiner if restriction is not required.

independent:
not connected in design, operation, or effect under the disclosure of the particular application under consideration

species:
an election of species should not be required if the species claimed are considered clearly unpatentable (obvious) over each other

election of species should be required prior to a search on the merits:
in all applications containing claims to a plurality of species with no generic claims
in all applications containing both species claims and generic or Markush claims

809 Claims linking distinct inventions
if the application is ready for issue and there is an allowed generic claim:
the applicant must be advised of the allowance of a generic claim and given a time limit of 1 month (not less than 30 days) to conform all of the claims to the nonelected species to fully embrace an allowed generic claim or the examiner will cancel the claims to each nonconforming species by an examiner's amendment and pass the application to issue

the most common types of linking claims which, if allowed, act to prevent restriction between inventions that can otherwise be shown to be divisible, are:
genus claims linking species claims
a claim to the necessary process of making a product linking proper process and product claims
a claim to "means" for practicing a process linking proper apparatus and process claims; and
a claim to the product linking a process of making and a use (process of using)

810 Action on the merits
A one-month shortened statutory period will be set for reply when a restriction requirement is made without action on the merits.

if an action is given on the merits, it must be given on all the claims

usually, the action on the merits will be denied until after the requirement for restriction is complied with or withdrawn

if the requirement is repeated and made final, the examiner will at the same time act on the claims to the invention elected

811 Time for making requirement
restriction is proper at any stage of prosecution up to the final action, a second requirement may be made when it becomes proper, even though there was a prior requirement with which the applicant complied

818 Election and reply
if an applicant receives a nonfinal Office action containing restriction requirements between two groups of claims, how should the applicant reply to maintain his or her right to petition the Commissioner to review the restriction requirement?

the applicant's reply should distinctly point out the detailed reasons why the applicant believes the examiner errored in requiring a restriction between the two groups and additionally state that the "applicant therefore respectively traverses the restriction requirement and elects Group 2"

The examiner may require an applicant to elect a single species upon later presentation of claims to more than one patentably distinct species.

an applicant cannot as a matter of right, switch inventions by filing an RCE

821 Treatment of claims held to be drawn to nonelected inventions
the examiner should clearly set forth in the Office action the reasons why the claims withdrawn from consideration are not readable on the elected invention
applicant may traverse the requirement and if the requirement for restriction is made final by the examiner, applicant may file a petition under 37 C.F.R. 1.144 for review of the restriction requirement
examiners should no longer make a rejection under 35 U.S.C. 112, 2nd paragraph where there is disagreement between the examiner and applicant as to whether certain claims are readable on the elected invention

rejoinder:
if an applicant elects claims directed to the product, and a product claim is subsequently found allowable, withdrawn process claims which depend from or otherwise include all the limitations of the allowable product claim will be rejoined

where no additional fee is paid, if the elected invention is directed to the product and the claims directed to the product are subsequently found patentable, process claims which either depend from or include all the limitations of the allowable product will be rejoined