[Federal Register Volume 75, Number 113 (Monday, June 14, 2010)]
[Notices]
[Pages 33584-33587]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-14136]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No.: PTO-P-2010-0030]


Request for Comments on Proposed Changes to Restriction Practice 
in Patent Applications

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.

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SUMMARY: In situations in which two or more independent and distinct 
inventions are claimed in a single patent application, the United 
States Patent and Trademark Office (Office) is authorized by the patent 
laws and implementing regulations to require the applicant to restrict 
the application to one invention. The practice for requiring an 
applicant to restrict an application to one invention in such 
situations is known as restriction practice. The Office is considering 
changes to restriction practice to improve the quality and consistency 
of restriction requirements made by Office personnel.
    Comment Deadline Date: Written comments must be received on or 
before August 13, 2010. No public hearing will be held.

ADDRESSES: Written comments should be sent by electronic mail message 
over the Internet addressed to [email protected]. 
Comments may also be submitted by mail addressed to: Mail Stop 
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, 
VA 22313-1450, marked to the attention of Linda S. Therkorn. Although 
comments may be submitted by mail, the Office prefers to receive 
comments via the Internet.
    The written comments will be available for public inspection at the

[[Page 33585]]

Office of the Commissioner for Patents, located in Madison East, Tenth 
Floor, 600 Dulany Street, Alexandria, Virginia, and will be available 
via the Office's Internet Web site (address: http://www.uspto.gov). 
Because comments will be made available for public inspection, 
information that is not desired to be made public, such as an address 
or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Linda S. Therkorn, Office of the 
Associate Commissioner for Patent Examination Policy, directly by 
telephone to (571) 272-7837, or by mail addressed to: Mail Stop 
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, 
VA 22313-1450.

SUPPLEMENTARY INFORMATION: The Office is authorized by the patent laws 
(35 U.S.C. 121) and regulations (37 CFR 1.141 et seq.) to require an 
applicant to restrict an application to one invention if two or more 
independent and distinct inventions are claimed in the application. 
Chapter 800 of the Manual of Patent Examining Procedure (MPEP) sets 
forth the Office's practices for reviewing applications for restriction 
purposes. The Office is considering revising restriction practice to 
improve the quality and consistency of restriction requirements.
    The Office is seeking suggestions from the public regarding 
possible changes to restriction practice because this is a significant 
area of concern for the Office, applicants, and the public. Thus, the 
Office is soliciting comments from the public concerning several 
aspects of restriction practice. First, the Office is asking for 
comments on what should be included in an Office action that sets forth 
a restriction requirement. Second, because unwarranted restriction 
requirements can result in delays in prosecution, expenditure of excess 
claim fees, and/or the need to file multiple divisional applications, 
the Office is inviting suggestions from the public as to how to improve 
the process for traversing or requesting reconsideration of a 
restriction requirement to achieve more consistent, accurate, timely, 
and cost-effective review. Third, the Office is aware that restriction 
requirements between related product inventions or related process 
inventions have been problematic, and thus is inviting public comments 
on the changes under consideration to clarify what is necessary in 
order to restrict between such inventions. Fourth, the Office is also 
considering some changes with regard to restrictions involving claims 
with Markush groupings, and invites public comment on these changes as 
well as any other suggestions regarding the treatment of Markush 
claims. Fifth, the Office is considering changes to rejoinder practice 
in an effort to simplify what claimed inventions would be eligible for 
rejoinder upon the determination that all elected claims are allowable, 
and invites public comments on these changes. Finally, the Office 
invites comments specifically pointing out other areas in which 
restriction practice could be improved.
    The Office has previously recognized the need to consider changes 
to restriction practice. Pursuant to the Office's 21st Century 
Strategic Plan, the Office sought public comment on a number of issues 
to help guide the scope and content of a study of changes that would be 
needed to implement a Patent Cooperation Treaty (PCT) style ``Unity of 
Invention'' standard in the United States. See Notice of Availability 
of and Request for Comments on Green Paper Concerning Restriction 
Practice, 70 FR 32761 (June 6, 2005). The public comments suggested 
broadening the scope of the study beyond just a PCT-style Unity of 
Invention standard in an effort to determine the best practice for 
restriction. Based on the public comments, the Office identified four 
options for modifying restriction practice. The Office studied the ease 
of implementation and workload/pendency impacts of these four options 
in an effort to achieve an appropriate balance between the priorities 
of the USPTO user community and limited USPTO resources. However, after 
reviewing the business case analyses, the Office determined that none 
of the options would satisfactorily achieve the desired balance.
    Thereafter, as part of its ongoing efforts to enhance patent 
quality and reduce pendency in accordance with the 21st Century 
Strategic Plan, the Office published a notice proposing to change 
certain rules of practice pertaining to claims that use Markush or 
other alternative language and requested public comment on the proposed 
changes to the rules of practice. See Examination of Patent 
Applications That Include Claims Containing Alternative Language, 72 FR 
44992 (Aug. 10, 2007), 1322 Off. Gaz. Pat. Office 22 (Sept. 4, 2007). 
The Office is not issuing a final rule based upon the changes proposed 
in that previous rule making notice. The Office is instead publishing 
this notice to seek input from the public concerning restriction 
practice.
    As discussed previously, the Office is considering changes to 
Office practice and policy with regard to restriction requirements. The 
Office is requesting public input on restriction practice. The Office 
is not presently proposing any changes to the rules pertaining to 
restriction practice, and this notice is not a notice of proposed rule 
making.
    1. What should be included in an Office action that sets forth a 
restriction requirement? The MPEP currently explains that two criteria 
must be met to require restriction between patentably distinct 
inventions, i.e., the inventions must be independent or distinct as 
claimed, and there must be a serious burden on the examiner if 
restriction is not required. See MPEP Sec.  803. The Office is 
considering clarifying the MPEP to indicate that a restriction 
requirement (including an election of species requirement) must always 
set forth the reasons why the inventions are independent or distinct 
and why there would be a serious burden in the absence of a restriction 
requirement.
    The Office is considering changes to the burden requirement, an 
area fundamental to restriction practice. The rationales set forth in 
the current MPEP to support the burden prong are based on the prior art 
search (i.e., the inventions have acquired a separate status in the art 
in view of their different classification; the inventions have acquired 
a separate status in the art due to their recognized divergent subject 
matter; and the inventions require a different field of search (for 
example, searching different classes/subclasses or electronic 
resources, or employing different search queries)). See MPEP Sec.  
808.02. The Office is considering whether to revise the MPEP to 
indicate that there would be a serious burden if restriction is not 
required when the prior art applicable to one invention would not 
likely be applicable to another invention (e.g., because of a different 
field of art or different effective filing date).
    The Office is also considering whether to revise the MPEP to 
specify that ``a serious burden on the examiner'' encompasses search 
burden and/or examination burden. Typically, the burden prong has been 
viewed as referring to the burden imposed by searching for patentably 
distinct inventions. However, the determination of whether a claimed 
invention is allowable requires both a search of the prior art and an 
examination of the application to determine whether the claimed 
invention meets the statutory requirements for patentability. The 
burden imposed by the examination of patentably distinct inventions is, 
in many cases, as serious as the burden imposed by searching for such 
inventions. Therefore, the Office is considering explaining that in 
addition

[[Page 33586]]

to the rationales currently set forth in the MPEP, a serious burden in 
support of a restriction requirement may be based on the rationale that 
the inventions are likely to raise different non-prior art issues under 
35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph. In this situation, 
a serious search burden and/or examination burden may exist where 
issues relevant to one invention are not relevant to the other 
invention.
    The MPEP currently provides for election of species practice when 
an application includes a generic claim along with separate claims to 
different species that fall within the scope of that generic claim and 
that may be patentably distinct. See MPEP Sec.  806.04. The Office is 
considering revising the MPEP to indicate that in setting forth the 
species from which an applicant is required to elect, the examiner 
should group together species that are not patentably distinct from 
each other, the examiner should require election of either a single 
species or a single grouping of patentably indistinct species, and the 
applicant should not be required to elect a specific species within a 
grouping of patentably indistinct species.
    2. What practice changes would result in more effective ways to 
seek higher level review of restriction requirements? In various 
forums, members of the public have expressed overall dissatisfaction 
with the effectiveness of traversing or requesting reconsideration of 
requirements for restriction. Unwarranted restriction requirements can 
result in delays in prosecution, expenditure of excess claim fees, and/
or the need to file multiple divisional applications to avoid 
dedication of unclaimed subject matter to the public. The Office 
invites suggestions from the public as to how to improve the traversal 
or request for reconsideration process within the framework of the 
current rules (see 37 CFR 1.143 and 1.144) to achieve more consistent, 
accurate, timely, and cost-effective review.
    3. How could the Office clarify requirements for restriction 
between related product inventions or related process inventions where 
the relationship is not specifically provided for in MPEP Chapter 800? 
The Office is considering providing for a new section in the MPEP to 
address restriction between related product inventions or related 
process inventions not otherwise provided for in MPEP Sec. Sec.  806 
through 806.05(j). See, e.g., MPEP Sec.  806.04 et seq. for restricting 
between inventions in a genus/species relationship; MPEP Sec.  
806.05(c) for an explanation of the requirements to restrict between 
inventions in a combination/subcombination relationship; MPEP Sec.  
806.05(d) for restricting between subcombinations disclosed as usable 
together; and MPEP Sec.  806.05(j) for restricting between an 
intermediate and a final product. Specifically, the Office is 
considering explaining that to support a requirement for restriction 
between two or more related product inventions, or between two or more 
related process inventions, that are not otherwise provided for in MPEP 
Sec. Sec.  806 through 806.05(j), there must be two-way distinctness 
(see MPEP Sec.  802.01) and a serious burden if restriction were not 
required. The Office is considering explaining that for such related 
product inventions or such related process inventions, the inventions 
are distinct if: (1) The inventions as claimed have mutually exclusive 
characteristics (see MPEP Sec. Sec.  806 through 806.05(f)); (2) the 
inventions as claimed are not obvious variants over each other; and (3) 
each invention as claimed can be made by, or used in, a materially 
different process or product. In an effort to reduce the number of 
improper requirements for restriction between related product 
inventions or related process inventions, the Office is considering 
explaining that where claims of an application define the same 
essential characteristics of a single invention, e.g., the claims vary 
from each other only in breadth or scope (ranging from broad to 
detailed), the examiner should not require restriction between such 
claims.
    4. How could the Office modify Markush practice? The Office is 
considering whether to revise Markush practice in three particular 
ways. First, if the examiner determines that the elected species is 
allowable, the Office is considering specifying that the examination of 
the Markush-type claim will be extended to the extent necessary to 
determine the patentability of the claim, i.e., to determine whether 
any nonelected species is unpatentable for any reason (35 U.S.C. 101, 
102, 103, or 112, or nonstatutory double patenting). If a nonelected 
species is determined to be unpatentable, the Markush-type claim would 
be rejected, and the search and examination would not be extended to 
cover all nonelected species.
    Next, the Office is considering revising the treatment of amended 
Markush-type claims to clarify that whether an Office action may be 
made final is determined by whether the conditions in MPEP Sec.  706.07 
for making a second or subsequent Office action final are met and is 
not dependent upon whether the examiner previously required a 
provisional election of species.
    Lastly, the Office is considering situations where restriction may 
be proper between a subcombination and a combination when a 
subcombination sets forth a Markush grouping of alternatives. In 
particular, the Office is referring to a subcombination that (1) 
encompasses two or more subcombination embodiments within its scope, 
and (2) lists those embodiments using Markush-type claim language, 
i.e., lists the embodiments as a group of alternatives from which a 
subcombination embodiment is selected. For example, the Office is 
considering whether restriction would be proper between a 
subcombination claim to an individual DNA molecule selected from a list 
of alternative embodiments and a combination claim to an array 
comprising a plurality of DNA molecules wherein one or more of the DNA 
molecules are selected from the list of alternative embodiments set 
forth in the subcombination claim. In such a situation, the combination 
claim does not require all the elements of any particular claimed 
subcombination to be present in the claimed array.
    Apart from these specific considerations, the Office invites 
suggestions from the public regarding changes to the practice of 
requiring election/restriction of Markush claims in a manner that 
balances the interests of the Office and those of the public in the 
context of the current statutory and regulatory framework.
    5. How could the Office improve rejoinder practice? The Office is 
considering changes to rejoinder practice as part of an effort to 
institute more uniform treatment of claims directed to nonelected 
subject matter upon the determination that all claims to the elected 
invention are allowable. The Office is considering whether to define 
``rejoinder'' as the practice of withdrawing a restriction requirement 
as between some or all groupings of claims and reinstating certain 
claims previously withdrawn from consideration that occurs when the 
following conditions are met: (1) All claims to the elected invention 
are allowable; and (2) it is readily apparent that all claims to one or 
more nonelected inventions are allowable for the same reasons that the 
elected claims are allowable. Claims that meet the second condition for 
rejoinder may include, for example, those that (1) properly depend from 
an allowable elected claim; (2) include all of the limitations of an 
allowable elected claim; or (3) require no further search and/or 
examination. Claims that may not be eligible for rejoinder would 
include, for example, those that require

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additional consideration of the prior art or raise utility, enablement, 
or written description issues not considered during examination of the 
allowable elected claims.
    Separately, the Office is also considering instructing examiners 
that when all claims directed to an elected invention are allowable, 
nonelected claims must be considered for rejoinder and withdrawal of 
the restriction requirement. In making this decision, examiners must 
reevaluate both aspects of the restriction requirement, i.e., whether 
the nonelected invention(s) as now claimed are independent or distinct 
from the claim(s) to the allowable elected invention and whether there 
would be a serious burden if the nonelected inventions were rejoined.
    6. What other areas of restriction practice can the Office improve 
and how? While the Office has set forth particular restriction practice 
issues for which comments are specifically being requested, the Office 
is in this request for comments inviting comments on any area in which 
restriction practice could be improved.

    Dated: May 17, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2010-14136 Filed 6-11-10; 8:45 am]
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