Appeal No. 1997-3351
Application 08/490,573
divisional application was filed in response to a requirement for restriction made pursuant to the
authority of ' 121, but not where a divisional application is voluntarily filed by applicant. Indeed, this
distinction is found in the examples of Asituations where the prohibition of double patenting rejections
under 35 U.S.C. ' 121 does not apply@ in the Manual of Patent Examining Procedure (MPEP) '
804.01 (6th ed., Rev. 2, July 1996). The following situation pertains here:
(C) The restriction requirement was written in a manner which made it clear to applicant
that the requirement was made subject to the nonallowance of generic or other linking claims
and such linking claims are subsequently allowed. Therefore, if a generic or linking claim is
subsequently allowed, the restriction requirement should be removed. [Id.; emphasis supplied.]
The practice and procedure for determining the presence of linking claims and requiring restriction
where such claims are present is set forth in MPEP ' 809 (6th ed., Rev. 2, July 1996). This section
provides that A[t]he linking claims must be examined with the invention elected, and should any linking
claim be allowed, rejoinder of the divided inventions must be permitted.@ MPEP ' 809.03 (6th ed.,
Rev. 2, July 1996) provides that where restriction is required between Aclaims to two or more properly
divisible inventions,@ the linking claims must merely be specified, as in Form Paragraph 8.12 (A[c]laim . .
. link(s) . . .invention . . . and . . . .@), and directs applicants to MPEP ' 818.03(d) A[f]or traverse of
rejection of linking claims.@ MPEP ' 818.03(d) (6th ed., Rev. 2, July 1996) provides that A[a] traverse
of the non-allowance of the linking claim is not a traverse of the requirement to restrict@ and notes that
A[i]f the Office allows such a claim, it is bound to withdraw the requirement and to act on all linked
inventions@ (6th ed., Rev. 2, July 1996; see also 7th ed., Rev. 1, Feb. 2000).
We find no practice and procedure outlined in the MPEP (6th ed., Rev. 2, July 1996) at the
time the briefs and answers in this appeal were prepared,which instructs the examiner to write the
restriction requirement Ain a manner which made it clear to applicant that the requirement was made
subject to the nonallowance of generic or other linking claims and such linking claims are subsequently
allowed.@ However, the Form Paragraph 8.12 appearing in the subsequent revision of MPEP ' 809.03
(7th ed., Rev. 2, July 1997) was substantially augmented to provide clear notice to applicants that the
restriction requirement between
the linked inventions is subject to the nonallowance of the linking claim(s) . . . . Upon the
allowance of the linking claim(s), the restriction requirement as to the linked inventions shall be
withdrawn and any claim(s) depending from or otherwise including all the limitations of the
allowable linking claim(s) will be entitled to examination in the instant application. Applicant(s)
are advised that if any such claim(s) depending from or including all the limitations of the
allowable linking claim(s) is/are presented in a continuation or divisional application, the claims
of the continuation or divisional application may be subject to provisional statutory and/or
nonstatutory double patenting rejections over the claims of the instant application. Where a
restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable.
The requirement for restriction pursuant to 35 U.S.C. ' 121 made by the examiner in parent
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