MPEP Section 806.04(h), Species Must Be Patentably Distinct From Each Other

Executive summary:

This document contains Section 806.04(h) ("Species Must Be Patentably Distinct From Each Other") of the Manual of Patent Examining Procedure (the "M.P.E.P."), Eighth Edition, Eighth Revision (July 2010). This page was last updated in January 2011. You may return to the section index to find a particular section. Alternatively, you may search the MPEP using the search box that appears on the left side of every page of BitLaw--you may restrict your search to the MPEP on the search results page.

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806.04(h) Species Must Be Patentably Distinct From Each Other [R-3]

In making a requirement for restriction in an application claiming plural species, the examiner should group together species considered clearly unpatentable over each other **.

Where generic claims are **>allowable<, applicant may claim in the same application additional species as provided by 37 CFR 1.141. >See MPEP § 806.04. Where an applicant files a divisional application claiming a species previously claimed but nonelected in the parent case pursuant to and consonant with a requirement to restrict a double patenting rejection of the species claim(s) would be prohibited under 35 U.S.C. 121. See MPEP § 821.04(a) for rejoinder of species claims when a generic claim is allowable.<

Where, however, ** claims to a different species, or * a species disclosed but not claimed in a parent case as filed and first acted upon by the examiner, >are voluntarily presented in a different application having at least one common inventor or a common assignee (i.e., no requirement for election pertaining to said species was made by the Office)< there should be close investigation to determine **>whether a double patenting rejection would be appropriate<. See MPEP § 804.01 and § 804.02.