MPEP 821.03
Claims for Different Invention Added After an Office Action

Ninth Edition of the MPEP, Revision 10.2019, Last Revised in June 2020

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821.03    Claims for Different Invention Added After an Office Action [R-10.2019]

Claims added by amendment following action by the examiner, as explained in MPEP § 818.02(a), and drawn to an invention other than the one previously claimed, should be treated as indicated in 37 CFR 1.145.

37 C.F.R. 1.145 Subsequent presentation of claims for different invention.

If, after an office action on an application, the applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant will be required to restrict the claims to the invention previously claimed if the amendment is entered, subject to reconsideration and review as provided in §§ 1.143 and 1.144.

The action should include form paragraph 8.04.

¶ 8.04    Election by Original Presentation

Newly submitted claim [1] directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: [2]

Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim [3] withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.

A complete action on all claims to the elected invention should be given.

An amendment canceling all claims drawn to the elected invention and presenting only claims drawn to the nonelected invention should not be entered. Such an amendment is nonresponsive. Applicant should be notified by using form paragraph 8.26.

¶ 8.26    Canceled Elected Claims, Non-Responsive

The amendment filed on [1] canceling all claims drawn to the elected invention and presenting only claims drawn to a non-elected invention is non-responsive (MPEP § 821.03) and has not been entered. The remaining claims are not readable on the elected invention because [2].

Since the above-mentioned amendment appears to be a bona fide attempt to reply, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD UNDER 37 CFR 1.136(a) ARE AVAILABLE but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).

Examiner Note:

This form paragraph should not be used for an application filed on or after August 25, 2006 that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102(c)(2) or (d). Form paragraph 8.26.AE should be used instead. See MPEP § 708.02, subsection IX.

The practice set forth in this section is not applicable where a provisional election of a single species was made in accordance with MPEP § 803.02 and applicant amends the claims such that the elected species is cancelled, or where applicant presents claims that could not have been restricted from the claims drawn to the elected invention had they been presented earlier.