800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting

803.02 Markush Claims

803.03 indicates, in-part:

 

"On the other hand, should the examiner determine that the elected species is allowable, the examination of the Markush-type claim will be extended. If prior art is then found that anticipates or renders obvious the Markush-type claim with respect to a nonelected species, the Markush-type claim shall be rejected and claims to the nonelected species held withdrawn from further consideration. The prior art search, however, will not be extended unnecessarily to cover all nonelected species."

 

Regarding the statement "[I]f prior art is then found that anticipates or renders obvious the Markush-type claim with respect to a nonelected species...", it appears that if the Markush member is rejected under any US Patent Statute (101/112/102/103) "..the Markush claim shall be rejected and claims to the nonelected species held withdrawn from further consideration..." and thus not rejected over grounds of 102 and/or 103 (i.e., 'rejected over prior art' according to the MPEP).

 

This appears to be consistent with the statement "...should the examiner determine that the elected species is allowable..." and appears to be embodied within the crux of 803.02; i.e., if a non-elected species of a Markush group is selected for examination and is properly rejected under any US Statute, the species is thus not allowable. It does not appear appropriate that the examiner must subject said species to a rejection (under, e.g., 101) and then continue to search and examine additional species until prior art is applicable to one of the species.

 

Therefore, to be consistent, if applicable, it is my opinion that this statement could be changed to:

 

"..claim will be extended to another species of the Markush-type claim which was previously non-elected. If the newly chosen species of the Markush- claim is then rejected, the nonelected species are held withdrawn from further consideration...."

 

(or something similar)

 

Thank you for your consideration.

 

PL

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Idea No. 180