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

Impermissible shift - which claims are used for comparison?

MPEP 818.02(a) says that in making a determination of whether election by original presentation has occurred, the present claimed should be compared to the "original claims." But this section directs the examiner to 821.03, which in turn cites 37 CFR 1.145, both of which say "previously claimed" instead of "original claims."

 

A distinction can arise because application may have more than one set of amendments (i.e., the original claims can be different from the previous claims). For example, the original claims can be to a genus, and then after the non-final action, can be amended to specify a specie in that genus. If art is found for that specie, and the applicant wishes to claim a different specie, it could be an impermissible shift in the claims if the previously claimed specie is used as the comparison, but not if only the original genus is used. Separately, as a claim becomes longer due to amendments, a new claim that would have been a search burden from the original claim might be okay if the comparison is instead to the previous claims because the previously claimed invention is closer to the new claim.

 

I think the intent is one of: A) only the original claims are used as a point of comparison for any new amendments B) only the last examined claims are used as a point of comparison or C) any sent of claims, original or previous can be used as a point of comparison.

 

Could these two sections be clarified to be consistent?

 

Thanks,

David

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Idea No. 250