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

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

Submitted by (@dorange)

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., ...more »

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

Submitted by (@patricia.leith)

806.05(d) Subcombinations Usable Together

This section indicates: "Two or more claimed subcombinations, disclosed as usable together in a single combination, and which can be shown to be separately usable, are usually restrictable when the subcombinations do not overlap in scope and are not obvious variants. To support a restriction requirement where applicant separately claims plural subcombinations usable together in a single combination and claims a combination ...more »

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

Submitted by (@patricia.leith)

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respect to a nonelected species, the Markush-type claim shall be rejected and claims to the nonelected species held withdrawn from further consideration. ...more »

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

Submitted by (@patricia.leith)

MPEP 803.04 Nucleotide Sequences

This part of the MPEP does not appear to take into consideration the OG notice published March 27, 2007 which redacts the 'ten sequence rule.' Will the MPEP be amended to include the information in the OG notice? Further, the MPEP does not explicitly discuss amino acid sequence restriction in Chapter 800. It would be very helpful if the MPEP discussed restriction and how it applies specifically to amino acid sequences. ...more »

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