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821.01 After Election With Traverse [R-3] - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
821.01 After Election With Traverse [R-3]
Where the initial requirement is traversed, it should be reconsidered. If, upon reconsideration, the examiner is still of the opinion that restriction is proper, it should be repeated and made final in the next Office action. (See MPEP § 803.01.) In doing so, the examiner should reply to the reasons or arguments advanced by applicant in the traverse. Form paragraph 8.25 should be used to make a restriction requirement final.
**>¶ 8.25 Answer to Arguments With Traverse
Applicant's election with traverse of [1] in the reply filed on [2] is acknowledged. The traversal is on the ground(s) that [3]. This is not found persuasive because [4].
The requirement is still deemed proper and is therefore made FINAL.
Examiner Note
1. In bracket 1, insert the invention elected.
2. In bracket 3, insert in summary form, the ground(s) on which traversal is based.
3. In bracket 4, insert the reasons why the traversal was not found to be persuasive.
<If the examiner, upon reconsideration, is of the opinion that the requirement for restriction is improper >in whole or in part<, he or she should >clearly< state in the next Office action that the requirement for restriction is withdrawn **>in whole or in part, specify which groups have been rejoined, and give an action on the merits of all the claims directed to the elected invention and any invention rejoined with the elected invention<.
If the requirement is repeated and made final, in that and in each subsequent action, the claims to the nonelected invention should be treated by using form paragraph 8.05.
**>¶ 8.05 Claims Stand Withdrawn With Traverse
Claim [1] withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected [2], there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on [3].
Examiner Note
In bracket 2, insert --invention-- or --species--.
<This will show that applicant has retained the right to petition from the requirement under 37 CFR 1.144. (See MPEP § 818.03(c).)
When the *>application< is otherwise **>in condition for allowance<, and has not received a final action, the examiner should **>notify applicant of his or her options< using form paragraph 8.03.
**>¶ 8.03 In Condition for Allowance, Non-elected Claims Withdrawn with Traverse
This application is in condition for allowance except for the presence of claim [1] directed to an invention non-elected with traverse in the reply filed on [2]. Applicant is given ONE MONTH or THIRTY DAYS from the date of this letter, whichever is longer, to cancel the noted claims or take other appropriate action ( 37 CFR 1.144). Failure to take action during this period will be treated as authorization to cancel the noted claims by Examiner's Amendment and pass the case to issue. Extensions of time under 37 CFR 1.136(a) will not be permitted since this application will be passed to issue.
The prosecution of this case is closed except for consideration of the above matter.
See also MPEP § 821.04 - § 821.04(b) for rejoinder of certain nonelected inventions when the claims to the elected invention are allowable.<
When preparing a final action in an application where there has been a traversal of a requirement for restriction, the examiner should indicate in the Office action that a complete reply must include cancellation of the claims drawn to the nonelected invention, or other appropriate action ( 37 CFR 1.144). See form paragraph 8.24.
**>¶ 8.24 Reply to Final Must Include Cancellation of Claims Non-elected with Traverse
This application contains claim [1] drawn to an invention nonelected with traverse in the reply filed on [2]. A complete reply to the final rejection must include cancellation of nonelected claims or other appropriate action ( 37 CFR 1.144). See MPEP § 821.01.
Examiner Note
For use in FINAL rejections of applications containing claims drawn to an invention non-elected with traverse.
<Where a reply to a final action has otherwise placed the application in condition for allowance, the failure to cancel claims drawn to the nonelected *>invention(s) not eligible for rejoinder< or to take appropriate action will be construed as authorization to cancel these claims by examiner's amendment and pass the application to issue after the expiration of the period for reply.
Note that the petition under 37 CFR 1.144 must be filed not later than appeal. This is construed to mean appeal to the Board of Patent Appeals and Interferences. If the application is ready for allowance after appeal and no petition has been filed, the examiner should simply cancel * nonelected claims >that are not eligible for rejoinder< by examiner's amendment, calling attention to the provisions of 37 CFR 1.144.
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