C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 1—RULES OF PRACTICE IN PATENT CASES › Subpart B—National Processing Provisions

37 C.F.R. § 1.141

Different inventions in one national application

Read at: eCFRecfr.gov CornellLII GovInfogovinfo.gov CasesGoogle Scholar

(a) Two or more independent and distinct inventions may not be claimed in one national application, except that more than one species of an invention, not to exceed a reasonable number, may be specifically claimed in different claims in one national application, provided the application also includes an allowable claim generic to all the claimed species and all the claims to species in excess of one are written in dependent form (§ 1.75) or otherwise include all the limitations of the generic claim.

(b) Where claims to all three categories, product, process of making, and process of use, are included in a national application, a three way requirement for restriction can only be made where the process of making is distinct from the product. If the process of making and the product are not distinct, the process of using may be joined with the claims directed to the product and the process of making the product even though a showing of distinctness between the product and process of using the product can be made.

[52 FR 20046, May 28, 1987]
Notes of Decisions
Cited in 11 cases, 1970–2005 · leading case: Alfred H. Faulkner v. Baldwin Piano & Organ Co., 561 F.2d 677 (7th Cir. 1977).
Sort: Relevance Newest Treatment
Alfred H. Faulkner v. Baldwin Piano & Organ Co., 561 F.2d 677 (7th Cir. 1977). · cites it 3× “§ 121 and 37 C.F.R. § 1.141 forbidding the claiming of two or more inventions in one application.”
Comair Rotron, Inc. v. Nippon Densan Corp. & Nidec Corp., 49 F.3d 1535 (Fed. Cir. 1995). “§ 121 ; 37 C.F.R. § 1.141 , and it can not be presumed that related patents rise and fall together.”
In re Weber, 580 F.2d 455 (C.C.P.A. 1978). · cites it 2× “In Ex parte Haas, the board decided that Rule 141, 37 CFR 1.141 regards an allowable generic claim as one that does not include more than one independent and distinct invention.”
R2 Med. Sys., Inc. v. Katecho, Inc., 931 F. Supp. 1397 (N.D. Ill. 1996). “37 C.F.R. § 1.141 . Although the applicant may contest (“traverse”) the restriction and try to convince the patent examiner that the identified separate species does not reflect independent and distinct inventions, the applicant must provisionally elect one of the species.”
Stratagene v. Invitrogen Corp., 225 F. Supp. 2d 608 (D. Maryland 2002). “§ 121 ; 37 C.F.R. § 1.141 . The patent examiner here stated that the claims had “acquired a separate status in the art as a separate subject for inventive effect” and therefore required independent searches.”
Lamb-Weston, Inc. v. McCain Foods, Ltd. & McCain Foods, Inc., 78 F.3d 540 (Fed. Cir. 1996). “37 C.F.R. § 1.141 (1995). Lamb-Weston elected to proceed solely on the cutting apparatus claims, which issued as U.”
Acme High. Prods. Corp., Cross-Appellee v. The D. S. Brown Co. & Delmont D. Brown, Cross-Appellants, 431 F.2d 1074 (6th Cir. 1970). “§ 116 (1964); 37 C.F.R. § 1.141 , et seq. Thereafter, the application was amended four times, new claims were added, and old ones modified.”
New South Indus., Inc. v. Apache Grounding Corp., 666 F. Supp. 1067 (M.D. Tenn. 1987). “Pursuant to 37 C.F.R. § 1.141 and 1.142, the examiner required the applicants to restrict and elect which inventions would move toward final action.”
Plastilite Corp. v. Airlite Plastics Co., 390 F. Supp. 1141 (D. Neb. 1975). “The defendant’s argument that Claim 2 adds only a non-novel element is specious.”
Fortunet, Inc. v. Melange Comput. Servs., 412 F. Supp. 2d 1071 (D. Nev. 2005). “” 37 C.F.R. § 1.141 (a). With respect to the ’784 patent, the PTO issued a restriction office action, identifying three distinct species in the claimed invention: (1) Figures 9-12 associated with claims 2-4; (2) Figures 3-7 associated with claims 5-10 and 20; and (3) Figure 8…”
Caterpillar Tractor Co. v. Comm'r of Patents & Trademarks, 650 F. Supp. 218 (E.D. Va. 1986). “37 CFR 1.141(b)(2) (emphasis added). The PTO interprets this regulation to mean: Process and apparatus for its practice can be shown to be distinct inventions, if either or both of the following can be shown: (1) that the process as claimed can be practiced by another materially…”
— 37 C.F.R. § 1.141(b)(2) — 1 case
Caterpillar Tractor Co. v. Comm'r of Patents & Trademarks, 650 F. Supp. 218 (E.D. Va. 1986). “37 CFR 1.141(b)(2) (emphasis added). The PTO interprets this regulation to mean: Process and apparatus for its practice can be shown to be distinct inventions, if either or both of the following can be shown: (1) that the process as claimed can be practiced by another materially…”
Annotations are extracted automatically from the opinions in the Syfert caselaw corpus and ranked by authority, recency, and treatment. Dots show Syfertize treatment of the citing case itself.