37 C.F.R. § 1.142
Requirement for restriction
(a) If two or more independent and distinct inventions are claimed in a single application, the examiner in an Office action will require the applicant in the reply to that action to elect an invention to which the claims will be restricted, this official action being called a requirement for restriction (also known as a requirement for division). Such requirement will normally be made before any action on the merits; however, it may be made at any time before final action.
(b) Claims to the invention or inventions not elected, if not canceled, are nevertheless withdrawn from further consideration by the examiner by the election, subject however to reinstatement in the event the requirement for restriction is withdrawn or overruled.
Notes of Decisions
Cited in 22
cases (3 in the last 5 years), 1960–2024 · leading case: Helifix Ltd. v. Blok-Lok, Ltd. & William Scott Burns v. Helifix North Am. Corp., Third Party Counterclaim, 208 F.3d 1339 (3rd Cir. 2000).
Helifix Ltd. v. Blok-Lok, Ltd. & William Scott Burns v. Helifix North Am. Corp., Third Party Counterclaim, 208 F.3d 1339 (3rd Cir. 2000). “See 37 C.F.R. § 1.142 (a) (1999). Claims to the non-elected invention(s) are withdrawn from consideration and must be canceled before the application is allowed to issue as a patent.”
Pfizer, Inc. v. Lee, 811 F.3d 466 (Fed. Cir. 2016). “LEE 5 for restriction, see 37 CFR § 1.142 (“If two or more inde- pendent and distinct inventions are claimed in a single application, the examiner in an Office action will require the applicant in the reply to that action to elect an inven- tion to which the claims will be…”
Struthers Pat. Corp. v. Nestle Co., Inc., 558 F. Supp. 747 (D.N.J. 1981). “See also 37 C.F.R. § 1.142 . In the event two distinct inventions are initially claimed in an application and the Patent Office requires restriction between them, the ap *774 plicant must elect which one he wishes to prosecute in that application.”
In Re Anita Dembiczak & Benson Zinbarg, 175 F.3d 994 (Fed. Cir. 1999). “”); 37 C.F.R. § 1.142 . The position adopted by the Board — that a textual description of facial indicia found in the claims of the utility patent application makes obvious the specific designs claimed in the (patentably distinct) Dembiczak design patents — would presumably…”
Henkel Corp. v. Coral, Inc., 754 F. Supp. 1280 (N.D. Ill. 1991). “The PTO Examiner’s first Office Action required a restriction between the cleaning compositions and processes under 37 C.F.R. § 1.142 and 35 U.S.C. § 121 . The restriction reflected the PTO’s expert determination that “two or more independent and distinct inventions are claimed…”
Hologic, Inc. v. Minerva Surgical, Inc., 44 F.4th 1358 (Fed. Cir. 2022). “See 37 C.F.R. § 1.142 (a) (“If two or more independent and distinct inventions are claimed in a single application, the examiner in an Office action will require the applicant 2 Congress amended § 121 when it enacted the Leahy–Smith America Invents Act (AIA).”
Pfizer Inc. v. Teva Pharm. USA, Inc., 482 F. Supp. 2d 390 (D.N.J. 2007). “Accordingly, the claims are drawn to more than a single invention and restriction as has been required is proper 37 CFR 1.142(a). (Id., Paper 12, at PFC 02027291.”
In re Abele, 684 F.2d 902 (C.C.P.A. 1982). “Claims 49-57 were withdrawn in accordance with 37 CFR 1.142(b). . 35 U.S.C. § 101 provides: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject…”
Univ. of Massachusetts v. Kappos, 903 F. Supp. 2d 77 (D.D.C. 2012). “”) See also 37 C.F.R. § 1.142 . In the first restriction requirement issued in this matter, the Examiner divided the claims into ten different groups, each of which was purportedly related to a different and distinct invention.”
Gilead Sciences, Inc. v. Lee, 778 F.3d 1341 (Fed. Cir. 2015). “See 37 C.F.R. § 1.142 (2007). On November 18, 2009, the PTO issued a restriction requirement, dividing Gilead’s claims into four groups of inventions and directing it to select a subset of its claimed inventions before further examination.”
Biogen Ma, Inc. v. Japanese Found. for Cancer Rsch., 785 F.3d 648 (Fed. Cir. 2015). “However, a restriction requirement is not substantive evidence that Fiers’ claims are patentably distinct over the DNA sequences. At most, it is evidence that the examiner thought that there were “two or more independent and distinct inventions” claimed in a single application.”
Laboratoires Perouse v. W.L. Gore & Assocs., Inc., 528 F. Supp. 2d 362 (S.D.N.Y. 2007). “See 37 C.F.R. § 1.142 (a) (1999). Claims to the non-elected invention(s) are withdrawn from consideration and must be canceled before the application is allowed to issue as a patent.”
— 37 C.F.R. § 1.142(a) — 1 case
Pfizer Inc. v. Teva Pharm. USA, Inc., 482 F. Supp. 2d 390 (D.N.J. 2007). “Accordingly, the claims are drawn to more than a single invention and restriction as has been required is proper 37 CFR 1.142(a). (Id., Paper 12, at PFC 02027291.”
— 37 C.F.R. § 1.142(b) — 4 cases
In re Abele, 684 F.2d 902 (C.C.P.A. 1982). “Claims 49-57 were withdrawn in accordance with 37 CFR 1.142(b). . 35 U.S.C. § 101 provides: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject…”
Pfizer Inc. v. Teva Pharm. USA, Inc., 482 F. Supp. 2d 390 (D.N.J. 2007). “Accordingly, the claims are drawn to more than a single invention and restriction as has been required is proper 37 CFR 1.142(a). (Id., Paper 12, at PFC 02027291.”
In re Weber, 580 F.2d 455 (C.C.P.A. 1978).
Conmed Corp. v. Ludlow Corp., 235 F. Supp. 2d 109 (N.D.N.Y. 2002).
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