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. § 1.146

Election of species

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In the first action on an application containing a generic claim to a generic invention (genus) and claims to more than one patentably distinct species embraced thereby, the examiner may require the applicant in the reply to that action to elect a species of his or her invention to which his or her claim will be restricted if no claim to the genus is found to be allowable. However, if such application contains claims directed to more than a reasonable number of species, the examiner may require restriction of the claims to not more than a reasonable number of species before taking further action in the application.

[62 FR 53195, Oct. 10, 1997]
Notes of Decisions
Cited in 4 cases, 1980–2013 · leading case: St. Jude Med., Inc. v. Access Closure, Inc., 729 F.3d 1369 (Fed. Cir. 2013).
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St. Jude Med., Inc. v. Access Closure, Inc., 729 F.3d 1369 (Fed. Cir. 2013). · cites it 8× “The PTO regulation that formally sets forth the framework for an election of species is 37 C.F.R. § 1.146 : In the first action on an application containing a generic claim to a generic invention (genus) and claims to more than one patentably distinct spe- cies embraced thereby,…”
Max-Planck-Gesellschaft Zur Förderung Der Wissenschaften E v. v. Whitehead Inst. for Biomedical Rsch., 650 F. Supp. 2d 114 (D. Mass. 2009). “See 37 C.F.R. § 1.146 . Still, Max-Planck voices the concern that the overhangs and mammalian data will be used to support the broadly worded Claim One in the Tuschl I application.”
Pfizer Inc. v. Teva Pharm. USA, Inc., 482 F. Supp. 2d 390 (D.N.J. 2007). “37 C.F.R. § 1.146 . In this situation, however, where the election of species requirement failed to precisely set forth the scope of identified separate inventions, and an allowable generic concept was defined by the examiner subsequent to the election of a single species, the…”
Honeywell, Inc. v. Diamond, 499 F. Supp. 924 (D.D.C. 1980). “See 37 C.F.R. § 1.146 (1979). Claim 3 is not before the Court.”
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