MPEP § 821 — Treatment of Claims Held To Be Drawn to Nonelected Inventions

Ninth Edition, Revision 01.2024 · last revised R-07.2022

Claims found to be drawn to nonelected inventions, including claims drawn to nonelected species or inventions that may be eligible for rejoinder, are treated as indicated in MPEP § 821.01 through § 821.04.

All claims that the examiner finds are not directed to the elected invention are withdrawn from further consideration by the examiner in accordance with 37 CFR 1.142(b). See MPEP § 821.01 through § 821.04. The examiner should clearly set forth in the Office action the reasons why the claims withdrawn from consideration are not readable on the elected invention. Applicant may traverse the requirement pursuant to 37 CFR 1.143. If a final requirement for restriction is made by the examiner, applicant may file a petition under 37 CFR 1.144 for review of the restriction requirement if the applicant made a timely traversal. See In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971). When an election results in the withdrawal of claims such that the assigned examiner believes the C* classification picture is incorrect, the examiner should submit a C* classification challenge prior to an action on the merits of the elected claims to ensure the C* classification picture on the application appropriately reflects the elected invention.