Election of Species

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Election of Species

• Joseph K. McKane
• SPE, Art Unit 1626
• April 27, 2004

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Example of Broad claim

• Claim 1. A compound selected from the group
  consisting of

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Markush definitions

• wherein
• p is an integer ranging from 1 to 8
• A is selected from O, S, and NR wherein R may be
  H or loweralkyl
• X, X, X3, X4, X5, X6, R1 and R2 are
  independently selected and each represented by
  loweralkyl,
• loweralkoxy, alkoxyalkyl, hydroxyalkyl,
  aminoalkyl, alkylamino, alkylaminoalkyl,
  cycloalkyl, aryl, alkylaryl, halogen or
• cycloalkyl, aryl, and alkylaryl and
• X1 and X2 are independently selected from H,
  loweralkyl, or loweralkoxy
• and the pharmaceutically acceptable salt thereof.

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Species claims

• Claim 2. The compound according to claim 1,
  wherein said compound is represented by the
  formula

Claim 3. The compound according to claim 1,
wherein said compound is represented by the
formula
Claim 4. The compound according to claim 1,
wherein said compound is represented by the
formula
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Form Paragraph 8.01 Election of Species

• This application contains claims directed to the
  following patentably distinct species of the
  claimed invention .
• Applicant is required under 35 U.S.C. 121 to
  elect a single disclosed species for prosecution
  on the merits to which the claims shall be
  restricted if no generic claim is finally held to
  be allowable. Currently, generic.

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8.01 Continued

• Applicant is advised that a reply to this
  requirement must include an identification of the
  species that is elected consonant with this
  requirement, and a listing of all claims readable
  thereon, including any claims subsequently added.
  An argument that a claim is allowable or that
  all claims are generic is considered
  nonresponsive unless accompanied by an election.

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8.01 Continued

• Upon the allowance of a generic claim, applicant
  will be entitled to consideration of claims to
  additional species which are written in dependent
  form or otherwise include all the limitations of
  an allowed generic claim as provided by 37
  CFR 1.141. If claims are added after the
  election, applicant must indicate which are
  readable upon the elected species. MPEP
  809.02(a).

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8.01 Continued

• Should applicant traverse on the ground that the
  species are not patentably distinct, applicant
  should submit evidence or identify such evidence
  now of record showing the species to be obvious
  variants or clearly admit on the record that this
  is the case. In either instance, if the examiner
  finds one of the inventions unpatentable over the
  prior art, the evidence or admission may be used
  in a rejection under 35 U.S.C. 103(a) of the
  other invention.

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8.02 Election when claims are not restricted to a
species

• Claim generic to a plurality of disclosed
  patentably distinct species comprising .
  Applicant is required under 35 U.S.C. 121 to
  elect a single disclosed species, even though
  this requirement is traversed.

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8.02 continued

• Should applicant traverse on the ground that the
  species are not patentably distinct, applicant
  should submit evidence or identify such evidence
  now of record showing the species to be obvious
  variants or clearly admit on the record that this
  is the case. In either instance, if the examiner
  finds one of the inventions unpatentable over the
  prior art, the evidence or admission may be used
  in a rejection under 35 U.S.C. 103(a) of the
  other invention.
• Note that this should be used in accordance with
  MPEP 803.02 (Markush groups) and MPEP 809.02(d)
  (burdensome search).

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803.02 Markush Claims/Species Election

• If the members of the Markush group are
  sufficiently few in number or so closely related
  that a search and examination of the entire claim
  can be made without serious burden, the examiner
  must examine all the members of the Markush group
  in the claim on the merits, even though they are
  directed to independent and distinct inventions.

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803.02 Markush Claims/Species Election

• If on examination the elected species is found to
  be anticipated or rendered obvious, the
  Markush-type claims and claims to the elected
  species shall be rejected and claims to the
  non-elected species would be held withdrawn from
  further consideration.
• If there is no prior art that anticipates or
  renders obvious the elected species, the search
  of the Markush-type claim will be extended.
• If prior art is then found that anticipates or
  renders obvious the Markush-type claim with
  respect to a non-elected species, the
  Markush-type claim will be rejected and claims to
  the non-elected species held withdrawn from
  further consideration.
• The prior art search will not be extended
  unnecessarily to cover all non-elected species.

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809.02(d) No Species Claims

• Where only generic claims are presented, no
  restriction can be required except in those
  applications where the generic claims recite such
  a multiplicity of species that an unduly
  extensive and burdensome search is necessary.
  See MPEP 808.01(a). If after an action on
  only generic claims with no restriction
  requirement, applicant presents species claims to
  more than one species of the invention, he or she
  must at that time indicate an election of a
  single species.

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Take Home Message

• When there is no prior art on a Markush-Type
  claim and/or elected species and the members of
  the Markush group are few in number and the
  species are closely related the examiner must
  extend the search to cover additional species and
  members of the Markush group.