This section provides specific details on double patenting. Essentially, double patenting seeks to prevent the unjustified extension of patent rights beyond the term of a patent. This section covers when double patenting is possible along with the requirements of double patenting rejections. Obviousness type nonstatutory double patenting is also discussed including two-way obviousness.

This section also discusses disclaimers which may be used to disclaim or dedicate part of a patent term. The topics discussed include terms, terminal disclaimers, statutory double patenting rejections, and nonstatutory rejections.

• Review Ed9 10.2019: 804

If, on examination, the examiner finds the claims to an invention elected without traverse to be allowable and no nonelected invention is eligible for rejoinder, the letter should be attached to the Notice of Allowability form and should include cancellation of the nonelected claims, a statement that the prosecution is closed, and that a notice of allowance will be sent in due course. Correction of formal matters in the above-noted situation which cannot be handled by a telephone call and thus requires action by the applicant should be handled under the Ex parte Quayle practice.

• Review Ed9 10.2019: 812

If an applicant receives a non-final Office action containing restriction requirements between two groups of claims the applicant's reply should distinctly point out the detailed reasons why the applicant believes the examiner errored in requiring a restriction between the two groups and additionally state that the “applicant therefore respectively traverses the restriction requirement and elects Group 2".

An applicant cannot as a matter of right switch inventions by filing an RCE. The examiner may require an applicant to elect a single species upon later presentation of claims to more than one patentably distinct species.

• Review Ed9 10.2019: 818