Election of Species

1. Election of Species Joseph K. McKane SPE, Art Unit 1626 April 27, 2004

2. Example of Broad claim Claim 1. A compound selected from the group consisting of:

3. 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.

4. 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:

5. 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.

6. 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.

7. 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).

8. 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.

9. 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.

10. 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).

11. 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.

12. 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.

13. 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.

14. 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.