MPEP § 706.03(y) – Improper Markush Groups Unpatentable

April 2, 2018

      As others have observed, the January 2018 MPEP revision instructs the examiners to reject Markush claims. It asserts that “this is a rejection on the merits and may be appealed to the Patent Trial and Appeal Board.” Page 700-110.  In form ¶ 8.40 it asserts as authority In re Harnisch, 631 F.2d 716, 721-2(CCPA 1980) and Ex Parte Hozumi, 3 USPQ2d 1050, 160 (Bd. Pat. App. & Int. 1984).  No statutory authority exists since it has been held the restriction statute, 35 USC § 121 does not provide a basis for a substantive rejection of a claim. In re Weber, 580 F.2d 455 (CCPA 1978) and In re Haas, 580 F.2d 461 (CCPA 1978).  In Harnisch the CCPA relied upon the concept of unity of invention in reversing the USPTO’s refusal to grant a Markush-type claim.  At 631 F.2d 722.  The USPTO also ignored footnote 6 to the opinion:

Having recognized the possibility of rejecting a Markush group type of claim on the basis of independent and distinct inventions, the PTO may wish to anticipate and forestall procedural problems by exercising its rulemaking powers under 35 U.S.C. § 6(a), wherein the views of interested parties may be heard.

      The USPTO did not take the hint and instead slipped it into the MPEP without opportunity for comment.  The USPTO also ignored a 2017 decision by the PTAB which noted:

Rejections of claims involve examination for compliance with the statutory provisions of Title 35, United States Code, as set forth in §§ 100, 101, 102, 103, and 112. In re Harnisch, 631 F.2d 716, 721 (CCPA 1980). An examiner's discretionary, procedural, or nonsubstantive decisions not directly connected with the merits of issues involving rejections are reviewable by petition under 37 C.F.R. § 1.181 to the Director, not by appeal. In re Berger, 279 F.3d 975, 984-85 (Fed. Cir. 2002).

      In re Berger relied upon In re Hengehold, 440 F.2d 1395 (CCPA 1971) for its decision.  Hengehold involved a restriction requirement but until the most recent version, the MPEP grouped Markush claims with restriction requirements.  See MPEP rev 7 (November 2015) at § 803, p. 800-5, II. Guidelines:

Insofar as the criteria for restriction practice relating to Markush-type claims is concerned, the criteria is set forth in MPEP § 803.02. [Emphasis added]

      In the context of restriction requirements, after a lengthy discussion of the history restrictions the Court cited for further support for its decision that restriction requirements were not rejections the USPTO’s actions in response to the 1952 Patent Act:

As further support for the position we take [restriction requirements not appealable], we note the construction and interpretation of the relevant provisions of the 1952 Act by the Patent Office as voiced in new Rule 144 and amended Rule 191, adopted in implementation of the Act and promulgated simultaneously with the effective date thereof. Those rules recognize a change in practice, and place actions of examiners in requiring restriction under § 121 within the supervision of the Commissioner and beyond the pale of review by the board, a policy consistently followed to this day so far as we are aware.

Hengehold, supra at 1404.

      By not following the Harnisch suggestion to promulgate a rule, the USPTO now has the situation where the election requirement is petitionable, 37 CFR 1.144 and MPEP818.01(c), but the rejection is not. See 35 U.S.C. § 134, 37 CFR § 41.32(a) (1) and MPEP 706.3(y).  The USPTO has no provision for the situation where the decision on petition is inconsistent with the rejection. 

      The new MPEP Markush rejection ignored that “rejections” were defined in Harnisch as ones based only on §§ 100, 101, 102, 103, and 112.  The USPTO also “cherry picked” amongst the decisions of both the CCPA and the PTAB without explanation.  The USPTO has simply swept aside 66 years of practice with nary an explanation.