What is the significance of the first Office action on the merits in relation to restriction practice?
The first Office action on the merits plays a crucial role in restriction practice. According to MPEP 818.02(a), it serves as a cutoff point for considering claims as originally presented for restriction purposes:
“Where claims to another invention are properly added and entered in the application before the earlier of the mailing of a first restriction requirement or the mailing of a first Office action on the merits, those claims, along with the ones presented upon filing the application, will be considered originally presented claims for purposes of restriction only.”
This means that any claims added after the first Office action on the merits will not be considered as originally presented claims for restriction purposes. They may be subject to different treatment, such as being considered as directed to a non-elected invention.
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