When is claim sorting not appropriate in patent applications?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Claim sorting may not be appropriate in all cases, particularly when it could lead to issues with claim support. The MPEP 2304.01(d) provides guidance on this matter:

“Sorting of claims may not be appropriate in all cases. For instance, a claim should not be consolidated into an application that does not provide support under 35 U.S.C. 112(a) for the claim.”

This means that examiners and applicants must carefully consider whether the target application for consolidation or restriction provides adequate written description and enablement for all claims. If not, claim sorting could lead to rejections under 35 U.S.C. 112(a) and should be avoided in such cases.