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Saw this post on intelproplaw.com and was curious if anyone on here had any additional insight.

Hypo: applicant prosecutes a claim set to allowance following a restriction requirement. Non-elected claims remain in the listing, with the "withdrawn" status notifier, up until allowability is favorably indicated, at which point the applicant authorizes examiner-amendment cancellation of the withdrawn claims. Only elected claims were ever examined, prosecuted, and allowed.

The notice of allowance contains a notification that the restriction requirement "is moot and therefore is canceled." As such, "the provisions of 35 U.S.C. 121 are no longer applicable." In other words, the examiner believes he can inflict a double patenting rejection on a divisional directed to the restricted, non-elected, withdrawn, and ultimately canceled subject matter.

Can the examiner do that?

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I see a few articles about the safe harbor recently being narrowed by PTAB and Fed Circuit cases but no mention of this issue. The wording of 35 USC 121 includes -

patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application

"For which a restriction has been made" seems clear. An issue you do not mention is any arguments you may have made in attempting to traverse the restriction. If you argued that the restriction is unwarranted becasue the two inventions are not patently distinct, then I think your own admission kills your 121 safe harbor.

Note that the examiner is canceling the restriction as moot, not retracting it due to deciding it was wrongly issued. There was a restriction and nothing changed the logic behind it. In your question, 121 protection is washed away by a gratuitous comment by the examiner - I do not think that would hold.

One strategy you might use is to counter this in a response to the notice of allowance.

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  • For this scenario, no traverse was made.Take the simplest example of an application with only two claims, both independent, one of them elected, examined, and allowed, and the other withdrawn and then finally canceled by examiner's amendment. Upon such cancellation the restriction requirement is "withdrawn" as "moot". The allowed claim is not generic or linking. There, there is no subset of claims that were allowed without having been examined
    – wkc
    May 4, 2020 at 18:10
  • In this simple example you do not say if a restriction requirement was made. If it was made then there is a safe harbor for a divisional. In all such cases the unexamined claims will have been canceled, by definition of being unexamined. In no case are restricted, unexamined claims not canceled before issue, making the restriction moot.
    – George White ♦
    May 26, 2021 at 21:48

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