[Patentpractice] What to do when examiner does not examine elected claims

[David Boundy]

Alan --

Why would it not be a " petition to the director type situation "?  This
creates great leverage for you.  Use it.  37 CFR § 1.144:

Petition may be deferred until after final action on or allowance of claims
to the invention elected, but must be filed not later than appeal. A
petition will not be considered if reconsideration of the requirement was
not requested (see § 1.181 <https://www.law.cornell.edu/cfr/text/37/1.181>).


If you need help, contact me.  I can't look at it til Tuesday, but I'll
help you.

On Wed, Apr 24, 2024 at 8:17 PM Alan Taboada via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> All –
>
>
>
> We came across an odd situation recently where an examiner imposed a
> restriction requirement and we responded by electing one gorupd of claims
> as required.
>
> However, the way the examiner split the claims, there was a broad group of
> claims and a narrower group of claims.
>
> We elected the narrower claims, and indicated that the groader claims were
> generic to the narrower claims.
>
> In the first office action, the examiner did not examine the narrower,
> elected claims, but only the broader generic claims.
>
> We did not realize this until close to the three months deadline so we
> responded to the office action, but pointed this error out and asked for
> all claims to be examined.
>
> We have now just received a final office action where the examiner
> indicates that the elected claims are not “properly” identified as
> “withdrawn” and still are not examined.
>
>
>
> I don’t think this is a petition to the director type situation, because
> we are not petitioning the restriction per se.
>
> I spoke to the examiner before and do not think he will change his mind,
> although I do plan on setting up an interview with him and his supervisor
> to discuss.
>
> Alternately, I could just call his supervisor.
>
>
>
> Has anybody come across this situation before and if so, how did you
> handle it?
>
> If not, does anything jump out as a best way forward?
>
>
>
> Thanks for any insight.
>
>
>
> Best regards,
>
>
>
> Alan
> --
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> Patentpractice at oppedahl-lists.com
>
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>


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