[Patentpractice] Restriction based on dependent claim?

[Jeffrey Semprebon]

It's pretty common for Examiners to base a restriction primarily on the
"species" as disclosed in the application, rather than on whatever is
claimed. Sometimes this appears to be based on a cursory review of the
figures, so 2 separate views of the same structure may be considered as
"patentably distinct species" - for example, Figs. 19 & 20 of US 8,176,710
or Figs. 13 & 14 of US 7,369,672; 7,971,840; and 8,196,883 (yes, Examiner
repeated the characterization of assembled and exploded views of the same
arm joint as "patentably distinct species" in 2 divisions after it had been
pointed out in the parent that it was the same joint).

If the disclosed "species" fall under different claims, but there's at
least one generic claim, then the restriction will be based on the
dependent claims. That's not especially unusual. If the Examiner is
asserting different inventions (rather than species) based on dependent
claims, that would be unusual.

~
List contributor David Boundy periodically posts advice on responding to
restriction requirements by pointing out the near-inevitable failures to
show everything that the Examiner is required to, and pointing out
differernce between restriction of inventions and restriction of species. A
search may come up with one of his posts. Notes from one such post from
2022 attached.



-Jeff

Jeffrey E. Semprebon
Registered Patent Agent (mechanical) looking for remote work
jesemprebon at gmail.com
72 Myrtle Street
Claremont, New Hampshire 03743
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