[Patentpractice] Restriction based on dependent claim?

[Dale Quisenberry]

Attached are a couple from David I saved.  There may be overlap with what Jeffrey sent.

C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>

This email may contain information that is confidential and subject to the attorney-client privilege, work product doctrine and other applicable privileges.  This email is intended to be received only by those to whom it is specifically addressed.  Any receipt of this email by others is not intended to and shall not waive any applicable privilege.  If you have received this email in error, please delete it and immediately notify the sender by separate email.  Thank you.



From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Jeffrey Semprebon via Patentpractice <patentpractice at oppedahl-lists.com>
Date: Wednesday, 28 August 2024 at 9:02 am
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Jeffrey Semprebon <jesemprebon at gmail.com>
Subject: Re: [Patentpractice] Restriction based on dependent claim?
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<mailto:jesemprebon at gmail.com>
72 Myrtle Street
Claremont, New Hampshire 03743
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240828/ddb5d458/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: boundy restriction email.pdf
Type: application/pdf
Size: 178842 bytes
Desc: boundy restriction email.pdf
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240828/ddb5d458/attachment.pdf>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: boundy restriction email 2022 06 21.pdf
Type: application/pdf
Size: 301441 bytes
Desc: boundy restriction email 2022 06 21.pdf
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240828/ddb5d458/attachment-0001.pdf>