[Patentpractice] status identifier "withdrawn"?

Fri Dec 6 23:37:00 UTC 2024

Are the three claims drawn to independent (and / or maybe) distinct inventions?

No?  Traverse and petition and change nothing

Yes (arguably)? Documented RR (not simple election of species), pick an invention (claim 1) and withdraw 2&3, maybe you can get one rejoined.  The holy grail of prosecution, pay one fee and get three inventions searched and examined.  Did the Ex say 2&3 withdrawn?

Telephonic RR?  Do you know /  deal with the Ex a lot?  The nuances of administrative law.  Reply or insist on a paper as see fit.  Glad I retired 😊 

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Steve Nipper via Patentpractice
Sent: Friday, December 6, 2024 6:29 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Steve Nipper <steve at colbynipper.com>
Subject: Re: [Patentpractice] status identifier "withdrawn"?

> Examiner mails an Office Action, memorializing the election and rejecting claim 2.

I always thought that the (Withdrawn) status identifier only applies after the Examiner indicates that claims are withdrawn.  See 37 C.F.R. 1.142 <https://www.ecfr.gov/current/title-37/chapter-I/subchapter-A/part-1/subpart-B/subject-group-ECFR646ed64e32f4bc1/section-1.142>  “Requirement for restriction,” which includes (emphasis added):

(b) Claims to the invention or inventions not elected, if not canceled, are nevertheless withdrawn from further consideration by the examiner by the election, subject however to reinstatement in the event the requirement for restriction is withdrawn or overruled.

At least that’s what I have always told associates when reviewing draft Responses to Restriction Requirements…

Steve

Stephen M. Nipper

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Colby Nipper |  <http://www.colbynipper.com/> website

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com <mailto:patentpractice-bounces at oppedahl-lists.com> > On Behalf Of David M. Longo via Patentpractice
Sent: Friday, December 6, 2024 4:11 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com <mailto:patentpractice at oppedahl-lists.com> >
Cc: David M. Longo <DLongo at oblon.com <mailto:DLongo at oblon.com> >
Subject: Re: [Patentpractice] status identifier "withdrawn"?

  ❖ ❖ ❖ CAUTION: External Sender ❖ ❖ ❖ 

Why not just use “(Withdrawn – Original)” or “(Withdrawn – Previously Presented)”, as applicable, for the status identifier?  (Acceptable alternative status identifiers in MPEP 714(II)(C)(E) to those required by Rule 1.121(c).)

In the situation outlined below, is it correct to understand that “memoralizing the election” means that the Examiner made the restriction requirement final?  If so, it would seem that once that first action on the merits (FAOM) makes the restriction requirement final, then the nonelected claims have the status ‘withdrawn’ whether we like it or not.  We would have to request reconsideration of the requirement and then petition under Rule 1.144 if necessary to challenge.  But in the period of time between FAOM and Petition, isn’t the status ‘withdrawn’ (unless you cancelled the nonelected claims in your response)?  

If you had instead responded to a written restriction requirement  with an election and a preliminary amendment, I could see keeping the status identifier for the nonelected claim(s) as ‘original’, because as of the filing of the preliminary amendment, the requirement is not yet “made final” and there is a chance that the Examiner might do something different in the FAOM than was indicated in the written restriction requirement.  (Sometimes they have a mind of their own….)

Best regards,

_Dave

David M. Longo, Ph.D.

Partner, Attorney at Law
Oblon, McClelland, Maier & Neustadt, LLP | 1940 Duke Street, Alexandria, Virginia 22314 | Direct: 703-412-1791 | Main: 703-413-3000 | dlongo at oblon.com <mailto:dlongo at oblon.com>  | www.oblon.com <http://www.oblon.com/>  |

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com <mailto:patentpractice-bounces at oppedahl-lists.com> > On Behalf Of David Boundy via Patentpractice
Sent: Friday, December 6, 2024 6:03 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com <mailto:patentpractice at oppedahl-lists.com> >
Cc: David Boundy <DavidBoundyEsq at gmail.com <mailto:DavidBoundyEsq at gmail.com> >
Subject: Re: [Patentpractice] status identifier "withdrawn"?

If it's a statutory restriction (as opposed to election of species), and you elected with no traverse, yes, I think you need to use "withdrawn" (and I don't think you're giving up anything by doing so).

Just FYI.   The 1980s edition of the Kayton Treatise on which I cut my teeth said "never take a telephone restriction"   I never have.   At the very least, you want the traverse so you can rejoin later if the facts warrant.

On Fri, Dec 6, 2024 at 5:02 PM Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com <mailto:patentpractice at oppedahl-lists.com> > wrote:

When exactly am I required to use the status identifier "withdrawn"?

I was taught, years ago, that it was up to me when if ever I would use that status identifier.  

Suppose there was a restriction between three independent claims 1, 2, and 3 and suppose I elect claim 2.  

What I was taught was, I was not required to use a status identifier of "withdrawn" for claim 1 until I was good and ready.

Eventually maybe the time would come that claim 2 gets allowed, and maybe the client would be prepared to suck it up and get a patent with only claim 2.  If so, then I would cancel claim 1 and next thing you know I would get a notice of allowance.

Just now I have the following sequence of events (claim numbers changed to protect the innocent).

*	Independent claims 1, 2, 3 filed.
*	Examiner calls on the phone, restricts saying there are three inventions.
*	On the phone I elect claim 2.
*	Examiner mails an Office Action, memorializing the election and rejecting claim 2.
*	I file a response to the Office Action.  Claims 1 and 3 have status identifier "original".  Claim 2 has status identifier "presently amended".
*	Examiner mails a notice of non-compliant amendment, saying that I should have used status identifier "withdrawn" for claims 1 and 3.

Question.  Is this the Examiner busting my chops with a made-up rule?  Or is it really true that my hands are tied and I had no choice but to give a status of "withdrawn" for claims 1 and 3?

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