[Patentpractice] Effect of traversing a partially-defective restriction requirement

[Krista Jacobsen]

Hi all,

If you traverse a restriction requirement that is only partially defective,
does the examiner have to withdraw the entire requirement, or can he
withdraw just the part that is defective?

Assume it's a statutory restriction requirement, and the examiner requires
restriction to:

Group 1: Claims 1-10
Group 2: Claims 11-13, 15, 19, and 20
Group 3: Claims 11, 14-16, 17, and 18

Clearly, Groups 2 and 3 are neither independent nor distinct. Easiest
traverse ever.

But assume that it would not be totally unreasonable if the examiner had
required restriction between claims 1-10 and claims 11-20.

What happens when the traverse based on the FUBARity of Groups 2 and 3 is
successful? Does the examiner have to withdraw the entire restriction
requirement, or just the part that is defective? In other words, can he
withdraw the requirement as to Groups 2 and 3 but still require restriction
between Group 1 (claims 1-10) and Group 2' (claims 11-20)?

I cannot find the answer in the MPEP or in David Boundy's excellent paper,
but for some reason I have a vague sense that he gets one shot at
restriction, and if he blows it, and the applicant successfully traverses,
he has to withdraw the entire thing.

Thanks in advance for sharing your thoughts and (maybe?) experiences.

Best regards,
Krista

------------------------------------------
Krista S. Jacobsen
Attorney and Counselor at Law
Jacobsen IP Law
krista at jacobseniplaw.com
T:  408.455.5539
www.jacobseniplaw.com
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