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

[Jeffrey Semprebon]

Sadly, I have never seen that 1-shot limitation on the examiner. In the
best cases, they withdraw the election of inventions but still insist on
election of species. Seems here, you could at least request withdrawal of
the clearly improper restriction, and just not mention if the 1-10/11-20
split appears valid (no arguments to be made that the examiner hasn't
fulfilled all their requirements to fulfill THEIR duty to explain why
restriction is necessary. Make the examiner do the work of re-dividing if
they're determined to; so many of them cheat on bogus restrictions that
it's worth the pushback, IMO.

In the most flagrant case (15/598659), the petitions board rejected one
examiner's assertion that there were 22 patentably distinct species, and
the new examiner (previous one no longer on the USPTO employee list by that
time) acknowledged that there weren't 22 species, but found "only" 16
patentably distinct species disclosed, and then went on to divide several
of those into patentably distinct "subspecies", for a total of 23
patentably distinct "species" or "subspecies".


-Jeff

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

On Mon, Dec 16, 2024 at 6:29 PM Krista Jacobsen via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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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>
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