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

[Randall Svihla]

Hi, Krista

Are claims 1 and 11 independent claims?  If so, the restriction requirement may be proper, and claim 11 is generic to Groups 2 and 3.  If you elect Group 2 or Group 3, the Examiner has to consider claim 11.

How did the Examiner say the claims are related?

Best regards,

Randall S. Svihla
NSIP Law
Washington, D.C.


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Krista Jacobsen via Patentpractice
Sent: Monday, December 16, 2024 6:27 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Krista Jacobsen <krista at jacobseniplaw.com>
Subject: [Patentpractice] Effect of traversing a partially-defective restriction requirement

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<mailto:krista at jacobseniplaw.com>
T:  408.455.5539
www.jacobseniplaw.com<http://www.jacobseniplaw.com>
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