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

[David Boundy]

Krista --

Is this a restriction or an election of species?  Given the way you're
lining up the claims, I'm guessing its an election of species.

David

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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> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>


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