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

[Krista Jacobsen]

Hi Randall,

Group 1 is “drawn to a product” in a first classification.
Group 2 is “drawn to a product” in a second classification.
Group 3 is “drawn to a product” in a third classification.

Yes, claims 1 and 11 are independent claims. 

The examiner said Groups 1 and 2 and Groups 1 and 3 are “directed to related products.” He said Groups 2 and 3 are “related as combination and subcombination.”

Is that a proper species election? Ordinarily when I get a species election, it relates to the drawings, and I have to figure out which claims I can keep. I am also used to seeing language about generic claims, and there is none of that here. 

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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> On Dec 16, 2024, at 4:42 PM, Randall Svihla <rsvihla at nsiplaw.com> wrote:
> 
> 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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