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

Tue Dec 17 01:56:39 UTC 2024

Hi David,

I thought it was a statutory restriction for the reasons I wrote to Randall. There is no “species” language in the office action. Before setting out the three groups of claims, it says “Restriction to one of the following inventions is required under 35 USC 121:” I thought that meant it’s a statutory restriction, but maybe it covers species elections and the examiner here was sloppy?

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 5:28 PM, David Boundy <PatentProcedure at gmail.com> wrote:
> 
> 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 <mailto: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 <mailto:krista at jacobseniplaw.com>
>> T:  408.455.5539
>> www.jacobseniplaw.com <http://www.jacobseniplaw.com/>-- 
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