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

Tue Dec 17 11:15:40 UTC 2024

When I get an unclear and/or defective Restriction Requirement, I either:

  1.  Respond indicating that the groupings don’t make sense, and then I proceed to divide the claims and then select the group I want :); OR

  1.  I call the examiner and get clarification during which I point out that I could request that the current requirement be withdrawn for being unclear and have a new sent, but I’m not going to bust balls… to curry favor during prosecution.

Usually both work.

If you do #1 and the Examiner doesn’t agree, you’ll get a non-compliant response.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Krista Jacobsen via Patentpractice
Sent: Monday, December 16, 2024 9:26 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: Re: [Patentpractice] Effect of traversing a partially-defective restriction requirement

Hi Randall,

That’s what I thought — it is a restriction requirement and not an election of species. He identified claim 11 and the dependent claims common to Groups 2 and 3 as “linking claims."

But how can it be a proper restriction requirement when independent claim 11 (or any claim) is in two groups? Doesn’t that by definition mean that Groups 2 and 3 are neither independent nor distinct? I always thought (maybe incorrectly??) that statutory restriction requirements had to split the claims into non-overlapping groups (to meet “independent or distinct”), and it was only species elections that might result in independent claims being included in multiple species (because they are generic).

This is why I think it’s a defective restriction requirement. He could have created two groups (1-10, 11-20), and then imposed a species election within claims 11-20, and that might have been kosher. But that is not what he did.

Thanks so much for your help to decipher this!

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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On Dec 16, 2024, at 6:02 PM, Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>> wrote:

Hi, Krista

That is a restriction requirement, not an election of species.  It seems to me that Groups 2 and 3 should be related as subcombinations usable together, rather than combination/subcombination, but I cant be sure without knowing what the claims actually recite.

Although the Examiner did not mention generic claims, independent claim 11 is clearly generic to Groups 2 and 3.  Sometimes a claim that is generic to some but not all of the groups or inventions is referred to as a sub-generic claim.

Best regards,

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

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Krista Jacobsen via Patentpractice
Sent: Monday, December 16, 2024 8:53 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Krista Jacobsen <krista at jacobseniplaw.com<mailto:krista at jacobseniplaw.com>>
Subject: Re: [Patentpractice] Effect of traversing a partially-defective restriction requirement

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

NOTICE:  This communication may include privileged or confidential information.  If received in error, please notify the sender and delete this communication without copying or distributing.

On Dec 16, 2024, at 4:42 PM, Randall Svihla <rsvihla at nsiplaw.com<mailto: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<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Krista Jacobsen <krista at jacobseniplaw.com<mailto: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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