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

Tue Dec 17 11:40:59 UTC 2024

 “Restriction to one of the following inventions is required under 35 USC
121:”

Yup, that's a statutory restriction.

Krista to Randall > " 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?"

Yup, that's confiramtion that you're dealing with a really confused
examiner.

Suzannah >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 :)"

Yup.  And it may be that what you want is no division at all.

On Mon, Dec 16, 2024 at 9:27 PM Krista Jacobsen via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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
> T:  408.455.5539
> 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 6:02 PM, Randall Svihla <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> *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>
> *Cc:* Krista Jacobsen <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
> T:  408.455.5539
> 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> 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
> T:  408.455.5539
> www.jacobseniplaw.com
>
>
> --
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>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>

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