[Patentpractice] Effect of traversing a partially-defective restriction requirement
David Boundy
PatentProcedure at gmail.com
Tue Dec 17 12:31:27 UTC 2024
Krista > 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.”
"Related." That gives you several more bases to traverse. The highlighted
one below (from 808.02) is one I use a lot -- I look in the Manual of
Classification, and almost always there's a class-subclass that fits both
inventions (and one or both of the examiner's proposed classes is bogus).
Once they're classified together, and the examiner admits they're
"related," voila, no restriction.
Another thing I do is traverse, and if the groups are otherwise
equally-good choices, I elect the group with the more-bogus class-subclass
designation. First Action shows up, and whattaya know, the examiner
searched the class-subclass of the other. Then I come back with a request
for rejoinder under MPEP 808.02.
Do you have a copy of "the big email" I send every so often?
806.05 Related Inventions [R-08.2012]
Where two or more related inventions are claimed, the principal question to
be determined in connection with a requirement to restrict or a rejection
on the ground of double patenting is whether or not the inventions as
claimed are distinct. If they are distinct, restriction may be proper. If
they are not distinct, restriction is never proper. If nondistinct
inventions are claimed in separate applications or patents, double
patenting must be held, except where the additional applications were filed
consonant with a requirement to restrict.
Various pairs of related inventions are noted in the following sections. In
applications claiming inventions in different statutory categories, only
one-way distinctness is generally needed to support a restriction
requirement. See *MPEP § 806.05(c)
<https://www.uspto.gov/web/offices/pac/mpep/s806.html#d0e104138>*
(combination and subcombination) and *§ 806.05(j)
<https://www.uspto.gov/web/offices/pac/mpep/s806.html#d0e104138>* (related
products or related processes) for examples of when a two-way test is
required for distinctness. Related inventions in the same statutory class
are considered mutually exclusive, or not overlapping in scope, if a first
invention would not infringe a second invention, and the second invention
would not infringe the first invention
806.05(j) Related Products; Related Processes [R-07.2022]
To support a requirement for restriction between two or more related
product inventions, or between two or more related process inventions, both
two-way distinctness and reasons for insisting on restriction are
necessary, i.e., separate classification, status in the art, or field of
search. See *MPEP § 808.02
<https://www.uspto.gov/web/offices/pac/mpep/s808.html#d0e105935>*. See *MPEP
§ 806.05(c)
<https://www.uspto.gov/web/offices/pac/mpep/s806.html#d0e104168>* for an
explanation of the requirements to establish two-way distinctness as it
applies to inventions in a combination/subcombination relationship. For
other related product inventions, or related process inventions, the
inventions are distinct if
- (A) the inventions *as claimed* do not overlap in scope, i.e., are
mutually exclusive (i.e., a claim to the final product does not read on the
intermediate, and *vice versa*);
- (B) the inventions *as claimed* are not obvious variants; and
- (C) the inventions *as claimed* are either not capable of use together
or can have a materially different design, mode of operation, function, or
effect. See *MPEP § 802.01
<https://www.uspto.gov/web/offices/pac/mpep/s802.html#d0e97928>*.
The burden is on the examiner to provide an example to support the
determination that the inventions are distinct, but the example need not be
documented. If applicant either proves or provides convincing evidence that
the example suggested by the examiner is not workable, the burden is on the
examiner to suggest another viable example or withdraw the restriction
requirement.
As an example, an intermediate product and a final product can be shown to
be distinct inventions if the intermediate and final products are mutually
exclusive inventions (not overlapping in scope) that are not obvious
variants, and the intermediate product as claimed is useful to make
something other than the final product as claimed. Typically, the
intermediate loses its identity in the final product. See also *MPEP §
806.05(d) <https://www.uspto.gov/web/offices/pac/mpep/s806.html#d0e104544>*
for restricting between subcombinations disclosed as usable together. See *MPEP
§ 809 <https://www.uspto.gov/web/offices/pac/mpep/s809.html#d0e105981>* - *§
809.03 <https://www.uspto.gov/web/offices/pac/mpep/s809.html#d0e106269>* if
a generic claim or claim linking multiple products or multiple processes is
present.
Form paragraph *8.14.01
<https://www.uspto.gov/web/offices/pac/mpep/s806.html#fp8.14.01>* may be
used to restrict between related products or related processes; form
paragraph *8.14
<https://www.uspto.gov/web/offices/pac/mpep/s806.html#fp8.14>* may be used
in intermediate-final product restriction requirements; form paragraph *8.16
<https://www.uspto.gov/web/offices/pac/mpep/s806.html#fp8.16>* may be used
to restrict between subcombinations.
808.02 Establishing Burden [R-07.2022]
Where, as disclosed in the application, the several inventions claimed are
related, and such related inventions are not patentably distinct as
claimed, restriction under *35 U.S.C. 121
<https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#d0e303040>*
is never proper (*MPEP § 806.05
<https://www.uspto.gov/web/offices/pac/mpep/s806.html#d0e104138>*). If
applicant voluntarily files claims to such related inventions in different
applications, double patenting may be held.
Where the inventions as claimed are shown to be independent or distinct
under the criteria of *MPEP § 806.05(c)
<https://www.uspto.gov/web/offices/pac/mpep/s806.html#d0e104168>* - *§
806.06 <https://www.uspto.gov/web/offices/pac/mpep/s806.html#d0e105649>*,
the examiner, in order to establish reasons for insisting upon restriction,
must explain why there would be a serious search and/or examination burden
on the examiner if restriction is not required. In order to demonstrate a
serious search burden, the examiner must show by appropriate explanation
one of the following:
- (A) *Separate classification thereof*: This shows that each invention
has attained recognition in the art as a separate subject for inventive
effort, and also a separate field of search. Patents need not be cited to
show separate classification.
- (B) *A separate status in the art when they are classifiable together*:
Even though they are classified together, each invention can be shown to
have formed a separate subject for inventive effort when the examiner can
show a recognition of separate inventive effort by inventors. Separate
status in the art may be shown by citing patents which are evidence of such
separate status, and also of a separate field of search.
- (C) *A different field of search*: Where it is necessary to search for
one of the inventions in a manner that is not likely to result in finding
art pertinent to the other invention(s) (e.g., searching different
classes/subclasses or electronic resources, or employing different search
queries), a different field of search is shown, even though the two are
classified together. The indicated different field of search must in fact
be pertinent to the type of subject matter covered by the claims. Patents
need not be cited to show different fields of search.
Where, however, the classification is the same and the field of search is
the same and there is no clear indication of separate future classification
and field of search, no reasons exist for dividing among independent or
related inventions.
On Mon, Dec 16, 2024 at 8:54 PM Krista Jacobsen via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:
> 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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> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
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