[Patentpractice] Effect of traversing a partially-defective restriction requirement
David Boundy
DavidBoundyEsq at gmail.com
Tue Dec 17 14:24:42 UTC 2024
Just to remind why traversing bad restriction requirements is
important -- *patent
term adjustment* and *double patenting* (*Cellect*, *Allergan*, and *Geneva
Pharms., Inc. v. GlaxoSmithKline PLC*, 349 F.3d 1373, 68 USPQ2d 1865 (Fed.
Cir. 2003) really change the game,
https://cafc.uscourts.gov/opinions-orders/22-1293.OPINION.8-28-2023_2181381.pdf
https://cafc.uscourts.gov/opinions-orders/24-1061.OPINION.8-13-2024_2366074.pdf
), inequitable conduct (maintaining consistent arguments across multiple
applications -- especially if the examiner cites new art in a daughter that
would have affected what you did in the earlier application), costs of
managing multiple applications, issue and maintenance fees.
These issues are taken care of in ordinary course if the claims are
together in one application, but become far more tricky once the claims are
divided across multiple applications. Don't just roll over for it.
On Tue, Dec 17, 2024 at 7:31 AM David Boundy <PatentProcedure at gmail.com>
wrote:
> 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
>>
>>
>> --
>> Patentpractice mailing list
>> Patentpractice at oppedahl-lists.com
>>
>> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>>
>
>
> --
>
>
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