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

Tue Dec 17 14:27:14 UTC 2024

I have had a few restrictions withdrawn after I responded to my version of the restriction… :)

This might be applicable to Krista’s situation: Once I played dumb and in response selected a group as if it were a species requirement, and then asked that should that group be found free of the art, that the examiner next search [  ].  And, surprisingly, the examiner did.

Point is, as evident from the posts and what Boundy regularly complines (my new made-up word = complains + opines) about is that many examiners do not understand restriction and species requirements and sometimes confuses the two or makes up arbitrary groups.  So, when they don’t understand, one can often use that lack of understanding to get what one wants :)

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of David Boundy via Patentpractice
Sent: Tuesday, December 17, 2024 6:41 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: David Boundy <PatentProcedure at gmail.com>
Subject: Re: [Patentpractice] Effect of traversing a partially-defective restriction requirement

“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<mailto: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
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Jacobsen IP Law
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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
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T:  408.455.5539
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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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