[Patentpractice] Effect of traversing a partially-defective restriction requirement
Krista Jacobsen
krista at jacobseniplaw.com
Tue Dec 17 14:29:45 UTC 2024
Thank you, David! The "big e-mail" is especially helpful. Bookmarking for
future reference.
------------------------------------------
Krista S. Jacobsen
Attorney and Counselor at Law
Jacobsen IP Law
krista at jacobseniplaw.com
T: 408.455.5539
www.jacobseniplaw.com
On Tue, Dec 17, 2024 at 4:31 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
>>
>>
>> --
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>>
>> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>>
>
>
> --
>
>
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