[Patentpractice] Effect of traversing a partially-defective restriction requirement
David Boundy
DavidBoundyEsq at gmail.com
Tue Dec 17 14:37:35 UTC 2024
If you are a member of NAPP, the latest-and-greatest version of "the big
email" is at
https://forum.napp.org/topic/1489-traverse-flawed-requirement-to-elect-species/?tab=comments#comment-8178
On Tue, Dec 17, 2024 at 9:31 AM Krista Jacobsen via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:
> 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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